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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
America Online, Inc. v. Go2North.Com, Inc.
Case No. D 2000-0810
1. The Parties
Complainant is America Online, Inc. ("AOL"), a Delaware Corporation with its principal place of business at 22000 AOL Way, Dulles, Virginia 20166, U.S.A.
Respondent is Go2North.Com, Inc. ("Go2North.Com"), a New Jersey Corporation with corporate registration and registered office at 161 Tices Lane, East Brunswick, New Jersey 08816, U.S.A. and its principal place of business at Fuzhou City, Fujian Province, People’s Republic of China.
2. The Domain Names and Registrar
The domain names at issue are <topicq.com> and <ticq.com> registered with Network Solutions, Inc. ("Network Solutions").
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint on July 17, 2000 by email and on July 19, 2000 in hardcopy. The Complainant made the required fee payments. On July 21, 2000 the Center acknowledged receipt of the Complaint.
On July 21, 2000 the Center requested Network Solutions to verify the registration data. By email of July 21, 2000 Network Solutions confirmed that it is the Registrar of the domain names and, inter alia, that Go2North.Com is the current registrant.
Having verified that the Complaint satisfies the formal requirements of ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules) and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Center on July 31, 2000 sent to Respondent, with a copy to the Complainant, a notification of the commencement of the administrative proceeding, together with a copy of the Complaint. The formal date of the commencement of this administrative proceeding is July 31, 2000.
On September 13, 2000 the Center acknowledged to the parties that it had received the Response from the Respondent on August 15, 2000 by email and on August 21, 2000 in hardcopy.
On November 2, 2000 after receiving a completed Statement of Acceptance and Declaration of Impartiality and Independence, the Center advised the parties that it had appointed Thomas L. Creel as a single panelist to resolve this dispute (the "Sole Panelist").
After review of the papers filed, the Sole Panelist requested Complainant to file a Rebuttal to the Response submitted by the Respondent. The Rebuttal was received by the Center on November 7, 2000.
This decision is based on the information contained in the above documents. Except where disputed, unreliable on their face, or where contradicted by other evidence of record, the statements made therein are deemed to be true.
4. Factual Background
This dispute concerns AOL’s mark ICQ which, in simplified example, is used with a program on the Internet to let a user know when one of his or her friends or contacts is also online. When this occurs, the two persons online may thereafter interchange messages, files, and URLs directly, initiate chat sessions or voice and video-voice connections, play games, etc. Respondent also operates on the Internet, but only in the Chinese language. It provides such things to the Chinese business community as press releases from Chinese news agencies, commercial news, chat room services or business, living and legal topics, etc. It provides these services through its Web sites called TopicQ and TICQ.
Complainant owns at least ten trademark registrations worldwide for the mark ICQ, including registrations in Austria, Australia, Chile, China, Denmark, Finland, France, Mexico, Norway, and Switzerland. Additionally, Complainant has pending trademark applications in at least fifty other countries, including United States Trademark Application Ser. No. 75/381,414. The mark ICQ has been used, since November 1996, in connection with the following:
(A) "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",
"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 of 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."
Complainant is also the owner of numerous trademarks, service marks, and trade names that include the mark ICQ, e.g., ICQPhone, ICQRadio, ICQMail (the "ICQ Marks.") Complainant 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 portal web site, which is a significant method of promoting the ICQ service.
Respondent registered the domain names <topicq.com> and <ticq.com> on March 1 and March 13, 2000,respectively. Respondent’s registration information with Network Solutions listed the Registrant of <topicq.com> and <ticq.com> as Go2North.Com located at 161 Tices Lane, East Brunswick, New Jersey 08816, USA.
5. Parties’ Contention
Complainant has requested that the domain names be transferred to Complainant because:
(1) the domain names "topicq.com" and "ticq.com" are identical or confusingly similar to marks in which Complainant has rights;
(2) Respondent has no rights or legitimate interests with respect to the domain names; and
(3) Respondent’s domain names were registered and used in bad faith because Respondent registered the domain names to trade on the mark ICQ and to divert consumers away from the ICQ service.
