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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

America Online, Inc. v. Ultima Gold

Case No. D2000-1766

 

1. The Parties

The Complainant is America Online, Inc., a corporation organized in the State of Delaware, United States of America (USA), with place of business in Dulles, Virginia, USA.

The Respondent is Ultima Gold, with address in Burlingame, California, USA.

 

2. The Domain Name(s) and Registrar(s)

The disputed domain name is "icqteam.com".

The registrar of the disputed domain name is Internet Domain Registrars, with business address in San Francisco, California, USA.

 

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

(a) Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on December 19, 2000, and by courier mail received by WIPO on December 21, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On December 21, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Internet Domain Registrars (with the Registrar’s Response received by WIPO on December 21, 2000).

(b) On December 22, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail and courier mail.

(c) On December 22, 2000, Respondent transmitted an e-mail query to WIPO regarding the transmission of documents, as well as denying a factual allegation set forth in the complaint, and requesting that it be able to communicate with the parties via e-mail in view of its location in the Ukraine. WIPO replied to this e-mail message. No further communications were thereafter received from Respondent in this matter.

(d) On January 11, 2001, WIPO transmitted notification to Respondent of its default in responding to the complaint via e-mail.

(e) On January 16, 2001, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On January 16, 2001, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.

(f) On January 18, 2001, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by February 1, 2001. On, January 18, 2001, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondent’s default in responding to the complaint). The proceedings have been conducted in English.

 

4. Factual Background

Complainant has filed an application for trademark and service mark registration for the term "ICQ" on the Principal Register of the United States Patent and Trademark Office (USPTO), Serial No. 75381414, filed October 19, 1997, published for opposition September 19, 2000, in International Classes 9, 42, 35, 36, 38 and 41, covering, inter alia, computer programs, providing information via computer networks, telecommunications services, providing financial information by electronic means, and providing entertainment by electronic means (claimed date of first use November 1996)(Complaint, paragraph12, and Annex B).

Complainant has registered the term "ICQ" as a trademark and/or service mark in a number of countries other than the United States, including Austria (Reg. No. 182,871, dated June 29, 1999), Australia (Reg. No. 776100, dated October 19, 1998); Chile (Reg. No. 539,497, dated April 27, 1999); Denmark (Reg. No. 01938/1999, dated June 9, 1999 and Reg. No. 04498/1998, dated June 9, 1999); Finland (Reg. No. 215094, dated August 13, 1999); France (Reg. No. 987539983, dated October 13, 1998, published June 18, 1999)(id.).

Complainant has registered the domain name "icq.com" and uses that name in connection with hosting an active website and business at Internet address "www.icq.com". The principal business conducted on Complainant’s "www.icq.com" website is allowing Internet users to meet and communicate through Complainant’s "ICQ" service. Complainant’s "ICQ" service has over one hundred million subscribers worldwide (id., paragraph 12 and Annex E).

Complainant has used the term "ICQ" in combination with other terms to identify services on its "www.icq.com" website, including "ICQ SMS", "ICQmail", "ICQphone", "ICQ Surf" and "ICQ Radio".

According to the registrar’s verification response to WIPO, dated December 21, 2000, "Ultima Gold", at "1534 Plaza Ln., #112, Burlingame, CA 94010, US", is the listed registrant of the domain name "icqteam.com". The listed Administrative Contact is "Pavlus, Oleg", at "Kreshchatyk Str, 1, Kiev, UA 01011, Ukraine". The registration date for the disputed domain name is October 25, 2000.

Respondent has established and maintains an active website at Internet address "www.icqteam.com". The home page for this website is identified as "icqteam.com". The home page uses the term "ICQ" in a number of places, and generally includes a superscript "TM" designation along with that term. The home page also includes the following notice:

"L e g a l n o t i c e:

‘ICQ’ and the ‘Mirabilis’ logo are the
trademarks or registered trademarks of
AOL Inc. in the United States and/or
other countries. AOL and its subsidiaries
have no affiliation with this website. AOL
and its subsidiaries do not review,
sponsor or endorse this website or its
contents."

Respondent’s home page includes the following text:

"ICQ^TM SERVER

Now you can create your own ICQ^TM server instead of icq.mirabilis.com! If you are an organization with your own IntraNet or just a group of friends who want to communicate separately from main ICQ^TM server and do not want the Big Brother to read all your messages - our ICQ^TM Server is perfect for you! You can have 4-digits UINs, send messages, files, URL's - no difference from main ICQ^TM server! Lots of other functions available! Read more.

