Domain name – Domain name dispute resolution policy – Trademark – Pending trademark – Identical – Confusingly similar – Legitimate interest – Bad faith registration – Bad faith use – Famous marks – Well known marks – ICQ.

Complainant was owner of trademark registrations for the mark, ICQ, in at least 9 countries, and had pending trademark applications in at least 50 other countries including the United States. Respondent registered the domain names 0icq.com and 0icq.net.

Held, Name Transferred to Complainant.

Long prior to Respondent's registration of the domain names, and at
least as early as 1996, Complainant adopted and began using many of its ICQ Marks in connection with computer online services. The distinctive ICQ Marks have been used continuously and extensively in interstate and international commerce in connection with the advertising and sale of Internet-related services. Because of substantial advertising expenditures and sales, the ICQ Marks have become well-known to the purchasing public.

The addition of the number 0 is not significant in determining similarity. The domain names registered by Respondent are confusingly similar to or identical to the registered trademark owned by Complainant.

Respondent has no rights or legitimate interest in the domain names, since Respondent did not provide any evidence with respect to its rights or legitimate interest.

Respondent registered and used the domain names in bad faith. Respondent registered the domain names for the purpose of disrupting business of competitor, and to attract for commercial gain Internet users to Respondent’s web site by creating likelihood of confusion with trademark owner’s mark.

Evidence of this purpose is Respondent’s registration of these names a few days after a similar complaint was filed against Respondent for registering the domain names OICQ.NET and OICQ.COM.

Complainant had filed complaint on February 7, 2000 regarding domain names OICQ.COM and OICQ.NET. After an arbitration proceeding the arbitrator determined that those domain names should be transferred to the Complainant. On February 10, 2000, Respondent registered the domain names 0ICQ.COM and 0ICQ.NET, wherein a zero was substituted for the O in OICQ.
 

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
 

Fink, Panelist: -

The above entitled matter came on for an administrative hearing on May 11, 2000
before the undersigned on the Complaint of the above named Complainant, against
0ICQ.com Limited, hereafter "Respondent". Complainant is represented by James
R. Davis II, Arent Fox Kintner Plotkin & Kahn, 1050 Connecticut Avenue, NW,
Washington, D.C. 20036. There was no representation on behalf of Respondent. 

Upon the written submitted record, the following DECISION is made:

PROCEDURAL FINDINGS

Domain Name: 0icq.com and 0icq.net

Domain Name Registrar: Network Solutions, Inc.

Domain Name Registrant: 0ICQ.com Limited

Date of Domain Name Registration: February 10, 2000 

Date Complaint Filed: April 7, 2000

Due Date for a Response: April 27, 2000 

Date of Commencement of Administrative Proceeding in Accordance with Rule
2(a)l and Rule 4(c): April 7, 2000

After reviewing the Complaint, and determining it to be in administrative
compliance, the National Arbitration Forum (The Forum) forwarded the Complaint
to the Respondent on April 7, 2000 in compliance with Rule 2(a), and the
administrative proceeding was commenced pursuant to Rule 4(c). In compliance
with Rule 4(d), The Forum immediately notified the above Registrar, Network
Solutions, the Internet Corporation for Assigned Names and Numbers (ICANN),
and the Complainant that the administrative proceeding had commenced. 

Respondent did not submit a response to The Forum.

On February 10, 2000, Respondent registered the domain names "0icq.com" and
"0icq.net" with Network Solutions, the entity that is the Registrar of the domain
names. By registering its domain names with Network Solutions, Respondent
agreed to resolve any dispute regarding its domain names through ICANN's Rules
for Uniform Domain Name Dispute Resolution Policy, and the Uniform Domain
Name Dispute Resolution Policy.

The undersigned certifies that he has acted independently and has no known
conflict of interest to serve as the Arbitrator in this proceeding. Having been duly
selected, and being impartial, the undersigned makes the following findings and
conclusions:

FINDINGS OF FACT

1. AOL is the owner of at least 9 trademark registrations worldwide for the mark
ICQ, including registrations in Austria, Australia, Chile, Denmark, Finland, France,
Mexico, Norway and Switzerland. In addition, AOL and its affiliate ICQ, Inc. have
pending trademark applications in at least fifty other countries, including federal
trademark application Ser. No. 75-381-414 in the United States. 

