The complaint pursuant to the rules and supplemental rules was received by e-mail on September 28, 2000, and by hard copy on October 2, 2000 by the WIPO Arbitration and Mediation Center.

All the appropriate procedural requirements were met and Mr. Vassilev was duly notified in accordance with the rules and supplemental rules. To date no response has been received either within the time limit under the rules or subsequently.

All payments appear to have been properly made by AOL.

The panelist has submitted a statement of acceptance and declaration of impartiality and independence, and the date scheduled for the panel’s decision is November 15, 2000. The language of the proceeding is English.

4. Factual Background

AOL is a world renowned Internet access organization. The ICQ mark which is at issue in these proceedings has been used by AOL since November 1996. AOL have provided a detailed schedule of trademark registrations and applications together with copies of the certificates.

Further, AOL has registered a number of relevant domain names including, in particular, ICQ.com.

The domain name at issue, "icqwap.com", was registered on April 24, 2000, and came to the attention of AOL shortly thereafter. AOL appointed representatives, Arent Fox & Kintner Poltkin & Kahn, and forwarded letters to Mr. Vassilev on July 27 and September 5, 2000, asserting rights in the ICQ marks and requesting that the domain name be transferred to AOL.

5. The Parties’ Contentions

AOL contend that the domain name in question is identical or confusingly similar to its trade marks and trading name; that Mr. Vassilev has no right or legitimate interest in respect of the domain name; and that the domain name has been registered and is being used in bad faith.

AOL point to the very substantial reputation of the company as a whole, and the 100,000,000 world wide subscribers to its ICQ product, making it, in their assertion the world’s largest online communications community. It asserts that many millions of dollars have been spent in advertising the ICQ mark, both in the United States and around the world, though there is no particular assertion that the mark has been specifically advertised in Bulgaria. AOL assert that the international fame of the ICQ mark is a relevant factor in relation to the similarity of the domain name, and the question of bad faith.

In relation to the question of the Respondent’s rights or legitimate interests, AOL do no more than assert, in paragraph 12 of the complaint, that "the Respondent has no rights or legitimate interests in respect of the ICQ domain name". The evidence that follows is addressed to the issue of bad faith.

AOL make a detailed assertion in relation to the purported bad faith of Mr. Vassilev arguing:

(a) that the ICQ mark was extremely well-known, and consequently that Mr. Vassilev’s registration as late as April 2000, must have been made in bad faith,

(b) that Counsel for AOL had twice written to Mr. Vassilev asserting their rights and he has failed to make a transfer of the domain name,

(d) that he refused to transfer the domain names unless AOL paid $10,000, an amount far in excess of the $70 registration fee that the Respondent paid in April this year,

(e) that the website opened by Mr. Vassilev under the domain name in question, which purports to be "under construction" contains commercial advertising, and consequently the site must have been created for the bad faith purpose of confusing customers and profiting from the consumer confusion with the famous ICQ mark of AOL; and

(f) based on the well-known nature of the mark and the correspondence sent to Mr. Vassilev, he cannot in good faith claim that he had no knowledge of AOL’s rights in the ICQ mark.

As indicated above, to date the panel has received no response from Mr. Vassilev. Nothing was filed within the appropriate 20 day time limit, and nothing has subsequently been received accompanied by a request to be "heard out of time".

6. Discussion and Findings

This is a case which, in the absence of a response from Mr. Vassilev, might be of the type which are sometimes referred to as "default cases". However, there is no concept of a "default case" under the policy or the rules. Paragraph 4(a) of the UDRP states quite clearly that "in the administrative proceeding, the Complainant must prove that each of these three elements are present". The three elements in question are of course that the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; that the Respondent has no rights or legitimate interests in respect of the domain name; and that the domain name was registered and is being used in bad faith.

Accordingly, it is up to the Claimant to support its complaint by satisfying the panel that each of the three requirements has been met, notwithstanding the absence of a response by the Respondent.

