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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
America Online, Inc. v. Quik-E Inc.
Case No. D2001-1141
1. The Parties
The Complainant is America Online, Inc., a Delaware corporation with its principal place of business at 22000 AOL Way, Dulles, Virginia 20166 USA.
The Respondent is Quik-E Inc., 42-25A 214th place, Bayside, New York 11361, USA. The listed administrative and technical contact for Quick-E Inc. is Bill Katsis. Quik-E Inc. is the owner of record of the disputed domain name <icqvideo.com>.
2. The Domain Name and Registrar
The disputed domain name <icqvideo.com> was registered by Quik-E Inc. on April 5, 2000. The registrar is BulkRegister.com, Inc., 7 East Baltimore Street, Baltimore, Maryland 21202 USA.
3. Procedural History
a. General History
Pursuant to the Uniform Domain Name Dispute Resolution Policy ("Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy (" Rules"), both of which were approved by ICANN on October 24, 1999, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), the complaint was filed with the WIPO Arbitration and Mediation Center ("Center") by email on September 18 and by hard copy on September 21, 2001. The Center completed its formal requirements compliance checklist on October 2, 2001, and concluded that the complaint met all requirements, and that payment had been made properly. This Panel agrees with the Center’s assessment that the complaint complies with the formal requirements of the Rules and Supplemental Rules. The "Notification of Complaint and Commencement of Administrative Proceeding" was sent on October 2, 2001.
Respondent’s response to the complaint was due on October 22, 2001. Nothing was received by that date. On October 25, 2001, the Center issued a "Notification of Respondent Default". Four days later, in response to the "Notification of Respondent Default", Bill Katsis sent an email to the Center’s case manager.
Following her submission of a "Statement of Acceptance and Declaration of Impartiality and Independence", on December 6, 2001, Sandra A. Sellers was appointed the sole panelist. The decision was scheduled to be issued December 20, 2001.
b. Treatment of Respondent’s Belated Email Response
This Panel has the discretion to consider the email submitted by Bill Katsis on October 29, 2001, in response to the "Notification of Respondent Default".
The Rules are quite clear with respect to the requirements for filing a response to a complaint. Among other things, Paragraph 5 of the Rules requires that the response shall be submitted within twenty days; that it shall be submitted in hard copy; and that it shall contain a signed certification that the response is complete and accurate, that it is not being presented for any improper purpose, and that the assertions are warranted under applicable law.
The Center’s materials are equally clear and accessible. The Center makes clear that a response is required. To assist respondents, the Center provides online a Model Form of Response and Response Filing Guidelines.
Despite these clear directives, Respondent failed to file a response: (1) by the deadline of October 22, 2001; (2) in hard copy; and (3) with a signed certification concerning the accuracy and proper purpose of the response.
Since Katsis’ informal email response was filed just seven days late, to give Respondent a fair opportunity to present its case, this Panel may have excused the tardiness if the other requirements had been met. However, since Katsis’ email makes unsupported accusations that the Complaint contains factual inaccuracies, it is imperative that the certification requirements be met for the content of Katsis’ email to be considered as a Response. Without the signed certification, this Panel is not willing to consider – much less give weight to -- unsupported allegations. Accordingly, this Panel declines to accept Katsis’ October 29th email as a response to the Complaint, and will consider Respondent to have defaulted.
4. Factual Background
America Online, Inc. and ICQ, Inc. (collectively "AOL") are the owners of at least 22 trademark registrations worldwide for the mark ICQ. The mark ICQ has been used since at least as early as November 1996, in connection with:
"telecommunications services, namely, services relating to electronic transmission of data, images and documents via computer terminals, electronic storage and retrieval of data and documents, electronic mail services, facsimile transmission, personal communication services, paging services, and messaging services" and
"computer operating programs that may be downloaded from a computer information network; computer software and prerecorded computer programs for accessing computer networks and computer systems comprising computer hardware and computer software for electronic communications that may be downloaded from a computer information network; and computer software for accessing online electronic diaries, online databases, websites, online chatrooms, and electronic yellow pages that may be downloaded from a computer information network" and
"computer services, namely providing multiple user access to computer information networks and online communication networks; providing on-line services, namely, electronic yellow pages, and providing general interest information via computer networks."
AOL is the owner of numerous trademarks, service marks, and trade names that include the mark ICQ, e.g., ICQmail, ICQphone, and ICQgames (collectively the ICQ Marks). AOL also uses the mark ICQ.COM as the domain name for its portal Web site for the ICQ service. The ICQ Marks are used extensively at this Web site.
Over 100,000,000 subscribers worldwide have registered to use the ICQ service, through which they obtain goods and services offered under the ICQ marks. As of September 2001, there were over fifteen million active users worldwide, with more than 100,000 ICQ-related downloads daily. The ICQ service is provided in several international languages. Millions more are exposed to said mark through advertising and promotion, which has been disseminated through network and cable television programs, radio broadcasts, and in print media including newspapers and periodicals.
Several years after the first use of the ICQ mark, on April 5, 2000, Respondent registered the contested domain name <icqvideo.com>.
