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ADMINISTRATIVE PANEL DECISION
America Online, Inc. v. Donal Balfe
Case No. D 2000-0913
1. The Parties
Complainant: America Online, Inc.
22000 AOL Way
Dulles, Virginia 20166
Respondent: Donal Balfe
Castleknock, Dublin 15
2. The Domain Name(s) and Registrar(s)
Domain Names: cellicq.com, cellicq.net, cellphoneicq.com, icqgsm.com, icqgsm.net, gsmicq.net, gsmicq.com, icqcell.com, icqcell.net
3. Procedural History
The Complaint was received by WIPO by email on August 1, 2000 and in hardcopy form on August 4, 2000. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules, paragraph 2(a). The Registrar has confirmed that cellicq.com, cellicq.net, cellphoneicq.com, icqgsm.com, icqgsm.net, gsmicq.net, gsmicq.com, icqcell.com and icqcell.net ("the Domain Names") were registered through Register.com and that Donal Balfe is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Names.
On August 17, 2000 WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was September 5, 2000. On the same day the Respondent replied that he is not disputing the case and stated that he had signed consent forms to transfer all the Domain Names to the Complainant. That same day WIPO replied that it would not suspend or terminate the proceedings unless requested to do so by the Complainant. No other response having been received, on September 11, 2000 WIPO issued to the Respondent a notice of default and the same day the Respondent replied saying he was not contesting transfer of the Domain Names to the Complainant.
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panel’s Decision is October 3, 2000.
4. Factual Background
The Complainant is the proprietor of several trade mark registrations around the world for the letter combination mark "ICQ". The Complainant is also the user of several marks comprising the letters "ICQ" in combination with words such as "Phone", "Radio" etc. The Complainant is the proprietor of the domain name icq.com for its portal website for its ICQ service. The Complainant’s use of its ICQ mark goes back to at least 1996.
The Respondent registered the Domain Names in February 2000 and offered them for sale through the GreatDomains.com website.
On July 25, 2000 the Complainant’s attorneys wrote to the Respondent drawing the Respondent’s attention to the Complainant’s rights in and to the mark "ICQ" and inviting the Respondent to agree to transfer the Domain Names to the Complainant.
On August 1, 2000 following another short exchange of emails the Respondent informed the Complainant’s attorneys that he was not using the Domain Names for commercial purposes and did not intend to do so "in the near future" and that the Domain Names were available for purchase at a price of $5000 each.
As indicated above, the Respondent has since stated on two occasions that he is not contesting this proceeding.
5. Parties’ Contentions
The Complainant contends that through extensive use and promotion of the mark ICQ and the other ICQ combination marks and the domain name, icq.com, the general public has come to associate these names and marks with the high quality services of the Complainant.
The Complainant further contends that the Domain Names "are nearly identical and confusingly similar to" the trade marks in respect of which it has rights, pointing out that the Domain Names comprise the distinctive mark "ICQ" in combination with generic words/acronyms.
The Complainant contends that the Respondent registered and is using the Domain Names in bad faith. The Complainant points to, inter alia, the fame of its marks, the timing of the Respondent’s registration of the Domain Names (i.e. several years after the Complainant had made the mark "ICQ" famous), the Respondent’s offer for sale at a price well in excess of the Respondent’s out-of-pocket expenses and the linking of the letters "icq" with words/letters related to the use of cellular telephones, thereby demonstrating the Respondent’s familiarity with the Complainant’s mark.
The Respondent’s only response has been that he does not contest this proceeding and is willing to transfer the Domain Names to the Complainant.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Names; and
(iii) The Domain Names have been registered and are being used in bad faith.
Identical or confusing similarity
The Domain Names comprises three elements, namely ‘icq’, which is the Complainant’s trade mark, ‘gsm’, ‘cell’or ‘cellphone’, all of which are generic and ‘.com’ or ‘.net’, both of which are also generic.
The Panel finds that the Domain Names are all confusingly similar to a trade mark in which the Complainant has rights.
Rights or legitimate interest of the Respondent
Proving that the Respondent has no rights or legitimate interests in respect of the Domain Names requires the Complainant to prove a negative. For the purpose of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of the Respondent.
The Complainant has made out a prima facie case. The Respondent has not sought to claim that he has any rights or legitimate interests in respect of the Domain Names and the Panel has no evidence before it to suggest any reason why the Respondent might have any rights or legitimate interests in the Domain Names. Indeed, the circumstances surrounding the offer for sale indicate the contrary.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Paragraph 4(b) of the Policy sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith. Here, it is unnecessary to look beyond sub paragraph (i), namely circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling the domain name registration to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket expenses.
The Panel finds that the advertising of the Domain Names for sale on the greatdomains.com website and the suggested price per domain name to the Complainant of $5000 constitutes registration in bad faith and use in bad faith for the purposes of Paragraph 4(a)(iii) of the Policy.
In the result, the Panel having found that the Domain Names are confusingly similar to a trade mark in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Domain Names have been registered in bad faith and are being used in bad faith, the Complaint succeeds.
The Panel directs that each of the Domain Names cellicq.com, cellicq.net, cellphoneicq.com, icqgsm.com, icqgsm.net, gsmicq.net, gsmicq.com, icqcell.com and icqcell.net be transferred to the Complainant.
Dated: September 30, 2000