In this case, there is no doubt that the domain name in question is identical or substantially similar to the Claimant’s famous ICQ mark. It is a well established principle in these cases that minor alterations are not sufficient to avoid a finding of identicality or confusing similarity in the absence of any significant distinguishing features. It is beyond coincidence that Mr. Vassilev would have come up with the domain name ""icqwap.com"" without his own or some knowledge of the Complainant’s ICQ mark, and it was clearly his intention to reflect that similarity in the name which he registered. The initials "WAP" are familiar in the world of Internet technology, meaning, "wireless applications protocol". Accordingly the first limb of the test is satisfactorily met by the Complainant.

The Complainant has merely asserted, without specific reference to any evidence, that the Respondent has no rights or legitimate interests in respect of the domain name. However, a copy of the domain name as currently reflected in a website is attached to the complaint, and indicates that there is no specific evidence of significant preparation to use a legitimate website. It is this panelist’s view that, absent substantial disclosure of preparation, or a functioning website, there is little more that the Complaint has to do to satisfy this limb of the test than to make the assertion that there are no rights or legitimate interests. Once that assertion is made, it is up to the Respondent to satisfy the panel that the assertion has been correct, and in this case no such response has been received. Accordingly, the panel decides that the second limb of the test has been satisfactorily completed by AOL.

The question of bad faith is much more difficult. Paragraph 4(b) of the UDRP provides assistance and guidance to panelists in considering the issue of bad faith. Taking each of the four sub paragraphs in turn as they relate to this complaint the panel takes the following view:

(i) AOL have not satisfactorily shown that Mr. Vassilev registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring it to the Complainant or to a competitor for valuable consideration in excess of documented out of pocket costs. It is important to note in this context that AOL made an approach to Mr. Vassilev seeking the transfer of the domain name. It was in response to that approach that Mr. Vassilev offered to sell the domain name for the sum of $10,000. This panelist has pointed out in previous decisions that domain names, like trade marks and other intellectual property rights, are tradable commodities and the transfer of domain names for value in excess of the registration fee is a common commercial activity. It is not, in itself, evidence of bad faith. There is no suggestion that Mr. Vassilev made an attempt to contact AOL in order to transfer the name to them.

(ii) There is no evidence provided by AOL that Mr. Vassilev has engaged in a pattern of conduct of registering domain names for the purpose of preventing the legitimate owner from reflecting its mark in a corresponding domain name. There is no assertion or evidence that Mr. Vassilev has any other domain name whatsoever.

(iii) There is no evidence that Mr. Vassilev has registered the domain name primarily for the purpose of disrupting the business of a competitor. Whether or not it might ultimately have turned out that he did attempt to do such a thing, after he had established his own website, remains to be seen, but at this stage there is no evidence to support such an assertion.

AOL have contended that, by having an advertising banner on his site under construction, Mr. Vassilev has intentionally attempted to attract, for commercial gain, internet users to the website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website. It is to be assumed that Mr. Vassilev has made financial gain from the single banner advertisement, which his website contains. However, the panel is uncertain that there is sufficient evidence under this head for the complaint to succeed on this ground.

The wording of paragraph 4(b) of the UDRP indicates that the circumstances set out in the four-numbered sub paragraphs are for guidance. It is stated that "the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of this registration and use of a domain name in bad faith". (emphasis added). In this case, notwithstanding that the panel is not satisfied that AOL has made out its complaint in a way which can be satisfactorily resolved under any of the four sub paragraphs in paragraph 4(b) relating to bad faith, nonetheless it seems unlikely that Mr. Vassilev was not aware of the very well-known ICQ mark, and it is difficult to see that his use of ICQ prominently in a registered domain name can have been for any other purpose than to benefit from the confusion which would inevitably with internet users searching the web. It may have been a more difficult decision had Mr. Vassilev made a response in which he gave justification for his actions, and demonstrated an absence of bad faith in his conduct. However, in the absence of such a response, the panel finds that the domain name was registered, and is being used in bad faith.

7. Decision

In the light of the foregoing the panel decides that the domain name registered by Mr. Vassilev is identical to the marks owned by AOL and confusingly similar to its registered trade mark and existing domain name; that Mr. Vassilev has no rights or legitimate interests in respect of this domain name, and that the domain name in issue has been both registered and used in bad faith.

Accordingly the panel requires that the registration of the domain name "icqwap.com" be transferred to AOL.

Gordon D Harris
Sole Panelist

Dated: November 14, 2000