America Online, Inc. v. Dot Stop

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

America Online, Inc. v. Dot Stop

Case No. D2001-0760

1. The Parties

(a) Complainant is America Online, Inc., a Delaware Corporation with its principal

place of business at 22000 AOL Way, Dulles, Virginia, 20166, U.S.A. ("AOL").

(b) The Complainant’s authorized representative in this administrative proceeding

is James R. Davis, II, Arent Fox Kintner Plotkin and Kahn, 1050 Connecticut

Avenue, NW, Washington, DC 20036, U.S.A.

(c) Respondent, according to the BulkRegister.com, Inc. WHOIS database, is

Dot Stop c/o Jim Lewis, 226 Oak Road West, Mahopac, NY 10541, U.S.A. ("Respondent").

2. Domain Name and Registrar

(a) The domain name at issue is as follows:

<whatisicq.com>

(The "Domain Name").

(b) The registrar for the domain name at issue is BulkRegister.com, Inc. ("BulkRegister").

3. Procedural History

(a) On June 7, 2001, the Complaint was received by the WIPO Arbitration and

Mediation Center (the "Center") by e-mail for decision in accordance with the

Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation

for Assigned Names and Numbers ("ICANN") on August 26, 1999, (the

"Policy") and in hard copy on June 11, 2001.

(b) The Center verified that the Complaint satisfies the formal requirements

of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy approved

by ICANN on October 24, 1999, (the "Rules") and WIPO Supplemental Rules for

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

(c) Payment in the required amount has been made by the Complainant to the

Center.

(d) A copy of the Complaint, together with the cover sheet as prescribed by

the Supplemental Rules, was sent or transmitted to both the Respondent and to

BulkRegister in compliance with the Rules on June 7, 2001.

(e) The Center transmitted to BulkRegister a request for registrar verification

in connection with this case.

(f) On June 13, 2001, the Center received BulkRegister’s Verification Response,

(1) confirming that BulkRegister had received a copy of the Complaint sent

by the Complainant in accordance with the Supplemental Rules, (2) confirming

that the Domain Name is registered with BulkRegister, (3) confirming that the

Uniform Domain Name Dispute Resolution Policy applies to the Domain Name, (4)

confirming that the Respondent is the current registrant of the Domain Name

(5) providing the full contact details that are available in BulkRegister’s

WHOIS database for the registrant, the technical contact and the administrative

contact for the Domain Name, and (6) stating that the Domain Name is in "Registrar

LOCK" status.

(g) On June 15, 2001, the Center transmitted via post/courier and e-mail Notification

of Complaint and Commencement of the Administrative Proceeding, together with

a copy of the Complaint, to the Respondent and via e-mail to the Complainant.

The Center advised that (1) the formal date of the commencement of the administrative

proceeding is June 15, 2001, (2) the response was due by July 4, 2001, (3) in

the event of default the Center would appoint a Panel to review the facts and

to decide the case, (4) the Panel would be entitled to draw such inferences

from Respondent’s default as it considers appropriate, (5) AOL had elected for

the matter to be decided by a single panelist who would be appointed within

five days of the date the response was due, (6) the fees for the administrative

proceeding would be paid in their entirety by AOL, (7) the Panel would decide

the case within 14 days of its appointment, and (8) the Center could be contacted

at stated postal and e-mail addresses, a stated telephone number, and a stated

fax number.

(h) On July 4, 2001, the Center transmitted to the Complainant via e-mail and

to the Respondent via e-mail Acknowledgement of Receipt (Response) acknowledging

receipt of Respondent’s Response; advising that none of the copies of the Response

sent by post was signed and requesting that Respondent send at least one copy

of the Response with an original signature; and advising that the Center shall

proceed to appoint the administrative panel.