2. Long prior to Respondent's registration of "0icq.net" and "0icq.com", and at
least as early as 1996, AOL and its predecessor-in-interest adopted and began
using many of its ICQ Marks in connection with computer online services and other
Internet related services. The distinctive ICQ Marks have been used continuously
and extensively in interstate and international commerce in connection with the
advertising and sale of Internet-related services.

3. Because of substantial advertising expenditures and sales, the distinctive ICQ
Marks have become well-known and famous among members of the purchasing
public. 

4. On February 7, 2000 Complainant filed a previous complaint with the National
Arbitration Forum regarding domain names "oicq.com" and "oicq.net". After an
arbitration proceeding the arbitrator determined that those domain names should be
transferred to the Complainant. 

5. On February 10, 2000, Respondent or an entity closely related to Respondent
and using an identical mailing address and contact information, registered two
nearly identical domain names, namely "0icq.com" and "0icq.net", wherein a zero
was substituted for the "O" in "oicq". 

6. The domain names in the previous proceeding were registered by an entity
closely affiliated or identical to the Respondent in this matter. The identical mailing
address, administrative contact, e-mail address and telephone number were used
by the Respondent in the other proceeding and in this proceeding. 

7. The domain names "0icq.net" and "0icq.com" are nearly identical and confusingly
similar to the ICQ Marks, including the mark ICQ. 

8. No evidence has been presented that Respondent has any right or legitimate
interest to the domain names as provided in Rule 4(c).

9. Complainants prayer for relief requests that the domain names be transferred to
America Online, Inc. 

CONCLUSIONS

To obtain relief under paragraph 4(a)of the Policy, the Complainant must prove
each of the following: 

1. The domain names registered by the Respondent are identical or confusingly
similar to a trademark or service mark in which the Complainant have rights; and 

2. The Respondent has no right or legitimate interest in the domain names; and

3. The domain names have been registered and used in bad faith. 

Similarity Between Registrant's Domain Names and Complainant's Trade Mark. 

The addition of the number "0" is not significant in determining similarity. The
domain names registered by Respondent are confusingly similar to or identical to
the registered trade mark owned by Complainant. 

Respondent's Rights or Legitimate Interest in the Domain Name. 

Under paragraph 4(c) of the Policy, evidence of a registrant's rights or legitimate
interest in the domain names includes: 

1. Demonstrable preparations to use the domain names in connection with a bona
fide offering of goods or services prior to the dispute; 

2. An indication that the registrant has been commonly known by the domain
names even if it has acquired no trademark rights; or

3. Legitimate noncommercial or fair use of the domain names without intent to
divert consumers or to tarnish the trademark. 

Respondent has made no showing with respect to any of the above factors. The
Respondent has no rights or legitimate interest in the domain names. 

Respondent's Bad Faith Registration and Use of the Domain Names. 

Under paragraph 4(b) of the Policy, evidence of Respondent's bad faith registration
and use includes: 

1. Circumstances indicating the domain names were registered for the purpose of
resale to the trademark owner or competitor for profit; 

2. A pattern of conduct showing an attempt to prevent others from obtaining a
domain names corresponding to their trademarks; 

3. Registration of the domain names for the purpose of disrupting the business of a
competitor; or 

4. Using the domain names to attract, for commercial gain, Internet users to
Respondent's web site or other on-line location by creating a likelihood of
confusion with the trademark owner's mark. 

The Respondent registered and used the domain names in bad faith as evidenced
by circumstances indicating that Respondent registered and acquired the domain
names for the purpose of disrupting the business of a competitor and to attract for
commercial gain Internet users to Respondent's web site by creating a likelihood of
confusion with the trademark owner's mark. Respondents registration of these
names a few days after the Complaint was filed in the previous case is evidence of
this purpose. 

Under ICANN's Uniform Domain Name Dispute Resolution Policy Complainant
has proven that the domain names should be transferred to Complainant.

DECISION

Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is
decided as follows:

THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAMES "0icq.com"
and "0icq net" REGISTERED BY RESPONDENT BE TRANSFERRED TO
COMPLAINANT, AMERICA ONLINE, INC. 

Dated: May 11, 2000
Judge Karl Fink
Retired Judge
Arbitrator