ICQ^TM SYSTEM MESSENGER

Do you want to send a message or URL from your friend's ICQ#? Or is it possible to send system message from UIN 1 to your enemy with a warning that his UIN will be unregistered? Or birthday reminder with your own words? All this is possible with our great software - ICQ^TM System Messenger! Try it and it will become the great part of your ICQ life. Read more.

ICQ^TM AUTORESPONDER

If you are a LAN user and your ICQ is often N/A, or you just want to have fun - use ICQ^TM Autoresponder. You can launch your UIN in any mode you want including Invisible, you can create Visible, Invisible and Ignore lists, configure custom messages to your friends. You can create your Contact list, watch who is online and even send messages to people from your contact list directly from ICQ^TM Autoresponder! Great tool for everyone! Read more.

ICQ^TM TALK

Do you think it necessary to steal someone's ICQ number to talk with other people from it? With this great program you can send and receive messages from any UIN you want! Now you can find out all secrets of your enemy or have fun on your friends.

FREEWARE PROGRAMS: ICQ^TM IP SNIFFER, ICQ^TM CHANGE INFO AND OTHERS.

Find out your friend's IP Address, version of ICQ client, put e-mail without @ sign, remove all registry limits with our freeware programs"

(Complaint, Annex G, and Panel visit of January 31, 2001)

On November 21, 2000, Complainant (through its counsel) sent a cease and desist and transfer demand to Respondent, Ultima Gold, via courier mail. Respondent responded to this demand by indicating that it was not the operator of the subject website, but that it had registered the disputed domain name on behalf of a "Russian" entity that operates the site and distributes software. Complainant indicates that it was unable to contact the "Russian" entity. (Complaint, paragraph 12)

The Service Agreement in effect between Respondent and Internet Domain Registrars subjects Respondent to Internet Domain Registrars’ dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, paragraph 4(a)).

 

5. Parties’ Contentions

A. Complainant

Complainant states that it has registered the trademark and service mark "ICQ" in a number of countries, and has applied for registration of that mark in the United States (see Factual Background supra).

Complainant states that it uses the "ICQ" mark in connection with its website at "www.icq.com", that its mark and website are well known among Internet users, and that it uses the "ICQ" mark in combination with various other terms to identify services on its commercial website (see id).

Complainant then states in its own words:

"9. In October 2000, long after AOL's adoption and first use of the ICQ Marks, and long after the ICQ Marks became well-known and famous, Respondent registered the domain name ‘icqteam.com’ (the ‘ICQ Domain Name’) and began using it in connection with a commercial Website that sells software intended to interact with AOL’s ICQ service. See Annex [hereto].

"10. The ICQ Domain Name is confusingly similar to the ICQ Marks, including the famous mark ICQ. The ICQ Domain Name is particularly confusing because it links to a Website (see Annex [hereto]) called ‘ICQ Team’ that makes prominent use of AOL’s ICQ Marks. The software that is sold and distributed at the site interacts with the ICQ service but Respondent is not authorized by AOL to create or distribute such software. The use of the mark ICQ in a domain name and Website in connection with services that are very similar to, and interact with, those services provided by AOL, is likely to confuse consumers into believing AOL endorses or is affiliated with Respondent’s service.

"11. Respondent registered and used the ICQ Domain Name in bad faith to capitalize and profit from the famous mark ICQ and the goodwill AOL has built up in its ICQ mark.

"12. Respondent has no rights or legitimate interests in respect to the ICQ Domain Name. The following is evidence of Respondent’s bad faith registration and use of the domain name:

(a) Respondent’s bad faith registration and use of the domain name is evidenced by the fact that Respondent registered ‘icqteam.com’ many years after AOL's adoption and first use of its ICQ Marks (copies of the Whois records for the ICQ Domain Name is included as Annex [hereto]).

(b) On November 21, 2000, Counsel for AOL sent Respondent a letter via certified mail, explaining AOL’s rights in its ICQ marks and requesting that Respondent cease its infringing use of the ICQ mark. A copy of AOL’s letter is attached as Annex [hereto]. Respondent responded by claiming that it is not the true operator of the Website but, rather, it merely registered the domain name on behalf of a Russian entity that operates the site and distributes the software. Because Ultima Gold is the official registrant of ‘icqteam.com,’ and because AOL was unable to contact the Russian entity, AOL was forced to file this complaint to protect its valuable intellectual property.