(i) On July 19, 2001, the Center transmitted to the Complainant via e-mail

and to the Respondent via e-mail, Notification of Appointment of Administrative

Panel and Projected Decision Date. The notification advised that Mr. Gaynell

C. Methvin had been appointed as the single panelist, and that the decision

would be due on August 2, 2001.

(j) On July 19, 2001, the Center transmitted the file in this case via post/courier

and e-mail to the appointed panelist, Gaynell Methvin.

4. Factual Background; Parties’ Contentions

a. The Trademarks

The Complaint (¶ [12] 1 – [12] l3) is based on at least 22 trademark registrations

by AOL and ICQ, Inc. (collectively referred to as "AOL" in the Complaint)

registered in the U.S. Patent and Trademark Office ("USPTO") and elsewhere

around the world for the mark ICQ pursuant to registrations evidenced in Annex B

of the Complaint.

"As set forth in these trademark registrations, the mark ICQ has been

used 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.’"

b. The Complaint

AOL in support of its position asserts the following:

"[12.] 2. AOL is the owner of numerous trademarks, service marks, and

trade names that include the mark ICQ, e.g., ICQ Games, ICQ Phone, ICQmail,

ICU Search, ICQ Radio (collectively the ICQ Marks). See Annex E for examples

of ICQ’s use of its 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, which is a significant method of promoting the ICQ service.

[12.] 3. Many years prior to Respondent’s registration of the domain name <whatisicq.com>

(the "Infringing Domain"), and at least as early as 1996, AOL and

its predecessor-in-interest adopted and began using the ICQ mark in connection

with computer- and Internet-related goods and services. Since its first adoption,

the distinctive ICQ mark has been used continuously and extensively in interstate

and international commerce in connection with the advertising and sale of goods

and services.

[12.] 4. AOL has invested substantial sums of money in developing and marketing

its services.

[12.] 5. Each year tens of millions of customers worldwide obtain goods and

services offered under the ICQ mark; millions more are exposed to said mark

through advertising and promotion.

[12.] 6. The ICQ mark has been and continues to be widely publicized through

substantial advertising throughout the United States and the world. A significant

amount of money has 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.

[12.] 7. Sales of services under the ICQ mark have amounted to many millions

of dollars. As a result, the general public has come to associate the ICQ name

and mark with services of a high and uniform quality.

[12.] 8. Because of these substantial advertising expenditures and sales, the

distinctive ICQ mark has become well-known and famous among members of the purchasing

public. AOL recently announced that the ICQ service has registered over 100,000,000

subscribers worldwide. See Annex G.

[12.] 9. Many years after AOL’s adoption and first use of its ICQ mark, and

long after the ICQ mark became well-known and famous, Respondent registered

the Infringing Domain for the bad faith purpose of profiting from the goodwill

AOL has created in its ICQ Marks.

[12.] 10. The domain name <whatisicq.com> is confusingly similar or nearly

identical to the ICQ Marks. The addition of the generic words ‘what is’ to the

famous ICQ mark not only is insufficient to prevent consumer confusion, it actually

enhances the likelihood of confusion by creating the impression that ICQ or

AOL endorse or operate the site in an attempt to describe the ICQ service.

[12.] 11. Respondent registered, used, and continues to use the Infringing

Domain in bad faith to capitalize on the famous ICQ mark and to confuse consumers.

[12.] 12. Respondent has no rights or legitimate interests in respect to the

Infringing Domain. Respondent is not named ICQ and it makes no reference to

‘ICQ’ or ‘What Is ICQ’ at its commercial Web site. Moreover, AOL has not authorized

or licensed Respondent to use the ICQ mark. The following is evidence of Respondent’s

bad faith registration and use of the domain name:

(a) Respondent’s bad faith registration and use of <whatisicq.com> is

evidenced by the fact that Respondent registered the Infringing Domain many

years after AOL’s adoption and first use of its ICQ Marks (Whois records for

the Infringing Domain are included as Annex D).

