Go2icq.com, Icutogo.com, Icu2go.com

The timeline behind go2icq.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.

NATIONAL ARBITRATION FORUM DECISION America Online, Inc. v. Jason Lin Claim Number: FA0506000505556 PARTIES Complainant is America Online, Inc. (“Complainant”), represented by James R. Davis of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036. Respondent is Jason Lin (“Respondent”), TYS Nassau Street, Mei Foo Sun Cheun, HK, HK. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <go2icq.com>, <icutogo.com> and < icu2go.com>, registered with Dotster. PANEL The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding. Sandra Franklin as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on June 27, 2005; the National Arbitration Forum received a hard copy of the Complaint on June 30, 2005. On June 28, 2005, Dotster confirmed by e-mail to the National Arbitration Forum that the domain names <go2icq.com>, <icutogo.com> and <icu2go.com> are registered with Dotster and that Respondent is the current registrant of the names. Dotster has verified that Respondent is bound by the Dotster 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 June 30, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 20, 2005 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@go2icq.com, postmaster@icutogo.com and postmaster@icu2go.com by e-mail. Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On July 27, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra Franklin as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 <go2icq.com>, <icutogo.com> and <icu2go.com> domain names are confusingly similar to Complainant’s ICQ mark. 2. Respondent does not have any rights or legitimate interests in the <go2icq.com>, <icutogo.com> and <icu2go.com> domain names. 3. Respondent registered and used the <go2icq.com>, <icutogo.com> and <icu2go.com> domain names in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, America Online, Inc., along with its subsidiary ICQ, Inc., owns numerous trademark registrations worldwide for the ICQ mark, including registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,411,657 issued December 12, 2000). Complainant began using its ICQ mark at least as early as 1996 in association with online communications services, including e-mail and messaging services. Complainant has invested substantial sums of money to develop and market its services. Complainant has advertised its ICQ products and services via network and cable television, radio, and in print media such as newspapers and periodicals. Complainant’s ICQ service has been downloaded approximately 200,000,000 times around the world, which makes it one of the largest online communities in the world. Respondent registered the <go2icq.com> domain name on June 1, 2002 and the <icutogo.com> and <icu2go.com> domain names on November 25, 2002. The disputed domain names resolve to a website that prominently displays Complainant’s ICQ mark and offers e-mail services in direct competition with Complainant’s ICQ products and services. Additionally, the website links Internet users to a commercial website that includes advertisements for numerous third party services, some of which compete directly with Complainant. 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). 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 asserts rights in the ICQ mark based on its to its registration of the mark with the USPTO and other trademark authorities worldwide. It is well-established under the Policy that a complainant’s registration of a mark with a federal authority establishes a prima facie case of the complainant’s rights, which the respondent may rebut. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (“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 Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”). Without a response from Respondent, there is no challenge to Complainant’s prima facie case of rights in the mark. The Panel, therefore, determines that Complainant has rights in the ICQ mark for the purposes of Policy ¶ 4(a)(i). See U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”). The <go2icq.com> domain name includes Complainant’s ICQ mark in addition to the generic phrase “go2.” The <icutogo.com> and <icu2go.com> domain names replace the “q” in Complainant’s ICQ mark with the letter “u” and add the generic or descriptive terms or phrases “togo” and “2go,” respectively. The Panel finds that these differences are minor and, therefore, insufficient to distinguish the domain names from Complainant’s registered mark, especially where Respondent has failed to provide a response to contest Complainant’s contentions. Therefore, the domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that the respondent’s domain name <go2AOL.com> was confusingly similar to the complainant’s AOL mark); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion); see also Am. Online, Inc. v. Deep, FA 96795 (Nat. Arb. Forum May 14, 2001) (finding the <ic2ster.com> domain name confusingly similar to Complainant’s ICQ mark); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). Accordingly, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i). Rights or Legitimate Interests It has been established under the Policy that the complainant has the initial burden of proving that the respondent lacks rights and legitimate interests in the disputed domain names. In Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001), the panel held: Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question. Id.; see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”). Having found that Complainant has met its initial burden by establishing a prima facie case, the Panel will now analyze whether Respondent has met its burden to establish rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). Complainant asserts that Respondent is not licensed to use Complainant’s ICQ mark or any of its ICQ family of marks. The WHOIS information for the dispute domain names identifies Respondent as “Jason Lin” and indicates no affiliation with either the <go2icq.com>, <icutogo.com> or <icu2go.com> domain name apart from Respondent’s registration of the domain names. Furthermore, due to Respondent’s failure to respond, the Panel has not been provided with any evidence to suggest that Respondent is commonly known by the disputed domain names. Thus, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark). Respondent is using the <go2icq.com>, <icutogo.com> and <icu2go.com> domain names to resolve to a website that prominently displays Complainant’s ICQ mark and offers products and services in competition with the products and services Complainant offers under its ICQ mark. In addition, the website includes links to a commercial website that advertises third-party services, including services that compete with Complainant. Respondent’s use of domain names that include Complainant’s ICQ mark to attract Internet users to a website that both offers and links to competing services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). Furthermore, in failing to submit a response to Complainant’s allegations, Respondent has neglected to provide any evidence that would challenge Complainant’s prima facie case. Thus, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise). Thus, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii). Registration and Use in Bad Faith Complainant uses its ICQ mark to offer numerous computer-related communications services, including e-mail and messaging services. Respondent is using the <go2icq.com>, <icutogo.com> and <icu2go.com> domain names to operate a website that offers e-mail services and links to advertisements for companies that compete with Complainant. These circumstances indicate that Respondent competes with Complainant and registered domain names that include Complainant’s mark to disrupt Complainant’s business. This is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”) Furthermore, the <go2icq.com>, <icutogo.com> and <icu2go.com> domain names attract Internet users searching for Complainant’s ICQ products and services to Respondent’s website, where competing products and services are advertised. By using Complainant’s mark in the domain names to create a likelihood of confusion, Respondent is attempting to attract Internet users who are searching for Complainant’s products and services to Respondent’s website for commercial benefit. Respondent’s activities are evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii). 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 <go2icq.com>, <icutogo.com> and <icu2go.com> domain names be TRANSFERRED from Respondent to Complainant. Sandra Franklin, Panelist Dated: August 3, 2005 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

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