America Online, Inc. v. Andy Hind

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

America

Online, Inc. v. Andy Hind

Case No.

D2001-0642

1. The Parties

The complainant is America

Online, Inc. of 22000 AOL Way, Dulles, Virginia 20166, United States of America,

represented by James R. Davis, II Esq., of Arent Fox Kintner Plotkin & Kahn

of Washington, DC., United States of America.

The respondent is Andy

Hind of Business & Innovation Centre, Wearfield, Sunderland, Tyne and W

SR5 2TA, United Kingdom.

2. The Domain Names

and Registrar

This dispute concerns the

domain names <icq-hacks.com> <icq-hacks.net> <icq-plus.net>

and <map-quest.net>.

The registrar is BulkRegister.com,

Inc., of Baltimore, MD, USA.

3. Procedural History

This is an administrative

proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the

Policy") adopted by the Internet Corporation for Assigned Names and Numbers

("ICANN") on August 26, 1999, the Rules for Uniform Domain Name Dispute

Resolution Policy, approved by ICANN on October 24, 1999, ("the Rules")

and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

("the Supplemental Rules") of the WIPO Arbitration and Mediation Center

("the Center").

The Complaint was received

by the Center by email on May 10, 2001, and in hardcopy on May 15, 2001. The

Complaint was acknowledged on May 14, 2001. That day registration details were

sought from the Registrar. On May 18, 2001, the registrar confirmed that the

disputed domain names are registered in the name of the Respondent and that

the Policy applies. On May 18, 2001, the Center satisfied itself that the complainant

had complied with all formal requirements, including payment of the prescribed

fee, and printed out a copy of the disputed Webpages. On May 22, 2001, the Center

formally notified the respondent by post/courier (with enclosures) fax and email

(both without attachments) of the Complaint and of the commencement of this

administrative proceeding and sent copies to the Complainant, the Registrar

and ICANN.

The last day specified

by the Center for a response was June 10, 2001. No response was filed. On June

14, 2001, the Center gave formal notice of the respondent’s default.

On June 25, 2001, the Center

notified the parties of the appointment of Alan L. Limbury to serve

as panelist, Mr. Limbury having submitted a Statement of Acceptance and Declaration

of Impartiality and Independence. That day, the Center transmitted the case

file to the panel and notified the parties of the projected decision date of

July 9, 2001.

The language of the proceeding

was English.

The panel is satisfied

that the Complaint was filed in accordance with the requirements of the Rules

and Supplemental Rules; payment was properly made; the panel agrees with the

Center’s assessment concerning the Complaint’s compliance with the formal requirements;

the Complaint was properly notified to the respondent in accordance with paragraph

2(a) of the Rules; no Response was filed and the administrative panel was properly

constituted.

4. Factual Background

The Complainant (either

itself or through affiliated entities) entities owns the trademarks ICQ and

MAPQUEST ("the AOL marks") in many countries including U.S. Trademark

Registrations 2,411,657 for ICQ and 2,129,378 for MAPQUEST; European Community

Trademark Registration E972513 for ICQ and UK Trademark Registration 2193931

for MAPQUEST.

The Complainant also uses

the marks <icq.com> and <mapquest.com> in connection with providing

services on the Internet. Each year millions of the Complainant’s customers

worldwide obtain computer and Internet-related goods and services offered under

the AOL marks. The AOL marks have become well-known and famous.

On December 1, 2000, the

Respondent registered the disputed domain names to use in connection with commercial

Web sites.

5. Parties’ Contentions

A. Complainant

The disputed domain names

are confusingly similar to the AOL Marks. The addition of generic words like

"hacks" or "plus" to the ICQ mark, and the use of a hyphen

to separate the two syllables of the famous MAPQUEST mark, are insufficient

to ensure that consumers will not be confused as to whether the Complainant

or its affiliates endorse or operate the respondent’s Web sites.

The Respondent has no rights

or legitimate interests in respect of the disputed domain names. The respondent

is not named ICQ or Mapquest, and the Complainant has not licensed or authorized

him to use the famous ICQ or MAPQUEST marks.

The following is evidence

that the Respondent registered, used, and continues to use the disputed domain

names in bad faith to capitalize on the famous AOL marks and to divert consumers

away from the ICQ and Mapquest services:

(a) he registered the

disputed domain names many years after the Complainant’s adoption and first

use of the AOL marks;

(b) he provided a false

or outdated address in the Whois records in an attempt to make it more difficult

for the Complainant and other trademark owners to contact him regarding the

improper and unauthorized use of trademarks: Quixtar Investments, Inc. v.

Scott A. Smithberger and QUIXTAR-IBO, WIPO

Case No. D2000-0138;

(c) by operating commercial

Web sites using the famous AOL marks, he is attempting to profit and capitalize

on the goodwill the complainant has created in its famous marks;

(d) he is not using

ICQ or Mapquest as acronyms, names, or abbreviations at his commercial Web sites.

This demonstrates that he chose to use the disputed domain names solely to draw

attention to his Web sites and confuse consumers and profit from the international

goodwill the Complainant has developed in its famous marks;

(e) based upon the false

contact information provided by the Respondent, the fame of the AOL marks and

the fact that the Respondent’s commercial Web sites are not affiliated with

and do not make reference to the ICQ or Mapquest services, he cannot, in good

faith, claim that he had no knowledge of the complainant’s rights in the AOL

marks. Furthermore, the Respondent cannot claim, in good faith, that he made

a legitimate noncommercial or fair use of the disputed domain names or that

he is commonly known as ICQ or MAPQUEST.

