whatisicq.com

WIPO Arbitration and Mediation Center

(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").

(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").

(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.

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.’"

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."

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."

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."

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.

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.

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>.

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.

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.

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