Descargarwinamp.com + 6 more domains

The timeline behind descargarwinamp.com

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

How each disputed name was decided in this proceeding.

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

DECISION America Online, Inc. v. Miguel Villanueva Claim Number: FA0402000236589 PARTIES Complainant is America Online, Inc. (“Complainant”), represented by James R. Davis II, of Arent Fox Kintner Plotkin & Kahn, 1050 Connecticut Avenue, NW, Washington, DC 20036. Respondent is Miguel Villanueva (“Respondent”), Via Favencia 67, Barcelona, Spain 08042. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <descargarwinamp.com>, <bajarwinamp.com>, <telecharger-winamp.com>, <telechargerdewinamp.com>, <telecharger-icq.com>, <telechargerdeicq.com> and <telechargericq.net>, registered with Iholdings.com, Inc. d/b/a Dotregistrar.com. 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. John J. Upchurch as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 12, 2004; the Forum received a hard copy of the Complaint on February 17, 2004. On February 16, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain names <descargarwinamp.com>, <bajarwinamp.com>, <telecharger-winamp.com>, <telechargerdewinamp.com>, <telecharger-icq.com>, <telechargerdeicq.com> and <telechargericq.net> are registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the names. Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com 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 February 20, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 11, 2004 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@descargarwinamp.com, postmaster@bajarwinamp.com, postmaster@telecharger-winamp.com, postmaster@telechargerdewinamp.com, postmaster@telecharger-icq.com, postmaster@telechargerdeicq.com and postmaster@telechargericq.net by e-mail. Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default. On March 23, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent. RELIEF SOUGHT Complainant requests that the domain names be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <descargarwinamp.com>, <bajarwinamp.com>, <telecharger-winamp.com>, <telechargerdewinamp.com>, <telecharger-icq.com>, <telechargerdeicq.com> and <telechargericq.net> domain names are confusingly similar to Complainant’s ICQ and WINAMP marks. 2. Respondent does not have any rights or legitimate interests in the <descargarwinamp.com>, <bajarwinamp.com>, <telecharger-winamp.com>, <telechargerdewinamp.com>, <telecharger-icq.com>, <telechargerdeicq.com> and <telechargericq.net> domain names. 3. Respondent registered and used the <descargarwinamp.com>, <bajarwinamp.com>, <telecharger-winamp.com>, <telechargerdewinamp.com>, <telecharger-icq.com>, <telechargerdeicq.com> and <telechargericq.net> domain names in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant is known worldwide for its computer and Internet-related goods and services. Complainant uses its ICQ and WINAMP marks in conjunction with its business. Complainant registered the ICQ and WINAMP marks with the U.S. Patent and Trademark Office (“USPTO”) on December 12, 2000 and April 9, 2002, respectively. (Reg. Nos. 2411657 and 2557585, respectively). Respondent registered the disputed domain names between October 26, 2003 and January 18, 2004. Respondent uses the domain names to route Internet users to various commercial websites that make prominent use of the ICQ and WINAMP marks and logos and provide software downloads. The websites are either in the French or Spanish language. DISCUSSION Paragraph 15(a) of 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." In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) 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 and WINAMP marks through registration with the USPTO. 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). Respondent’s domain names are confusingly similar to Complainant’s marks because each of the domain names fully incorporates one of Complainant’s marks and merely adds either a French or Spanish word meaning “download.” The word “download” translates into French as “telechargement” and in Spanish translates as “bajar” or “descargar.” The French word “de” translates to the word “of.” The addition of the generic French and Spanish words is insufficient to distinguish the domain names from Complainant’s marks. Moreover, the word “download” is descriptive of Complainant’s business because Complainant provides computer and Internet-related goods and services. Therefore, the Panel concludes that the domain names are confusingly similar to Complainant’s ICQ and WINAMP marks. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with Complainant’s registered mark “llbean” does not circumvent Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy). Furthermore, the addition of the generic top-level domains “.com” and “.net” are not relevant in determining whether the domain names are confusingly similar to Complainant’s marks. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is plainly identical to Complainant’s MYSTIC LAKE trademark and service mark). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Respondent failed to provide a Response; therefore, the Panel may accept all reasonable allegations and inferences in the Complaint as true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint). Due to Respondent’s failure to contest the allegations of the Complaint, the Panel presumes that Respondent lacks rights and legitimate interests in the domain names. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed). Complainant alleges that each of the domain names is confusingly similar to one of Complainant’s marks and resolves to a commercial website. The Panel accepts this assertion as true and finds that Respondent’s use of the domain names does not constitute a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using Complainant’s mark by redirecting Internet traffic to its own website); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no “bona fide” offering of goods or services where Respondent used Complainant’s mark without authorization to attract Internet users to its website, which offered both Complainant’s products and those of Complainant’s competitors). Furthermore, Respondent is not authorized or licensed to register or use domain names that incorporate Complainant’s marks. Moreover, the record fails to establish that Respondent is commonly known by the domain names. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the domain names pursuant to Policy ¶ 4(c)(ii). 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Registration and Use in Bad Faith Each of Respondent’s domain names takes advantage of the goodwill associated with Complainant’s marks and is used for commercial gain. Therefore, the Panel finds that each of the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through Respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using Complainant’s famous marks and likeness); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website). The Panel finds that Policy ¶ 4(a)(i) has been 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 <descargarwinamp.com>, <bajarwinamp.com>, <telecharger-winamp.com>, <telechargerdewinamp.com>, <telecharger-icq.com>, <telechargerdeicq.com> and <telechargericq.net> domain names be TRANSFERRED from Respondent to Complainant. John J. Upchurch, Panelist Dated: April 2, 2004 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.