(c) Respondent’s bad faith use of the ICQ Domain Name is further evidenced by Respondent’s use of the domain name in connection with a commercial Website that makes prominent use of the ICQ mark. See Annex [hereto] for Website. Respondent’s prominent use of the ICQ marks at a Website called ICQ Team that sells ICQ software aggravates Respondent’s infringement and is likely to lead consumers to falsely believe that AOL endorses or is affiliated with Respondent or its Website. Respondent’s prominent references to the ICQ service prove that Respondent has knowledge of the ICQ service and mark and that Respondent is using the domain name ‘icqteam.com’ and the name ICQ Team in an effort to confuse consumers and divert them to Respondent’s Website. Respondent’s registration and use of the ICQ Domain Name in this manner demonstrates its bad faith attempt to profit from the goodwill that AOL has created in its ICQ mark.

(d) Respondent’s bad faith registration and use of the Infringing Domain Name is demonstrated by the fact that the software sold at ‘icqteam.com’ is intended to subvert or sabotage the ICQ system. For example, Respondent’s software allows Internet users to ‘steal someone’s ICQ number.’ See Annex [hereto].

(e) In numerous similar ICANN proceedings, the arbitration Panel has determined that actions similar to those of Respondent’s constitute a bad faith registration and use of the ICQ mark. See, e.g., America Online, Inc. v. OICQ.com, Ltd. (FA-0004000094420); America Online, Inc. v. Tencent Communications (FA0002000093668); America Online, Inc. v. Chinese ICQ Network (D2000-0808); America Online, Inc. v. Shenzhen JZT Computer Software Co., Ltd. (D2000-0809).

(f) Based upon the correspondence sent by AOL, the references to the ICQ service at Respondent’s Website, and the fame of the mark ICQ, Respondent cannot, in good faith, claim that it had no knowledge of AOL's rights in the mark ICQ. Furthermore, Respondent cannot claim, in good faith, that it made a legitimate noncommercial or fair use of the domain name." (Complaint)

Complainant requests the Panel to direct the registrar to transfer the disputed domain name to it.

B. Respondent

Respondent has not formally replied to Complainant’s contentions. In an e-mail message to WIPO, Respondent disputed Complainant’s assertion that its software allows Internet users to "‘steal someone’s ICQ number’", stating "Our software has no such features and no such text was ever present on any of our web pages. AOL simply made it up to influence the Panel, and we hope the Panel takes their deception into account."

 

6. Discussion and Findings

The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion. (Footnote 1) The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).

In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by WIPO. Respondent’s Administrative Contact acknowledged receipt of notification of the complaint from WIPO.

As a threshold matter, the Panel notes that in communication with Complainant, the U.S.-address listed registrant of the disputed domain name claims to have registered the name on behalf of a Ukrainian entity. In an administrative proceeding conducted under the Policy, the order of a panel is directed to the registrar of a disputed domain name. An order to transfer a name requires a registrar to change the listed registrant of the name. Although a panel may treat an entity other than the listed registrant as a beneficial registrant for purposes of evaluating facts and circumstances in a proceeding, the named registrant must be identified as the Respondent. In this proceeding, Ultima Gold is the listed registrant of the disputed domain name, and is the Respondent. The fact that the asserted beneficial registrant of the disputed domain name is located in the Ukraine does not in any event affect the Panel’s determination in this matter.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondent’s domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

In a recent proceeding involving the Complainant in this matter, this sole panelist determined that Complainant has rights in the trademark and service mark "ICQ". (Footnote 2) In light of that earlier determination, and the substantial evidence of trademark and service mark registrations outside the United States submitted by Complainant in this proceeding, the Panel finds that Complainant has rights in the trademark and service mark "ICQ". The Panel notes that Respondent has acknowledged Complainant’s rights in the "ICQ" mark on its "www.icqteam.com" home page (see Factual Background supra).

Complainant’s "ICQ" mark is well known among Internet users as identifying Complainant as the provider of communications services on its "www.icq.com" website. Complainant’s use of the "ICQ" mark, claimed as first used in 1996 (in its USPTO application for registration), and registered outside the United States at least as early as October 19, 1998, preceded Respondent’s registration of the disputed domain name on October 25, 2000.

The disputed domain name (1) incorporates Complainant’s "ICQ" mark, (2) adds the term "team", and (3) adds the generic top level domain (gTLD) ".com".

By adding the noun "team" (generally used to refer to a group working together) to Complainant’s mark, Respondent does not create a new or different mark in which it has rights. Complainant’s "ICQ" mark is distinctive, and Complainant commonly uses its mark in combination with descriptive terms, such as "phone" and "radio". In light of the well-known nature of Complainant’s "ICQ" mark, and its common use by Complainant with appended descriptive terms, Internet users seeing Respondent’s "icqteam.com" domain name would likely associate it with Complainant as a source of services.

