|Kläger||America Online, Inc.|
|Beklagter||Chinese ICQ Network|
|Entscheider||Barker, Sir Ian|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
America Online Inc. v. Chinese ICQ Network
Case No. D2000-0808
1. The Parties
The Complainant is America Online Inc., a Delaware corporation with its principal place of business at 22000 AOL Way, Dulles, Virginia, U.S.A. The Complainant is represented by Mr. James R. Davis II of Arent Fox Kintner Plotkin & Kahn, Attorneys of Washington, DC, U.S.A.
The Respondent is Chinese ICQ Network, Yayawoo Hong Kong Search Engine, No. 418, Yiu Housing Estate, Tin Shui Wai, Hong Kong, China. The Respondent is not represented by counsel and has filed no Response.
2. The Domain Name and Registrar
The domain name at issue is "4icq.com". The domain name is registered with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A. ("NSI"). It was registered on July 1, 1999.
3. Procedural History
The Complaint submitted by America Online Inc. was received on July 17, 2000, (electronic version) and July 19, 2000, (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").
On July 24, 2000, a request for Registrar verification was transmitted by the WIPO Center to NSI, requesting it to:
Confirm that a copy of the Complaint had been sent to it by the Complainant as required by the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).
Confirm that the domain name at issue is registered with NSI.
Confirm that the person identified as the Respondent is the current registrant of the domain name.
Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrars WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name.
Confirm that the Uniform Domain Name Dispute Resolution Policy was in effect.
Indicate the current status of the domain name.
By email dated July 28, 2000, NSI advised WIPO Center as follows:
NSI had received a copy of the Complaint from the Complainant.
NSI is the Registrar of the domain name registration "4icq.com".
Chinese ICQ Network is shown as the "current registrant" of the domain name "4icq.com". The registrant is identified in NSI records as being of Hong Kong.
The administrative contact is Rock Tsoi at the address shown in paragraph 1 of this decision.
The technical, zone and billing contact is given as "Rockman" at the same address.
NSIs 5.0 Service Agreement is in effect.
The domain name registration "4icq.com" is in "Active" status.
NSI has currently incorporated in its agreements the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").
The advice from NSI that the domain name in question is still "active", indicates the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with NSI. Accordingly, the Respondent is bound by the provisions of NSIs Domain Name Dispute Resolution Policy, i.e., the ICANN policy. The Respondent has not challenged the jurisdiction of the Panel.
Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the WIPO Center on July 31, 2000, transmitted by post/courier and by email a notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to NSI and ICANN.
The Complainant elected to have its Complaint resolved by a single panel member: it has duly paid the amount required of it to the WIPO Center.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by August 19, 2000). The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. No Response was filed by the Respondent to whom a Notification of Default was sent by WIPO Center on August 22, 2000.
On August 22, 2000, the WIPO Center invited the Honourable Sir Ian Barker QC of Auckland, New Zealand, to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.
On August 22, 2000, the Honourable Sir Ian Barker QC advised his acceptance and forwarded to the WIPO Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On August 24, 2000, WIPO Center forwarded to the Honourable Sir Ian Barker QC by courier the relevant submissions and the record. These were received by him on August 28, 2000. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel would have been required to forward its decision by September 6, 2000.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules.
The language of the administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
The Complainant is the owner of trademark registrations for the mark "ICQ" in 10 different countries (including China). It has pending trademark applications in some 50 other countries, including the United States. The mark has been used at least since 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; 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.
The Complainant also owns numerous trademarks, service marks and trade names, which include the mark "ICQ" (e.g., "ICQ Phone", "ICQ Radio"). It uses the mark "icq.com" as the domain name for its portal website. "ICQ" marks are used extensively at this portal website.
From at least as early as 1996, the Complainant and its predecessor in interest adopted and began using ICQ marks in connection with computer on-line and other internet-related services.
With some 50 million subscribers, the Complainant claims to be the worlds largest on-line communications provider, with millions of people world-wide obtaining services offered under "ICQ" marks.
Advertising and promotions in a variety of languages expose many millions more to ICQs offerings with the result that ICQs mark must be well-known in many countries of the globe. The Complainants sales have amounted to many millions of dollars, with large sums having been spent by it in promotional activities and in development.
