Icq4xxx.com

The timeline behind icq4xxx.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION America Online, Inc. v. David Bates Claim Number: FA0309000192595 PARTIES Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, II of Arent Fox Kintner Plotkin & Kahn, PLLC. Respondent is David Bates, Padstow Heights, Australia (“Respondent”) represented by David Bates. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <icq4xxx.com>, registered with Network Solutions, Inc. PANEL The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding. The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 3, 2003; the Forum received a hard copy of the Complaint on September 5, 2003. On September 8, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <icq4xxx.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). On September 9, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 9, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@icq4xxx.com by e-mail. A timely Response was received and determined to be complete on September 16, 2003. On September 25, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <icq4xxx.com> domain name is confusingly similar to Complainant’s ICQ mark. 2. Respondent does not have any rights or legitimate interests in the <icq4xxx.com> domain name. 3. Respondent registered and used the <icq4xxx.com> domain name in bad faith. B. Respondent Respondent has stated that he has deleted all the material related to the <icq4xxx.com> domain name and will not use the domain name in the future. Respondent says that he has complied with Complainant’s requests stated in the Complaint and will abide by any ruling of the Panel. FINDINGS America Online, Inc. and ICQ, Inc. (collectively “AOL”), are the owners of many trademark registrations worldwide for the mark ICQ, including federal trademark registrations in the United States and Australia. The mark ICQ has been used since at least as early as November 1996, in connection with computer and telecommunications services. AOL uses the mark ICQ.COM as the domain name for its portal web site for the ICQ service. Many years prior to Respondent’s registration of the domain name <icq4xxx.com> 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. AOL has invested substantial sums of money in developing and marketing its services. The ICQ mark has been and continues to be widely publicized through substantial advertising throughout the United States and the world. Respondent, David Bates, is a resident of Australia. Respondent registered the <icq4xxx.com> domain name in March 2002. Respondent uses the domain name in connection with commercial pornographic web sites. DISCUSSION Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this 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.” Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar Complainant has established rights in the ICQ mark through registration with the U.S. Patent and Trademark Office on December 12, 2000 (Reg. No. 2,411,657) and with authorities in Australia on October 19, 1998 (Reg. No. 776,100). Complainant also has established rights in the ICQ mark through the marks’s use in commerce since 1996. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption), see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established). Also, Complainant asserts that Respondent’s <icq4xxx.com> domain name is confusingly similar to the ICQ mark because the domain name fully incorporates the mark and merely adds the descriptive term “4xxx,” which describes the adult content that is exhibited on the <icq4xxx.com> website. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity). Accordingly, the Panel finds that the <icq4xxx.com> domain name is confusingly similar to Complainant’s ICQ mark under Policy ¶ 4(a)(i). Rights or Legitimate Interests Respondent lacks rights or legitimate interests in the <icq4xxx.com> domain name because Respondent was not authorized or licensed to register or use a domain name that incorporates the ICQ mark. The record fails to establish that Respondent is commonly known by the <icq4xxx.com> domain name and hence Respondent lacks rights or legitimate interests in the domain name. See Tercent, Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name). Furthermore, Complainant asserts that Respondent has attempted to commercially benefit from the <icq4xxx.com> domain name by linking it to adult-oriented websites. Attempts to commercially benefit from a domain name that is confusingly similar to another’s mark by linking the domain name to an adult-oriented website as evidence that the registrant lacks rights or legitimate interests in the domain name. See Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that Respondent’s use of its domain name to link unsuspecting Internet traffic to an adult-orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use); see also McClatchy Mgmt. Servs., Inc. v. Carrington a/k/a Party Night Inc., FA 155902 (Nat. Arb. Forum June 2, 2003) (holding that Respondent’s use of the disputed domain names to divert Internet users to a website that features pornographic material, had been “consistently held” to be neither a bona fide offering of goods or services . . . nor a legitimate noncommercial or fair use). In addition, Respondent’s willingness to transfer the <icq4xxx.com> domain name is evidence that Respondent lacks rights or legitimate interests in the domain name. See Marcor Int’l v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001) (finding that Respondent’s willingness to transfer the domain name at issue indicates that it has no rights or legitimate interests in the domain name in question); see also Colgate-Palmolive Co. v. Domains For Sale, FA 96248 (Nat. Arb. Forum Jan. 18, 2001) (finding that Respondent’s willingness to transfer the domain name at issue to Complainant, as reflected in its Response, is evidence that it has no rights or legitimate interests in the domain name). Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <icq4xxx.com> domain name under Policy ¶ 4(a)(ii). Registration and Use in Bad Faith Respondent had actual knowledge of the ICQ mark because the <icq4xxx.com> domain name fully incorporates the mark. Respondent also had constructive knowledge of the ICQ mark recognized worldwide and registered with the U. S. Patent and Trademark Office and other countries including Respondent’s country of residence. Therefore, Respondent registered and used the domain name in bad faith. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith). In addition, Respondent used the <icq4xxx.com> domain name to commercially benefit from the goodwill associated with the ICQ mark by linking the domain name to adult-oriented websites which is evidence that the domain name was registered and used in bad faith. See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s use of Complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites). Furthermore, Respondent’s willingness to transfer the <icq4xxx.com> domain name to Complainant is evidence that Respondent registered and used the domain name in bad faith. See Marcor Int’l v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001) (Respondent’s registration and use of the domain name at issue coupled with its expressed willingness to transfer the name amply satisfies the bad faith requirements set forth in the Policy). The Panel thus finds that Respondent registered and used the <icq4xxx.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <icq4xxx.com> domain name be TRANSFERRED from Respondent to Complainant. The Honorable Charles K. McCotter, Jr. (Ret.), Panelist Dated: October 7, 2003 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.