America Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE

PANEL DECISION

America

Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd.

Case No.

D2001-0443

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, U.S.A.

The Respondent is Shanghaihangwei

Packing Material Co. Ltd. of Room 501, No. 6 Lane, 18 Hu Qing

Ping Road, Shanghai, China.

2. The Domain Name and

Registrar

The dispute concerns

the domain name <ouricq.com> (the said Domain Name) registered with

Melbourne IT, Ltd. (the Registrar) of Level 2, 120 King Street, Melbourne

Vic 3000, Australia.

3. Procedural History

On March 27, 2001,

the Complainant submitted a complaint electronically to the World Intellectual

Property Organization Arbitration and Mediation Center (the Center) for

a decision in accordance with the Uniform Domain Name Dispute Resolution

Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution

Policy (the Rules) and the WIPO Supplemental Rules for Uniform Domain Name

Dispute Resolution Policy (the Supplemental Rules). On March 29, 2001, the

Complainant submitted the hardcopy of the same to the Center.

On April 3, 2001, the

Center sent a Request for Registrar Verification to the Registrar. On April

4, 2001, the Registrar, confirmed by e-mail with the Center that it was

the Registrar of the said Domain Name and that the registrant of the said

Domain Name was the Respondent.

On April 4, 2001, having

found that the Complainant had satisfied the formal requirements of the

Policy, the Rules and the Supplemental Rules, the Center sent the Notification

of Complaint and Commencement of Administrative Proceeding (the Notification)

by post/courier (with enclosures), facsimile (with the complaint but without

attachments) and e-mail (with the complaint but without attachments) to

the Respondent and transmitted electronically copies of the said documents

to the Complainant. It also extended a copy of the Notification to the Internet

Corporation for Assigned Names and Numbers (ICANN) and the Registrar. The

said Notification set the formal date of the commencement of this administrative

proceeding as April 4, 2001, and required the Respondent to submit

a response to the Complainant within 20 calendar days from the date

of receipt of the Notification, i.e. by April 23, 2001, failing

which the Respondent would be considered to be in default.

The Respondent failed

to file the response with the Center by April 23, 2001. On April 25,

2001, the Center sent the Notification of Respondent Default to the Respondent

by post/courier and e-mail and copied it to the Complainant via e-mail.

As the Complainant

had elected to have the dispute decided by a single-member panel in its

complaint, the Center appointed Mr. Hariram Jayaram to be the panelist (the

Panel) on May 8, 2001, after receiving a Statement of Acceptance and Declaration

of Impartiality and Independence from him on the same day and sent the Notification

of Appointment of Administrative Panel and Projected Decision Date to the

Complainant and the Respondent and copied it to the Panel by e-mail. On

the same day, the Center sent a Transmission of Case File to the Panel.

The Panel finds that

the Center has discharged its obligations and responsibilities under the

Rules. The Panel will issue its decision based on the complaint, the Policy,

the Rules and the Supplemental Rules and principles of law, which the Panel

deems to be applicable, without the benefit of having received a response

from the Respondent.

4. Factual Background

The Complainant states

that it is the registered owner of the mark "ICQ" in at least

22 countries including the United States of America, Austria, Australia,

Benelux, Chile, China, Denmark, Finland, France, Germany, Iceland, Israel,

South Korea, Mexico, New Zealand, Norway, Panama, Portugal, Slovenia, Spain,

Sweden and Switzerland. Since November 1996, it has been using the mark

"ICQ" in connection with:

telecommunication

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 which may be downloaded from a computer information network;

computer software and pre-recorded computer programs for accessing computer

networks and computer systems comprising computer hardware and computer

software for electronic communications which may be downloaded from a

computer information network and computer software for accessing online

electronic diaries, online databases, web sites, online chatrooms, and

electronic yellow pages which 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 is

also the owner of numerous trademarks, service marks, and trade names which

include the mark "ICQ", e.g., ICQ Games, ICQ Phone, ICQmail, ICQ

Search and ICQ Radio. It uses the mark <icq.com> as the domain name

for its portal web site. The ICQ marks are used at this portal web site

in connection with an online service, which allows Internet users to meet

and communicate through the ICQ service. The ICQ marks have been used continuously

and extensively in interstate and international commerce in connection with

the advertising and sale of these Internet-related services. The Complainant

has invested substantial sums of money in developing and marketing its services.

It has over one hundred million subscribers worldwide and ICQ is the world's

largest online communications community. Each year millions of ICQ customers

worldwide obtain services offered under the ICQ marks and millions more

are exposed to the said marks through advertising and promotion. The ICQ

marks have been and continue to be widely publicized through substantial

advertising throughout the United States of America and the rest of the

world. 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.