Respondent attempted to register <icqvideo.com> with the US Patent & Trademark Office ("PTO"), but the registration was refused based upon the likelihood of confusion that would be created with the prior trademark registrations for ICQ, and that the services identified in Respondent’s application were closely related to the services identified in AOL’s registration for ICQ.
On September 4, 2001, counsel for AOL sent Respondent a letter setting forth AOL’s trademark rights in the ICQ mark, and requesting that Respondent cease all unauthorized use of the ICQ mark. Respondent called AOL’s counsel on September 18, 2001, and conceded that he was familiar with the ICQ service prior to registering the contested domain and filing the PTO application for the mark ICQVIDEO.COM. According to the Complainant, Respondent also claimed that he already had been contacted by "investors" willing to pay $25,000 for the contested domain. Respondent stated that he would not transfer <icqvideo.com> to AOL unless AOL matched the $25,000 offer made by the unnamed "investors." If AOL refused to purchase the domain for this amount, Respondent claimed he would likely sell <icqvideo.com> to another party.
5. Parties’ Contentions
The Complainant alleges that the domain name <icqvideo.com> is confusingly similar or nearly identical to the ICQ Marks. The addition of the suffix "video" is insufficient to prevent consumer confusion. In fact, the combination of the famous ICQ mark with the generic word "video" is likely to enhance consumer confusion because AOL provides electronic transmission services, and even operates an online service called The ICQ Video and Photography Network. As noted above, ICQ owns a family of marks that incorporate the ICQ brand with a generic word (e.g., ICQmail, ICQphone, etc.). The use of the very famous and distinctive ICQ mark is likely to lead ICQ users and consumers to believe falsely that Respondent’s Web site and services are associated with, or endorsed by, AOL.
Complainant further alleges that Respondent has no rights or legitimate interests in respect to the contested domain. Respondent is not named ICQ and is not licensed to use the ICQ mark. Respondent’s intent-to-use application for a US trademark registration was refused due to the likelihood of confusion with the prior trademark registrations for ICQ.
Complainant further alleges that Respondent’s bad faith registration and use of <icqvideo.com> is evidenced by the fact that Respondent registered the contested domain several years after AOL's adoption and first use of its ICQ Marks. Additionally, Respondent still has not used the domain name in connection with a bona fide offering of goods or services. To date, Respondent has only put up an inactive Web site that makes prominent use of the ICQ mark as part of the ICQ Video name. Finally, Complainant contends that Respondent’s offer to sell the domain to AOL for $25,000 is additional evidence of bad faith intent to profit from the registration and use of the domain.
6. Discussion and Findings
Under Paragraph 4(a) of the Policy, the Complainant has the burden of proving each of the following: (1) that the domain name is identical or confusingly similar to the Complainant’s mark, in which the complainant has established rights; (2) that the Respondent has no rights or legitimate interests in the domain name; and (3) that the Respondent registered and is using the domain name in bad faith.
a. The contested domain name is confusingly similar to the Complainant’s ICQ marks
This Panel finds that though the contested domain name is not exactly identical, it is confusingly similar to Complainant’s ICQ marks, in which Complainant has established worldwide trademark and common law rights. The US PTO examining attorney concluded, "since the marks are highly similar and the goods and services are closely related, confusion is likely in accordance with Section 2(d) of the [Lanham] Act." This Panel concurs with the US PTO’s conclusion, for the reasons and legal authorities cited in the refusal of US trademark application serial no. 78/074266.
b. Respondent has no rights or legitimate interests in the contested domain name
This Panel finds that Respondent has not established any rights or legitimate interests in the contested domain name. Respondent is not named "ICQ" and is not licensed to use the ICQ mark. Despite seventeen months between registration and the filing of this Complaint, Respondent has not developed the icqvideo.com site. Rather, the site only makes prominent use of "ICQ", with no reference to Respondent, or any effort to differentiate Respondent’s site from Complainant’s ICQ marks and related sites.
c. Respondent registered and is using the contested domain in bad faith
This Panel finds that Respondent registered the domain name in bad faith. This Panel draws an inference that Respondent was familiar with Complainant’s ICQ marks prior to registering the contested domain name. Further, this Panel finds that Respondent is using the contested domain name in bad faith. Review of Respondent’s web site shows prominent use of "ICQ," followed by "video" in small letters, with no reference to Respondent or effort to differentiate Respondent from Complainant’s ICQ marks or related sites. Moreover, this Panel draws negative inferences against Respondent and accepts as true Complainant’s verified statement that Respondent offered to sell the contested domain name to Complainant for US$25,000.
Accordingly, under Paragraph 4(a) of the Policy and 15 of the Rules, this Panel finds that Complainant has proven that:
1) the domain name registered by the respondent is identical or confusingly similar to trade and service marks in which the complainant has rights; and
2) the respondent has no legitimate interests in respect of the domain name; and
3) the domain name has been registered and used in bad faith.
This Panel finds that the Complainant has met all the requirements of the Policy. For the reasons set forth above, Complainant’s request to transfer the domain name <icqvideo.com> to Complainant is granted.
Sandra A. Sellers
Dated: December 20, 2001