Respondent has filed a response stating:
(1) that the domain names <topicq.com> and <ticq.com> are not identical or confusingly similar to the marks in which Complainant has rights. Specifically, Respondent urges:
(a) "topicq" and "ticq" are acronyms completely different from ICQ and derived from Chinese words and slogans intended to reflect Chinese unity through the four quarters ("Q") of the Chinese world: People’s Republic of China ("PRC"), Taiwan, Hong Kong and Singapore,
(b) Respondent specializes only in the Chinese market (with over 500,000 users) and AOL is not permitted to provided Internet service in China nor in the Chinese language,
(c) The focus and content of the information made available is different,
(d) No one would believe that Respondent’s Chinese services would somehow be sponsored by or associated with "America" Online. Indeed, it would be detrimental to Respondent to be in anyway associated with an American imperialist company.
(2) Respondent has rights or legitimate interests in respect to the domain names. It urges:
(a) It is a growing business serving the Chinese community in ways not done by AOL and is using simplified Chinese characters used only in the PRC and Hong Kong (since 1997) in contrast to anything AOL is doing,
(b) It has applied for its own trademark registrations for its marks,
(c) Respondent has been or is commonly known by the domain names at issue and Respondent has applied for trademarks in both China and the United States.
(3) Respondent’s domain names have not been registered and are not being used in bad faith. Specifically in addition to the arguments above, Respondent explains that a reference to being part of the ICQ family appearing on its web site was an "oversight" – a misquote from a programmer in Fujian, of which management was not aware. It further argues that before Respondent received any notice of the dispute, there is evidence of Respondent’s use of, or demonstrable preparations to use, the domain names in connection with a bona fide offering of goods or services.
Complainant filed a rebuttal stating that:
(1) Complainant does have a presence in China,
(2) the rationales for using "topicq" and "ticq" submitted by Respondent are misleading and incredulous,
(3) Respondent’s trademark applications were filed after answering the Complaint, and
(4) the content of Respondent’s website shows that Respondent’s domain names were registered and used in bad faith to confuse consumers and profit from the goodwill Complainant has created in its ICQ Marks.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration.
Paragraph 4(a) of the Policy establishes three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondent’s domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) Respondent’s domain names have been registered and are being used in bad faith.
Each of the aforesaid three elements must be proved by a Complainant to warrant relief. They will be addressed separately below, after first addressing jurisdiction.
I Jurisdiction and Procedure
Respondent has stated in its response that it does not agree that the Arbitration and Mediation Center of the World Intellectual Property Organization has jurisdiction to decide this dispute.
As to jurisdiction over the subject matter of this dispute, the Presiding Panelist finds that the administrative proceeding has been commenced against Go2North.Com pursuant to the Policy. The Policy is incorporated by reference into Go2North.Com’s Registration Agreement with Network Solutions. Therefore, in accordance with the contract signed by Respondent, it submitted itself to resolution of this dispute by the ICANN proceeding.
In addition to jurisdiction over the subject matter of the dispute, it is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a Respondent has notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to assure that Respondents are given adequate notice of the proceedings initiated against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).
The Registrar identified Go2North.Com as the Registrant. WIPO served the Complaint on Go2North.Com at 161 Tices Lane, East Brunswick 08816, USA. Respondent filed a response on August 15, 2000 with the Center.
In this case, the Sole Panelist is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the Complaint, of the initiation of this proceeding, and allowed sufficient opportunity to Go2North.Com to respond. Formal notice was given to Go2North.Com, and indeed, it actually filed a response.
Therefore, this Administrative Panel has jurisdiction to decide this dispute as presented.
II The Identity or Confusing Similarity of the Domain Name with the Trademark or Service Mark
The domain name and trade or service marks are not identical. Therefore, the issue is confusing similarity.
Complainant and its predecessor-in-interest have been the owners of numerous marks that include "ICQ," "ICQPhone," "ICQRadio," and "ICQMail" from at least as early as 1996. Complainant and its predecessor-in-interest have been using the ICQ Marks in connection with computer online services and other Internet-related services. Complainant is the owner of a trademark registration for the mark ICQ in China (Reg. No. 1379784). 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.
