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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
America Online, Inc v. Hebat Interactive
Case No. D2000-1538
1. The Parties
The Complainant is America Online, Inc. 22000 AOL Way, Dulles, Virginia 20166, United States of America. AOL is a Delaware corporation with its principal place of business in Virginia.
The Respondent is Hebat Interactive, Block C-9-12, Menara Uncang Emas, Jalan Loke Yew, Kuala Lumpur 55200, Malaysia. The technical contact is Koh Jenn Hon.
2. The Domain Names and Registrar
The domain names in dispute ("domain names") are: <icqpal.com> and <netscaper.net>.
They were first registered on March 2, 2000 and April 12, 2000 respectively.
The registrar of the domain names is BulkRegister.com of Baltimore, United States of America. ("The Registrar").
3. Procedural History
A complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules’) both of which were implemented by ICANN on October 24, 1999, was received by WIPO in electronic format on November 8, 2000 and hardcopy on
November 10, 2000. Payment in the required amount to the Center has been made by the complainant.
On November 16, 2000, a request for registrar verification was sent to the Registrar requesting confirmation that it had received a copy of the complaint from the complainant, that the domain name was currently registered with it and that the Policy was in effect, and requesting full details of the holder of the domain name and advice as to the current status of the domain name.
On November 17 2000, WIPO received a verification response from the Registrar.
On November 21 2000, there was notification of the complaint and commencement of the administration proceeding.
On December 12, 2000,WIPO notified the respondent that he had failed to comply with the deadline indicated in the notification of complaint by not filing a submission in response.
On December 27, 2000, a notification of appointment of administrative panel and projected decision date ("the appointment notification") was sent to the complainant and the respondent. In accordance with the complainant’s request, the appointment notification informed the parties that the administrative panel would be comprised of a single panelist, Clive Elliott, and advised that the decision should be forwarded to WIPO by January 9, 2001 and was further extended to January 26, 2001.
On December 12, 2000 the Panel noted that there was no clear evidence that the respondent had received service of the complaint. Accordingly, a further and additional effort was made to effect service by WIPO and the deadline for a decision was extended.
On January 30, 2001 there was still no response from the respondent and the decision was made.
4. Factual Background
AOL and its affiliated entities (collectively "AOL") are the owners of numerous trademarks worldwide for the marks ICQ and Netscape, including U.S. Registration No. 2,027,552. AOL also has pending applications in at least 50 countries for the mark ICQ including U.S. Ser. Nos. 75-381,414.
AOL states that it uses both the marks ICQ.com and NETSCAPE.com (the AOL Marks) for providing promotional goods and services on the Internet and that many AOL customers worldwide obtain goods and services offered under AOL Marks.
On April 6, 2000 counsel for AOL sent a letter to the respondent informing him of AOL’s claimed intellectual property rights in the ICQ mark and objected to any use by the respondent of any domain names that use the AOL Marks. It is understood that there was no response.
5. Parties’ Contentions
The complainant alleges the following:
Sales of services under the AOL Marks have amounted to many billions of dollars. As a result, the general public has come to associate these names and marks with services of a high and uniform quality.
Each year millions of AOL customers worldwide obtain goods and services offered under the AOL Marks; millions more are exposed to said marks through advertising and promotion. The Netscape services reach over 32 million consumers; the ICQ service has at least 65 million registrants and is the world’s fastest-growing communications portal.
The AOL Marks have been and continue to be widely publicized through substantial advertising throughout the United States and the world. Many millions of dollars have been spent in connection with such advertising, which has been disseminated through network and cable television programs, radio broadcasts, and in print media including newspapers and periodicals.
Because of these substantial advertising expenditures and sales, the AOL Marks have become well-known and famous among members of the purchasing public.
On March 3 and April 12, 2000, after AOL's adoption and first use of the AOL Marks, and after the AOL Marks became well-known and famous, the respondent registered the domain names to use in promoting respondent’s Web site and services.
The respondent registered the second domain name in time, <netscaper.net>, on
April 12, 2000 six days after AOL sent its letter of complaint.
The complainant asserts that the respondent registered, used, and continues to use the domain names in bad faith to capitalize on the AOL Marks and to divert consumers away from the ICQ and Netscape services and the respondent’s use of domain names is therefore in bad faith.
Finally, it is argued that the respondent cannot in good faith claim that it had no knowledge of AOL’s rights in the AOL Marks.
No response has been filed.
6. Discussion and Findings
Para. 4(a) of the Policy requires that the complainant must prove each of the following:
- The domain names are identical or confusingly similar to the trade marks; and
- The respondent has no right or legitimate interest in respect of the domain names; and
- The domain names have been registered and are being used in bad faith.
Para. 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by para. 4(a)(iii) referred to above.
Para. 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in para. 4(a)(ii) referred to above.
Domain Names Identical /confusingly similar
While the domain names are not identical to the AOL Marks, they are similar. Clearly, Netscape and Netscaper are very similar. While not identical they are confusingly similar.
In relation to ICQ and icqpal, it is assumed, without evidence or submission to the contrary, that icq has no particular well known meaning other than as a trademark. If the complainant has made extensive worldwide use of the term in promoting its services, it is likely that it has acquired some protectable reputation and/or goodwill in the term. Assuming this, the question is whether icqpal and ICQ are confusingly similar. Given what seems to be the lack of known meaning for the word ICQ and the fact that it forms the first part of the respective marks, suggests that they are arguably confusingly similar, if used on or in relation to the same services. It also needs to be born in mind that without any information as to what "pal" means and how it may alter the primary meaning of ICQ, and also taking into account the greater prominence given to the first part of the mark, that the complainant has an arguable and tenable argument that the marks are confusing similar.
Accordingly, on balance, the complainant makes out this ground.
No Right or legitimate Interest
It is accepted, in the absence of evidence to the contrary, that the AOL Marks have been and continue to be widely publicised throughout the world. It is also accepted, on the same basis that the domain names were adopted by the respondent "after the AOL Marks became famous".
It is also noted specifically that the <netscaper.net> domain name was registered six days after the complainant sent its letter to the respondent. This would suggest, once again without any explanation to suggest otherwise, that this was done in retaliatory fashion and knowing of the complainant’s claim to certain rights.
Notice is taken by the panel of the prominent position the complainant holds in the Internet world and the huge profile its marks and domain names have in the worldwide Internet community.
The complainant has made out its case on this ground.
Domain Names registered and used in Bad Faith
It is accepted by the panel the domain names were registered after the AOL Marks had acquired an international reputation and are being used to attract hits to the respondent’s web site. It is hard to see what purpose the registration and use of the domain names might have other than to function as instruments of commerce. That is, to attract hits and presumably business, as a result.
The respondent may have wished to argue that its registration and use was not in bad faith. However, having chosen not to avail itself of its right to respond, the panel has to base its finding on the evidence as it stands. For the reasons given above, the panel feels that the complainant has satisfied the three requirements under the Policy para 4(a).
In view of the above, the domain names should be transferred to the complainant.
Dated: February 7 2001