When the Respondent registered the domain name "4icq.com" on July 1, 1999 it used the name "Chinese ICQ network". The Respondent had no authority from the Complainant to do this. The Respondent has never been licensed by the Complainant to have any interest in any of its marks.
On June 26, 2000 the Complainants lawyers wrote to the Respondent informing it of the Complainants intellectual property rights and objecting to its use of the disputed domain name. The Respondent did not reply to this letter.
The text of the Respondents website, which is in a Chinese language, translates as follows:
"Welcome to this site the hot spot for making friends on the Internet. Here you can find Internet friends all over the world. You can find information on Internet friends on CICQ and OICQ, the most popular communications tools among Chinese networks, in addition to ICQ."
5. Parties Contentions
The Complainant submits that the only possible conclusion must be the Respondent registered and is using its world-famous mark, "ICQ", in bad faith. It claims that:
(a) Apart from the number "4", the domain name is identical or confusingly similar to its numerous ICQ marks.
(b) The Respondent has no rights or legitimate interest in respect of the domain name.
(c) Registration and use in bad faith is shown by:
(i) The registration of the domain name by the Respondent on July 1, 1999, years after the Complainants first use of the mark "ICQ".
(ii) The Respondents false registrant name "Chinese ICQ Network" would give the impression that the Respondent was a Chinese office or affiliate of the Complainant.
(iii) The Respondents failure to reply to the Complainants lawyers letter of June 26, 2000.
(iv) The world-wide fame of the mark.
(v) The mendacious website which clearly indicates a connection between that website and the Complainants.
(vi) The Respondent offers services similar to those of the Complainant.
The Respondent has made no submissions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- That the Respondent has no rights or legitimate interests in respect of the domain name; and
- That the domain name has been registered and is being used by the Respondent in bad faith.
The domain name "4icq.com" is, in the judgment of the Panel, confusingly similar to the Complainants mark "ICQ". The addition of the numeral "4" does nothing to deflect the impact on the viewer of the mark "ICQ". I refer to my discussion of relevant trademark law in AT&T Corp v Tala Alamuddin (WIPO Case No. D2000-0249) in section 6 of that decision.
Likewise, the Panel decides that the Respondent has no rights or legitimate interests in the domain name at issue. The Respondent has never suggested to the contrary. The Panel so decides. The Respondent has offered no evidence that he is known by the name.
Paragraph 4(b) of the ICANN Policy states:
"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainants mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
It should be noted that the circumstances of bad faith are not limited to the above.
The Panel considers that the Respondent has registered and used the domain name "4icq.com" in "bad faith" for the reasons set out in its summary of the Complainants submissions and in particular:
(a) "4icq.com" is obviously connected with services provided with world-wide business.. Its very use by someone with no connection with the product suggests opportunistic bad faith.
(b) The Respondents blatant attempt to portray itself as the Chinese arm of the Complaints worldwide business.
The present situation is similar to that in Educational Tertiary Service v. TOEFL (WIPO Case D2000-0044) where the learned Panelist said:
"The value which Respondent seeks to secure from sale of the domain name is based on the underlying value of Complainants trademark. This value is grounded in the right of Complainant to use its mark to identify itself as a source of goods or services. Respondent has failed to establish any legitimate domain name-related use for Complainants trademark, in a context in which such legitimization might be possible. The Respondent having failed to present any such justification, the Panel may reasonably infer that Respondent neither intended to make nor has made any legitimate use of Complainants trademark in connection with the [domain name at issue]."
Accordingly, for all the various reasons discussed above, the Panel finds that the domain name "4icq.com" has been registered and is being used by the Respondent in bad faith.
7. Legal Considerations
Although entitled to consider principles of law deemed applicable, the Panel finds it unnecessary to do so in any depth. The jurisprudence which is being rapidly developed by a wide variety of WIPO Panelists under the ICANN Policy provides a fruitful source of precedent. Blatant attempts to hijack names with world-wide acceptance have been vigorously discouraged.
For the foregoing reasons, the Panel decides:
(a) that the domain name registered by the Respondent is identical or confusingly similar to the trademark to which the Complainant has rights;
(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) the Respondents domain name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name "4icq.com" be transferred to the Complainant.
Hon Sir Ian Barker QC
Dated: August 31, 2000