America Online, Inc. vs. Netbest

[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 Respondent's out-of-pocket expenses directly related to the domain name.

Policies referred to

Uniform Domain Name Dispute Resolution Policy.

ICANN's 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 Complainant's 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 ICANN's 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 Respondent's 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.