America Online, Inc. v. Anthony Tirona

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

America Online, Inc. v. Anthony Tirona

Case No. D2001-0645

1. The Parties

The Complainant is America Online, Inc. (AOL). AOL is a Delaware (USA) corporation

with its principal place of business in Dulles, Virginia (USA). AOL is represented

by James R. Davis, II of Arent Fox Kintner Plotkin & Kahn, Washington, DC,

USA.

The Respondent is Anthony Tirona, an individual who resides in Claremont, California,

USA.

2. Domain Names and Registrar

The domain names at issue are:

<icqsell.com>

<icqsell.net>

<icqsell.org>

<sellicq.com>

<sellicq.net>

<sellicq.org>

They are referred to as the Domain Names. The registrar is TierraNet, Inc.

d/b/a/ DomainDiscover.

3. Procedural History and Jurisdiction

The WIPO Arbitration and Mediation Center (the Center) received the Complainant's

complaint on May 11, 2001 (electronic copy) and May 15, 2001 (hard copy). The

Center verified that the complaint satisfies the formal requirement of the ICANN

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

Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules

for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules).

Complainant made the required payment to the Center. The formal date of the

commencement of this administrative proceeding is May 21, 2001.

On May 16, 2001, the Center transmitted via email to TierraNet, Inc. a request

for registrar verification in connection with this case. On May 16, 2001, TierraNet,

Inc. transmitted via email to the Center, TierraNet's Verification Response,

confirming that the Respondent Anthony Tirona is the registrant and administrative,

technical, zone, and billing contact.

Having verified that the complaint satisfied the formal requirements of the

Policy and the Rules, on May 21, 2001, the Center transmitted to the Respondent

Notification of Complaint and Commencement of the Administrative Proceeding

via post/courier, facsimile, and e-mail.

Respondent failed to respond to the Notification of Complaint and Commencement

of the Administrative Proceeding and the Center notified him of his default

on June 11, 2001, via email.

In view of the Complainant's designation of a single panelist and Respondent's

default the Center invited Mr. Richard G. Lyon to serve as a panelist.

Having received Mr. Lyon's Statement of Acceptance and Declaration of Impartiality

and Independence, the Center transmitted to the parties a Notification of Appointment

of Administrative Panel on July 13, 2001. The Projected Decision Date was July

27, 2001. The Sole Panelist finds that the Administrative Panel was properly

constituted and appointed in accordance with the Rules and Supplemental Rules,

and that the panel has jurisdiction over this dispute.

The Administrative Panel shall issue its Decision based on the complaint, the

evidence presented, the Policy, the Rules, and Supplemental Rules.

4. Factual Background

Complainant is the owner of at least 22 trademark registrations worldwide for

the mark ICQ, including registrations in the United States, Australia, Austria,

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

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

and Switzerland. As set forth in these trademark registrations, the mark ICQ

has been used since November 1996, in connection with the sale of: telecommunications

services, computer operating programs that may be downloaded from a computer

information network, and other computer services. Complainant has used the ICQ

marks in connection with its enormously successful ICQ.COM website and many

of the services offered on that website (e.g. ICQmail, ICQ 1,2,3 Center, ICQ

Chat Rooms, etc.). At this website Complainant offers many computer and Internet-related

goods and services.

Respondent registered the Domain Names on February 18, 2001. Respondent at

some point apparently operated a commercial website using the Domain Names,

through which Respondent offered to provide such goods and services as "Web

Hosting" "Software" and "Online Money." The sites are

no longer operative. Copies submitted with the Complaint have subject matter

service headings in English with text in another language, said in the Complaint

to be Russian (Footnote 1).

On April 12, 2001, Complainant's counsel sent Respondent a cease and desist

letter, addressed to the address Respondent had furnished to the Registrar.

This letter was returned "Not deliverable as addressed. Unable to forward."

5. Parties' Contentions

The Complainant's contentions may be summarized as follows:

The domains in question are confusingly similar or nearly identical to its

ICQ marks. Respondent has no rights or legitimate interests in respect to the

Domains. Respondent registered, used, and continues to use the Domain Names

in bad faith as evidenced by his attempts to capitalize on the ICQ mark, to

confuse consumers, his provision of false contact information, and his pattern

of registering infringing domains in order that Complainant could not reflect

its trademark in a corresponding domain name.

Respondent has failed to reply to the complaint.

6. Discussion and Findings

The Complainant must prove the elements set out in paragraph 4(a) of the Policy.

These elements are as follows:

(i) Respondent's Domain Names are identical or confusingly similar to a trademark

or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect to the Domain

Names; and

(iii) Respondent's Domain Name have been registered and are being used in bad

faith.

Complainant bears the burden of proof on each of these elements. Respondent's

default does not automatically result in judgment for the Complainant.

Identity and Confusion.

The Domain Names all incorporate verbatim the Complainant's ICQ mark. The addition

of the generic word sell to the trademarked ICQ is insufficient to distinguish

the Domain Names from Complainant's marks, as has been held by numerous arbitrators

and judges (Footnote 2). References within

Respondent's website to AOL and other AOL trademarks only add to the likelihood

of confusion. The Domain Names are identical to the Complainant's marks and

are likely to cause confusion among Complainant's customers.

Legitimate Interest.

Nothing in the record suggests that Respondent has any legitimate interest

of in the Domain Names. Complainant has not licensed Respondent to use its marks.

Respondent has offered no reason why he needs to use the Complainant's marks

or why he needs to register six variations on the Complainant's marks. Respondent

has failed to offer any evidence that he has ever been known by the ICQ initials.

Bad Faith.

Paragraph 4(b) of the Policy sets out examples that shall be evidence of the

registration and use of a domain name in bad faith. Section 4(b)(iv) of the

Policy provides that the following will be evidence of bad faith:

"by using the domain name, you [Respondent] 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 complainant's mark

as to the source, sponsorship, affiliation, or endorsement of your web site

or of a product or service on your web site or location."

Respondent’s web site includes prominent references to both AOL and ICQ, as

well as to the ICQ for Palm Computing Platform and versions 2000 and 2000b of

the ICQ service. The English portions of Respondent's websites suffice to show

that Respondent is using the Domain Names for commercial purposes, that several

of the services are comparable to those offered by Complainant, and that use

of Complainant's marks was done intentionally to attract persons seeking Complainant's

website and services. The offer of "ICQ UINS for Sale," with prices, illustrates

all three of these matters. Registration and use of the Domain Names in bad

faith are plainly proven by this.

7. Decision

For the foregoing reasons the Panel determines that the Complainant has proven

each of the three elements in paragraph 4(a) of the Uniform Policy in relation

to the Domain Names.

Pursuant to request by Complainant, paragraph 4(i) of the Policy, and paragraph

15 of the Rules, the Panel orders that the registration of the Domain Names

be transferred to the Complainant.

Richard G. Lyon

Sole Panelist

Dated: August 3, 2001

Footnotes:

1. The non-English text of the web pages submitted as an exhibit

to the complaint is gibberish. (back to text)

2. E.g., Professional Golfers of America v. Baldwin, WIPO

Case No. D2000-0339. (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