[Indexed as: America Online v. Netbest]
[Indexed as: ICQGUIDE>COM]
Decision of an Arbitrator of the National Arbitration Form
Forum File No. WIPO D99-0001
Commenced: 4 February, 2000
Judgment: March 29, 2000
Presiding Arbitrator: Henry W. Blizzard
Domain name - Domain name dispute resolution policy - Trademarks - Identical - Confusingly similar - Bad faith registration - Bad faith use - International Commerce - Interstate Commerce.
Complainant, America Online, Inc., was the registered owner of numerous
trademarks that include ICQ in at least nine countries. Respondent,
Netbest, registered the domain name ICQGUIDE.COM.
Held, Name Transferred to Complainant.
The domain name ICQGUIDE.COM was nearly identical and confusingly similar to other ICQ marks in which Complainant had rights, including the mark ICQ, and to which the Respondent had no right or legitimate interests.
The Respondent registered and acquired the domain name for the purpose of selling or otherwise transferring the said domain name registration to the Complainant, or to a competitor of the Complainant, for valuable consideration in excess of Respondents out-of-pocket expenses directly related to the domain name.
Policies referred to
Uniform Domain Name Dispute Resolution Policy.
ICANNs Rules for Uniform Domain Name Dispute Resolution.
Registration Agreements referred to
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Cases referred to
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Panel Decision referred to
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1. The Parties
The complainant is America Online, Inc., of Dulles, Virginia.
The respondent is Netbest, of Tyron, North Carolina.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is <ICQGUIDE.COM>, which the Respondent
registered with Network Solutions.
3. Procedural History
The Complainant filed a claim against Netbest with the National Arbitration
Forum on February 3, 2000. The Complainants prayer for relief
requests that the domain name ICQGUIDE.COM be transferred from
Respondent to Complainant. The Forum forwarded the complaint to the
respondent in compliance with Rule 2(a), on February 4, 2000. Administrative
proceedings were commenced, in accordance with Rule 4.
In compliance with Rule 4(d) the Forum notified Network Solution, Inc., ICANN, and the Complainant that administrative proceedings had commenced.
The Respondent submitted responses to the Complainant.
On February 8, 2000, Network Solutions verified that the Respondent was the registrant of the domain name ICQGUIDE.COM, and that by registering its domain name with Network Solutions, the Respondent agreed to resolve any dispute regarding its domain name through ICANNs Rules for Uniform Domain Name Dispute Resolution Policy, and the Uniform Domain Name Resolution Policy.
The matter came before an administrative hearing on March 29. On March 29, Judge Henry W. Blizzard (Ret.), Arbitrator, rendered a decision in favour of the Complainant, pursuant to Rule 4 (I).
4. Factual Background
The domain name ICQGUIDE.COM was registered by the Respondent on April
13, 1999.
The Complainant was the owner of numerous trademarks, service marks,
and trade names including the term ICQ, which were registered in at least
nine countries.
The Complainant had used these marks continuously and extensively in
interstate and international commerce in connection with the advertising
of Internet-Related Services.
The Complainant has invested substantial sums of money in developing
and marketing its service.
The Respondent has made no legitimate use of the domain name, and seeks
to profit from its registration of the name to the Complainant for $99,000.00,
by letter.
5. Parties' Contentions
Respondent submitted responses to the Complainant.
6. Discussion and Findings
Justice Blizzard found that ICQGUIDE.COM is nearly identical and confusingly similar to other ICQ marks in which the Complainant has rights, to which the Respondent has no right or legitimate interests.
The Complainant had used its marks continuously and extensively in interstate and international commerce in connection with the advertising of Internet Related Services. The Complainant has invested substantial sums of money in developing and marketing its service.
The Respondent was found to have registered and acquired the domain name for the purpose of selling or otherwise transferring it to the Complainant, or to a competitor of the Complainant, for valuable consideration in excess of Respondents out-of-pocket expenses directly related to the domain name.
The Respondent registered the domain name ICQGUIDE.COM in bad faith, long after the Complainant began using its ICQ marks, and has no rights to said domain name.
7. Decision
Pursuant to Rule 4(I), Justice Blizzard directed that the domain name (ICQGUIDE.COM) be transferred from the Respondent to the Complainant.
Domain Name Transferred