Sales of services under the ICQ marks have amounted to millions of dollars.

As a result, the general public has come to associate these names and marks

with services of a high and uniform quality. These marks have become well-known

and famous among members of the purchasing public.

As the Respondent has

not filed its response, the available facts about it are that it has registered

the said Domain Name with the Registrar and it is based in Shanghai, China.

5. Parties’ Contentions

A. Complainant

The Complainant says

that as early as 1996, the Complainant and its predecessor-in-interest

adopted and began using many of its ICQ marks in connection with computer

online services and other Internet-related services. The Respondent registered

the said Domain Name on March 8, 2001, and began using it for a commercial

web site which provides services similar to those provided by it under

its ICQ marks. The said site promotes a company named Tencent, which in

at least two prior ICANN proceedings has been found to have acted in bad

faith by providing services which infringe upon the ICQ service. In America

Online, Inc. v. Tencent Communications Corp. NAF

File No. FA0002000093668, the disputed domain names were <oicq.com>

and <oicq.net> and in America Online, Inc. v. 0ICQ.com

Limited NAF File No. FA0004000094420, the disputed domain names

were <0icq.com> and <0icq.net>.

According to the

Complainant, the said Domain Name is confusingly similar to the ICQ marks

of the Complainant. The mere addition of the common word "our"

to the Complainant’s ICQ marks does nothing to distinguish the said Domain

Name or prevent consumers from being confused. It is particularly confusing

because it is being used for a web site, which provides services nearly

identical to those provided under the ICQ marks. The Respondent has no

rights or legitimate interests in respect of the said Domain Name. The

Respondent has registered and used the said Domain Name in bad faith to

capitalize and profit from the famous mark "ICQ" and the goodwill

the Complainant has built up in its several ICQ marks. Evidence of bad

faith registration and use of the said Domain Name may be seen from the

fact that the Respondent has registered the said Domain Name many years

after the Complainant’s adoption and first use of its ICQ marks. The Respondent’s

bad faith is demonstrated by its use of the said Domain Name in connection

with a commercial web site which provides services similar to those provided

by the Complainant under its ICQ marks. The Respondent’s actions indicate

that it registered the said Domain Name with a bad faith intention to

confuse consumers into believing that the Complainant endorses or is affiliated

with the Respondent or Tencent. Further evidence of bad faith registration

and use of the said Domain Name may be found in the prominent use by the

Respondent of other marks, which are confusingly similar to the ICQ marks.

For example, the marks "OICQ" and "QQ" are both used

throughout the infringing web site. The Respondent’s unauthorized use

of the mark "ICQ" in a domain name which routes to a web site

using marks identical to the famous ICQ marks and its combination of the

common word "our" with <icq.com> demonstrate the Respondent’s

bad faith effort to confuse consumers and profit from the goodwill the

Complainant has created in its marks. These actions also indicate that

the Respondent is attempting to divert consumers to the Respondent’s web

site and to mislead consumers into believing that the Complainant endorses

or is affiliated with the corresponding web site.

In addition to the

decisions rendered against Tencent, the Complainant refers to America

Online, Inc. v. Chinese ICQ Network WIPO Case No.

D2000-0808, involving the disputed domain name <4icq.com> and America

Online, Inc. v. Shenzhen JZT Computer Software Co.,

Ltd. WIPO Case No. D2000-0809, involving the disputed domain names

<gameicq.com> and <gameicq.net>. In both these proceedings,

the decisions were in favor of the Complainant. The Respondent cannot,

in good faith, claim that it has no knowledge of the Complainant's rights

in the mark "ICQ" in view of the prior ICANN decisions, the

fame of the mark "ICQ", the ICQ marks’ distinctive qualities

and the Respondent’s use of the common word "our" in connection

with the Complainant’s ICQ marks. It cannot also claim in good faith that

it has made a legitimate noncommercial or fair use of the said Domain

Name.

B. Respondent

The Respondent has

not filed a Response.

6. Discussion and Findings

6.1 Effect of Respondent’s

default

Paragraph 5 (a) of

the Rules requires the Respondent to submit its response to the Center

within twenty (20) days of the commencement of the administrative proceeding.

By the Notification,

the Center informed the Respondent that the last date for sending its

response was April 23, 2001. The Respondent has failed to submit its response.

In view of the default it is open to the Panel, under paragraph (14)(b)

of the Rules to:

"draw such

inferences…as it considers appropriate."

The inferences include

the right of the Panel to conclude as stated in Ogaan India Private

Limited v. Mehboob Alam WIPO Case No. D2000-0720:

"that the

Respondent has no evidence to rebut the assertion of the Complainant."