(b) Respondent’s bad faith use of <whatisicq.com> is demonstrated by

Respondent’s use of the domain name in connection with a commercial online search

engine called Dot Stop. See Annex C for copy of infringing site. As evidence

of Respondent’s bad faith, it should be noted that the Dot Stop search service

is operated by Respondent. See Annex H for Whois records of <dotstop.com>

showing identical mailing address used in Whois records for <whatisicq.com.>.

(c) Respondent’s Web site makes absolutely no reference to ICQ. This gratuitous

use of the ICQ mark in a domain name to promote a commercial service operated

by Respondent shows that Respondent registered and used the Infringing Domain

solely to capitalize on the goodwill AOL has created in its famous ICQ mark,

and to create the impression that Respondent’s Web site is somehow endorsed

by or affiliated with AOL or ICQ.

(d) On February 7 and May 15, 2001, counsel for AOL sent letters to Respondent,

objecting to the improper and unauthorized manner in which Respondent was using

the ICQ mark in the domain name <whatisicq.com>. Copies of letters included

as Annex F.

(e) After receiving AOL’s follow up letter, Jim Lewis, a representative of

Dot Stop, called counsel for AOL and offered to sell the domain name for $500.

Counsel for AOL explained that AOL will not pay a premium for the transfer of

a domain name that infringes upon an AOL mark. Counsel for AOL sent Mr. Lewis

a follow up e-mail, offering to resolve the matter amicably. Mr. Lewis stating

that he would not transfer <whatisicq.com> unless AOL paid $200. Mr. Lewis

also requested that counsel for AOL not contact him any further unless it was

willing to pay the $200. Copies of correspondence and offer to sell domain included

as Annex I. Based upon Mr. Lewis’ refusal to resolve this matter amicably, AOL

was forced to file this ICANN proceeding.

(f) As noted in the identification of goods and services for the ICQ mark,

many of the goods and services provided by Respondent through its Dot Stop search

service (e.g., electronic databases, online yellow pages, providing general

interest information) are very similar to those provided by AOL under the ICQ

mark. Respondent, therefore, is using the famous ICQ mark in the domain name

<whatisicq.com> to promote Respondent’s services for the bad faith purpose

of profiting from the goodwill AOL has created in its famous mark.

[12.] 13. Based upon (1) the correspondence sent by AOL to Respondent, (2)

the fame of the ICQ mark, (3) the fact that Respondent’s Web site makes no reference

to the ICQ mark, or the letters ‘ICQ,’ (4) Respondent’s use of the ICQ mark

to promote a commercial site owned and operated by Respondent, and (5) Respondent’s

offer to sell <whatisicq.com> for an amount in excess of its actual registration

fees, Respondent cannot, in good faith, claim that it had no knowledge of AOL’s

rights in the ICQ mark. Furthermore, Respondent cannot claim, in good faith,

that it made a legitimate noncommercial or fair use of the domain names, or

that it is commonly known by the name ICQ."

c. Remedies Requested

As for relief, AOL requests at Paragraph 13:

"In accordance with Paragraph 4(b)(i) of the Policy, for the reasons described

in Section V above, the Complainant requests the Administrative Panel appointed

in this administrative proceeding issue a decision that <whatisicq.com>

be transferred to Complainant."

d. Respondent’s Answer

Respondent in support of its position asserts the following:

"[1.] 1. I am an individual who does not have the money to properly defend

myself from covetous parties such as the Internet giant AOL. I only want to

make a few points regarding my defense of this name and I hope I can convince

you to not let companies perform ‘reverse hijacking’ which is what I feel AOL

is trying to do.

[1.] 2. As I understand the rules of the UDRP, to lose a case, a person or

company must register the disputed domain name in ‘bad faith’. Since I had never

heard of ‘ICQ’ prior to registering it, I submit that the domain name was not

registered in bad faith. The only evidence I can submit to you showing that

I never heard of the mark is that not one person that I have spoken with since

this dispute has come up has ever heard of ICQ and I surmise that if you ask

100 people if they have heard of the term, 99 will say no, hardly a ‘famous’

mark in my opinion. The reason I registered the name was that I have ways of

determining if a name or phrase generates any web traffic and this one falsely

indicated that there was web traffic associated with it.