B. Respondent

No response was filed.

6. Discussion and Findings

Failure to file a Response

Failure to file a Response

permits the panel to infer that the Respondent does not deny the facts which

the Complainant asserts nor the conclusions which the Complainant asserts can

be drawn from those facts". (Footnote

1)

Substantive issues

To qualify for cancellation

or transfer, a Complainant must prove each element of paragraph 4(a) of the

Policy, namely:

(i) the disputed 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 domain name; and

(iii) the disputed domain

name has been registered and is being used in bad faith.

Identity or confusing similarity

Essential or virtual identity

is sufficient for the purposes of the Policy. (Footnote

2)

The test of confusing similarity

under the Policy, unlike trademark infringement or unfair competition cases,

is confined to a consideration of the disputed domain name and the trademark.(Footnote

3) Here each disputed domain name incorporates the whole of one of the Complainant’s

trademarks.

The panel finds the disputed

domain names are virtually identical and are confusingly similar to the Complainant’s

trademarks. The Complainant has established this element.

Illegitimacy

The Complainant has not

authorized the Respondent to use its trademarks nor to register the disputed

domain names. The name of the Respondent is not and does not include any part

of any of the disputed domain names. The sites established at each of the disputed

domain names contain identical messages, but for the domain name. The <icq-hacks.com>

site, for example (<icq-hacks.com>) says:

"ICQ Hacks – the Hottest

Site on the Internet. Free Software, Free Pics, Games, Sport, Movies…"

[etc]

"Click here to enter".

It is thus apparent that

each site has been designed to attract Internet users because of their familiarity

with the AOL marks. The Respondent is trading off the Complainant’s goodwill

in so doing.

The panel finds the Complainant

has established this element. The Respondent has no rights or legitimate interests

in the disputed domain names.

Bad faith registration

and use

A finding of bad faith

may be made where the Respondent "knew or should have known" of the

registration and use of the trademark prior to registering the domain name (Footnote

4). Here the content of Respondent’s web sites and the simultaneous registration

of the domain names show unequivocally that the Respondent must have known of

the AOL marks before he registered the domain names.

Accordingly the Complainant

has established that the disputed domain names were registered and are being

used in bad faith.

7. Decision

Pursuant to Paragraphs

4(i) of the Policy and 15 of the Rules, the panel directs that the domain names

names <icq-hacks.com> <icq-hacks.net> <icq-plus.net> and <map-quest.net>

be transferred to the Complainant.

Alan L.

Limbury

Sole Panelist

Dated: July

1, 2001

Footnotes:

1. Reuters Limited v.

Global Net 2000, Inc. (WIPO Case No. D2000-0441).

See also Hewlett-Packard Company v. Full System S.a.S. (NAF Case No.

FA0094637); David G. Cook v. This Domain is For Sale (NAF Case No. FA0094957)

and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge (NAF

Case No. FA0094925). (back to text)

2. See The Stanley Works

and Stanley Logistics, Inc v. Camp Creek. Co., Inc. (WIPO

Case No. D2000-0113), Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor

Corporation v. S&S Enterprises Ltd. (WIPO

Case No. D2000-0802) and Nokia Corporation v. Nokiagirls.com a.k.a

IBCC (WIPO Case No. D2000-0102). For

a typical US case see Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc.,

202 F.3d 489, 497-98 (2d Cir. 2000) (the differences between the trademark "sporty’s"

and the domain name <sportys.com> – specifically, an apostrophe in the

trademark and the addition of .com in the domain name – are "inconsequential,"

such that the domain name is "indistinguishable" from and "certainly

‘confusingly similar’ to the protected mark"). (back to text)

3. AltaVista Company

v. S.M.A., Inc. (WIPO Case No. D2000-0927);

Gateway, Inc. v. Pixelera.com, Inc (formerly Gateway Media Productions,

Inc.) (WIPO Case No. D2000-0109).

(back to text)

4. SportSoft

Golf, Inc. v. Hale Irwin’s Golfers’ Passport (NAF Case No. FA0094956). Likewise

Marriott International, Inc. v. John Marriot (NAF Case No. FA0094737);

163972 Canada Inc. v. Sandro Ursino (DeC Case No. AF-0211) and

Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com (NAF Case No. FA0095037).

(back to text)

More cases by this complainant

• America Online, Inc. v. Chris Hoffman — D2001-1184 · aolipc.com, ipcaol.com, itstimeforaol.com · Transfer · 19 Nov 2001
• America Online, Inc. v. Bill Katsis, Quik-E Inc. — D2001-1141 · icqvideo.com · Transfer · 20 Dec 2001
• America Online, Inc. — D2001-1081 · Terminated
• America Online, Inc. v. M, Mike — D2001-1051 · icqauto.com, icqserv.com · Transfer · 01 Nov 2001
• America Online, Inc. v. Chan Chunkwong — D2001-1043 · china-aol.com · Transfer · 18 Oct 2001
• America Online, Inc. — D2001-0968 · Terminated