However before arriving

at a decision, due heed must be paid to what was said in Charles

Jourdan Holding AG v. AAIM WIPO Case No. D2000-0403.

In that administrative proceeding, it was the Panel’s view that:

"in the

absence of a response to the Complainant’s allegations by the Respondent,

the Panel must evaluate those claims in the light of the unchallenged

evidence submitted by the Complainant."

It is therefore obligatory

on the part of the Panel, despite the absence of the Response, to ascertain

whether the Complainant has successfully made out a case against the Respondent

for the cancellation of the said Domain Name or its transfer to the Complainant.

6.2 Elements to

be proven

Paragraph 4 (a) of

the Policy envisages that to succeed, the Complainant must establish that:

i) the said

Domain Name is identical or confusingly similar to a trademark or

service mark in which the Complainant has rights; and

ii) the

Respondent has no rights or legitimate interests in respect of the

said Domain Name; and

iii) the

said Domain Name has been registered and is being used in bad faith.

The Complainant must

prove that all the aforesaid three elements are present.

6.3 Identical or confusingly

similar

The Complainant claims

rights in "ICQ". It has registered the mark "ICQ"

in several countries in classes 38 and 42 for telecommunications and computer

services. It has made extensive use of the mark "ICQ" as well

as the related marks ICQ Games, ICQ Phone, ICQmail, ICQ Search and ICQ

Radio for Internet-related services. There can be no doubt that the Complainant

enjoys goodwill in the word "ICQ".

The Panel has compared

the said Domain Name with the Complainant’s mark "ICQ" and finds

that the second level domain (SLD) "ouricq" is confusingly similar

to the Complainant’s trademark.

6.4 Respondent’s rights

or legitimate interests in the said Domain Name

Under paragraph 4

(c) of the Policy, the Respondent may demonstrate its rights and legitimate

interests in the said Domain Name by showing inter alia:

(i) its

use, of or demonstrable preparation to use, the said Domain Name

or a name corresponding to the said Domain Name in connection with

a bona fide offering of goods or services;

(ii) it

has been commonly known by the said Domain Name, even if it has

acquired no trademark or service mark rights or

(iii) it

was making a legitimate non-commercial or fair use of the said Domain

Name, without intent for commercial gain to misleadingly divert

consumers or to tarnish the trademark or service mark at issue.

The Respondent goes

by the name Shanghaihangwei Packing Material Co. Ltd. and in no sense

can it be regarded as an entity commonly known by the said Domain Name.

The Complainant has produced evidence in the form of a declaration by

Kwan Koehler and a printout downloaded from the Respondent’s web site

<ouricq.com> to bring home the point that the said web site is a

commercial multi-purpose portal site offering chat-room services and instant

communication services using inter alia "OICQ". These

services are very similar to those offered by the Complainant. The Panel

finds that such use of a confusingly similar mark is not bona fide

since it will misleadingly divert surfers of the Internet to

the Respondent and away from the Complainant.

6.5 Registration

and Use in Bad Faith

Paragraph 4 (b) of

the Policy sets out some non-exhaustive circumstances which may serve

as evidence of the registration and use of a domain name in bad faith

by the Respondent and they include the following:

(i) Registration

of the said Domain Name primarily for the purpose of disrupting

the business of a competitor.

(ii) Intentional

attempt by the use of the said Domain Name to attract for commercial

gain, Internet users to its web site, by creating a likelihood of

confusion with the Complainant’s mark as to the source, sponsorship,

affiliation or endorsement of its web site or a service on its web

site.

The Complainant’s

marks are "ICQ" and several words with "ICQ" as the

prefix. It has also a web site, <icq.com>. The adoption by the Respondent

of the domain name <ouricq.com> which closely resembles the mark

of the Complainant, is bound to create confusion. It is reasonable to

infer that Internet users will associate the said Domain Name with the

activities of the Complainant and mistakenly believe that the said Domain

Name is that of the Complainant or connected with it in some form or other

and the net result would be disruption of the business of the Complainant.

7. Decision

The Panel finds that

the Complainant has proved each of the three elements of paragraph 4 (a)

of the Policy. It requires that the said Domain Name be transferred to the

Complainant.

Hariram

Jayaram

Sole Panelist

Dated:

May 22, 2001

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• America Online, Inc. — D2001-1081 · Terminated
• America Online, Inc. v. M, Mike — D2001-1051 · icqauto.com, icqserv.com · Transfer · 01 Nov 2001
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• America Online, Inc. — D2001-0968 · Terminated