[1.] 3. The US Patent & Trade Organization lists 6 different trademarks

on these letters, 2 of which can be identified as AOL’s, showing non-exclusive

use of this term. Not only do they not have exclusive rights to these letters,

but I was not using the term in a manner that even remotely resembles the way

that AOL uses it. My site cannot be confused in any way with AOL’s and I feel

the ‘confusingly similar’ argument is absurd.

[1.] 4. I was actually very ‘indifferent’ to the name and upon being contacted

by AOL’s representatives, told them that I would certainly have no problem transferring

the name to them and only asked that they cover a small fraction of my costs

associated with this name. This is the point that really bothers me as it was

I who tried to amicably resolve this without wasting the time of all parties

involved. It was AOL and their representatives that obviously never wanted to

resolve this amicably and were only trying to get me to give an ‘amount’ so

they could show ‘bad faith’ in their arbitration proceeding. The $200 figure

I gave them doesn’t even cover 1 month of hosting the name for me, so it is

hardly a profit driven figure. As I understand it, ICANN and the UDRP prefer

the parties to work in good faith to try to resolve the matter amicably prior

to bringing a complaint to arbitration, obviously a point not followed by the

complainant in this matter.

In conclusion, I submit that the domain name in dispute was proven not to be,

and was in fact NOT registered in bad faith and hope that you make a decision

that sets a precedent for these large corporations to try and resolve these

matters in good faith prior to wasting everyone’s time on an issue that never

needed to come to arbitration. It seems to me to be a case where AOL has given

their lawyers the green light to ‘reverse hijack’ names from their rightful

owners (anyone that uses the letters ‘icq’). The lawyers in turn, figure that

they can make more money from their client if they send this matter to arbitration.

How much time can they possibly bill to their clients if these matters are resolved

swiftly? I think I have shown this to be the case and feel a decision in my

favor is the correct decision. I apologize on behalf of myself, AOL, and its

representatives for this matter ever coming to arbitration."

5. Discussion and Findings

Paragraph 4 of the Policy directs that AOL must prove, with respect to the

domain name in issue, each of the following:

(i) The domain names in issue are identical or confusingly similar to the ICQ

trademark, and

(ii) Respondent has no rights or legitimate interests in respect of the domain

names, and

(iii) The domain names have been registered and are being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances which,

for purposes of Paragraph 4(a)(iii) above, shall be evidence of the registration

and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances which,

if proved by respondent, shall demonstrate respondent’s rights or legitimate

interests to the domain name for purposes of Paragraph 4(a)(ii) above.

a. Identity or Confusing Similarity

AOL urges, and has the burden of proving, that the Domain Name is either identical

to, or confusingly similar to, the ICQ trademarks.

On its face, the Domain Name incorporates the term "ICQ." Close identity to

the AOL ICQ trademarks is clear. In light of the truth and controlling nature

of the facts set forth in the Complaint, paragraphs [12] 2 – [12] l3, the Panel

finds that the Domain Name is confusingly similar to the ICQ trademarks.

b. Rights or Legitimate Interests

On this record, no challenge has been leveled with respect to (1) the validity

of any ICQ trademarks or service marks, (2) AOL’s rights in those marks with

respect to AOL services and goods, (3) the global fame and goodwill associated

with those marks, or (4) any fact averred by AOL as to promotion of the marks,

use of the marks, and total sales of services and goods under the marks. Accordingly,

such facts are found to be true.

In light of the foregoing, it is found that this record demonstrates that Respondent

has no rights or legitimate interests vis-a-vis <whatisicq.com>.

c. Registration and Use in Bad Faith

Registration of the Domain Name in bad faith is a matter of the appropriate

inferences to draw from circumstantial evidence. Each is to be proved by AOL.