The use of the gTLD ".com" is without legal significance from the standpoint of comparing the disputed domain name to "ICQ" since use of a gTLD is required of domain name registrants, ".com" is one of only several such gTLDs, and ".com" does not serve to identify a specific enterprise as a source of goods or services. (Footnote 3)

The Panel determines that the disputed domain name "icqteam.com" is confusingly similar to Complainant’s "ICQ" mark within the meaning of paragraph 4(a)(i) of the Policy. Complainant has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.

The second element of a claim of abusive domain name registration is that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii)

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." (Policy, paragraph 4(c))

Respondent has not affirmatively asserted a legitimate interest in the disputed domain name.

There does not appear on the record of this proceeding any indication that Respondent may have been commonly known by the disputed domain name.

Respondent’s website is replete with direct references to Complainant’s services. It is clear that Respondent has used Complainant’s mark in its domain name with specific reference to Complainant and its services, and with the intent to take advantage of the well-known character of Complainant’s mark. Respondent did not reasonably initiate a good faith offer of services in the belief that Complainant did not object (and Complainant, in fact, promptly objected). Respondent did not use the mark prior to notice of a dispute in connection with a bona fide offer of services.

Respondent has not made fair use of Complainant’s mark in its domain name. Complainant’s mark is not descriptive, and Respondent did not make use of the mark in a commonly descriptive sense. Although there is some leeway open to junior users of marks for purposes such as limited comparative advertising, Respondent’s use of Complainant’s mark is not along these lines. Respondent has used Complainant’s mark to attract Internet users to a website that offers software and services that take advantage of Complainant’s existing business and services. On its website, Respondent has labeled its own products with the "ICQ" mark (e.g., "ICQ Server", "ICQ System Messenger", "ICQ Autoresponder"). Respondent’s inclusion of the letters "TM" in superscript following "ICQ", and its legal disclaimer notice, do not transform its confusing use of Complainant’s mark into a fair use. (Footnote 4) Respondent’s use of Complainant’s mark in the disputed domain name is for the commercial purpose of attracting Internet users to its website location by creating confusion as to Complainant’s sponsorship of or affiliation with its website. As such, Respondent has failed to establish a fair use of Complainant’s mark.

Respondent has failed to establish rights or legitimate interests in the disputed domain name. Thus, Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.

The Policy indicates that certain circumstances may, "in particular but without limitation," be evidence of bad faith (Policy, paragraph 4(b)). Among these circumstances are that a respondent "by using the domain name, … [has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location of a product or service on [its] website or location" (id., paragraph 4(b)(iv)).

Complainant’s mark and domain name are distinctive and very well-known among Internet users. Respondent has used Complainant’s mark in a domain name that Internet users are likely to assume is associated with Complainant. Respondent is attempting to attract Internet users to its website for commercial gain by use of Complainant’s mark. The fact that Respondent acknowledges Complainant’s rights in its mark on its website does not relieve Respondent from the legal consequences of this activity. (Footnote 5)

Respondent has intentionally used Complainant’s mark to confuse Internet users as to Complainant’s sponsorship of or affiliation with a website that Respondent operates for commercial gain. This constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration.

The Panel will therefore request the registrar to transfer the domain name "icqteam.com" to the Complainant.

 

7. Decision

Based on its finding that the Respondent, Ultima Gold, has engaged in abusive registration and use of the domain name "icqteam.com" within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name "icqteam.com" be transferred to the Complainant, America Online, Inc.

 

 

Frederick M. Abbott
Sole Panelist

Dated: January 31, 2001

 

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Footnotes:

1. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.
2. See America Online, Inc. v. John Zuccarini, also known as Cupcake Message, Cupcake Messenger, The Cupcake Secret, Cupcake Patrol, Cupcake City, and The Cupcake Incident, Case No. D2000-1495, decided January 22, 2001.
3. See Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498 (2d Cir. 2000), citing Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036 (9^th Cir. 1999). The Panel notes that in an earlier administrative proceeding it recognized Complainant’s rights in the service mark "AOL.COM" based, inter alia, on the USPTO’s grant of registration for that mark. See America Online, Inc. v. Dolphin@Heart, Case No. D2000-0713, decided August 24, 2000.
4. Regarding the distinction between confusing use and fair use, see, e.g., Dallas Cowboys Cheerleaders v. Pussycat Cinema, 604 F.2d 200, (2d Cir. 1979), Zatarains v. Oakgrove Smokehouse, 698 F.2d 786, (5^th Cir. 1983) and additional cases cited in J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §11:47, n. 1 (4^th ed. 1996 and updated).
5. If such were the case, any trademark or service mark could be used to entice consumers into a store, so long as such consumers were eventually advised that the store owner was not authorized to use the trademark or service mark. This is not the case.