The facts asserted by AOL in support of its position that Respondent’s registration

was in bad faith are found in the Complaint in paragraphs [12] l2 - [12]

13. These facts are incorporated herein by reference. Respondent’s Answer does

not directly respond to any of the factually specific allegations found in paragraph

[12] 12 of the Complaint, but rather Respondent makes general allegations, unsupported

by any evidence. In particular, Respondent does not even attempt to refute the

facts stated in subparts (a), (b), (c) or (f) of paragraph [12] 12 of the Complaint.

As to the allegations in the Answer, the Panel has the following comments (using

the same number paragraphs as used by Respondent):

2. Two major problems exist with this paragraph. First, as to Respondents statement

that he had never heard of ICQ – obviously Respondent made no effort to do any

trademark, service mark or trade name search prior to adopting the Domain Name

for had he done so, he would have readily found AOL’s registered mark. Further,

AOL has provided abundant and credible evidence of the widespread use of the

mark prior to Respondent’s adoption and use of the Domain Name. Second, and

most damaging to Respondent’s position is his purported reason for adopting

the Domain Name found in the last sentence of his statement. This statement

simply makes no logical sense. The Panel cannot place any faith in a contention

such as "I have ways of determining if a name or phrase generates any web

traffic" without some attempt to explain this method and how it excuses

his adoption of the name. The panel is left with no alternative but to ignore

this statement and give it no weight in determining whether the name was registered

in bad faith.

3. The Panel respectfully disagrees with the Respondent’s belief that the Domain

Name is not confusingly similar with AOL’s registered mark. Trademark law is

quite clear on this point and supports AOL’s position.

4. Since Respondent has no legitimate rights in the Domain Name he is not in

a position to be demanding reimbursement for cost and, therefore, the demand

for any sum was inappropriate. Any offer to sell was wrong, regardless of how

the offer came about.

Respondent’s conclusion: Of course, all parties are interested in the system

working fairly, but Respondent has failed to take into consideration the fact

that all of this time, trouble and cost could have been completely avoided had

he done an adequate search to determine the rights of AOL before adopting the

Domain Name.

In light of Respondent’s failure to respond to subparagraphs (a), (b), (c)

and (f) and the lack of persuasiveness of his answer as outlined above, it is

the Panel’s conclusion that AOL has met its burden of proving that Respondent

registered the domain name <whatisicq.com> in bad faith.

d. Paragraph 4.c Factors

With respect to the Domain Name, Respondent has failed to prove any of the

three circumstances set out in Paragraph 4(c) of the Policy, viz.:

(i) before any notice to Respondent of the dispute, Respondent’s use of or

preparations to use the domain name were in connection with a bona fide offering

of goods or services,

(ii) Respondent or a related entity has been commonly known by the domain name,

and

(iii) Respondent is making legitimate noncommercial or fair use of the domain

name in issue, "without intent for commercial gain to misleadingly divert consumers

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

As averred by AOL and properly inferred from the undisputed facts as to Respondent’s

conduct, each of these three factors must be resolved in favor of AOL.

6. Decision

The panel has jurisdiction of this dispute. Respondent has received notice

of the commencement of this proceeding, the Policy, the Complaint, and Respondent’s

answer has been given careful study and consideration. Respondent has been afforded

due process.

With respect to the request for transfer of the Domain Name, the Panel decides

that AOL has carried its burden of proving (a) the Domain Name here is identical

to or confusingly similar to the ICQ mark, (b) Respondent has no rights and

no legitimate interests in respect of the Domain Name, and (c) the Domain Name

has been registered and used in bad faith by Respondent. Accordingly, the Panel

requires that the registration of the domain name <whatisicq.com> be transferred

to AOL.

Gaynell C. Methvin

Sole Panelist

Dated: August 8, 2001

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