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Neither party has cited any legal principles that should be used in deciding these issues. Since all parties are domiciled in the United States, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel will look to the principles of law of the United States.
The Policy does not define "confusingly similar." A search of the documents leading to the final version of the Policy at the ICANN website failed to explain how this language came to be or what test was meant to be applied in assessing whether a mark is confusingly similar to a Complainant’s trademark. The United States trademark law, as well as that of other common law countries, provides that there is infringement when defendant’s use is "likely to cause confusion" as to the source of the goods. Likelihood of confusion is also a factor listed in Paragraph 4(b)(iv) of the Policy when assessing bad faith.
Other panelist have applied the likelihood of confusion standard tests in determining whether Respondent’s use is "confusingly similar." See, e.g., WIPO decision in Case D2000-0233.
"In determining whether the domain name <jordanf1.com> is confusingly similar to the trademark "Jordan Grand Prix", the Panel has regard to various tests in trademark law as to when a mark may not be registered where "the use of which would be likely to deceive or cause confusion . . ." (The words cited or similar are to be found in trademark statutes in several jurisdictions)."
This is the standard that will be used here.
There are at least three types of proof of likelihood of confusion: (1) survey evidence; (2) evidence of actual confusion; and (3) determination based on an inference arising from a comparison of the conflicting marks themselves and the context of their use in the marketplace. In a close case amounting to a tie, doubts are resolved in favor of the senior user. The majority of U.S. Courts view a finding on the likelihood of confusion issue as a finding of fact. AOL has not offered any evidence of the first two types. Therefore, the Panel will explore the various marketplace factors.
Under United States law, eight factors referred to as the Polaroid factors are often used to determine likelihood of confusion: (1) strength of the mark; (2) degree of similarity between the conflicting marks; (3) proximity of the goods or services; (4) likelihood that the senior user will bridge any gap between the goods or services of the parties; (5) actual confusion; (6) the junior user’s good faith in choosing its marks; (7) the quality of the junior user’s product; and (8) the sophistication of the buyers. (Footnote 1) Not all the factors have to be present or equally emphasized in each case. (Footnote 2)
The record developed here and the ICANN procedures in general, which the parties have agreed should be used to resolve their dispute, are not well suited to resolving disputed issues of fact. For example, Respondent’s counsel states in its brief how Respondent chose its domain names topicq.com and ticq.com (Factor 8). There is nothing in the record, however, from any of those involved in that process, e.g., no affidavits or documentary evidence on this point were offered.
As to factor 1, because of substantial advertising expenditures and sales, the distinctive ICQ Marks have become well-known and famous among members of the purchasing public. The ICQ Marks have been and continue to be widely publicized through substantial advertising throughout the U.S. and the world. Many millions of dollars have 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. ICQ is the world’s largest communications community with more than fifty million registrants worldwide. At the time of the initiation of this proceeding, approximately one million Chinese used the ICQ service. Thus, I find the ICQ Marks to be strong marks.
As to factor 2, both <topicq.com> and <ticq.com> are very similar to the ICQ Marks. They are visually similar in that both contain the letters "ICQ." Moreover, on the website "http://www.topicq.com/ticq/" of July 17, 2000, the site portrays <topicq.com> as "TopICQ" which visually resembles the ICQ Marks. In addition to visual resemblance, the sounds of the two marks create a confusingly similar impression when heard.
As other Panelist have held, the adding of a prefix does not avoid confusion. See, e.g., America Online, Inc. v. Tencent Communications (FA0002000093668); America Online, Inc. v. Chinese ICQ Network (D2000-0808); American Online, Inc. v. Shenzhen JZT Computer Software Co., Ltd. (D2000-0809). In these cases, the domain names oicq.com and Oicq.com were required to be transferred to AOL. See also Case No. D2000-0799 holding mp3skunkworks confusingly similar to skunkworks.
Both the <topicq.com> and <ticq.com> like "ICQ" are used in connection with computer online and Internet related services, so factor 3 is in AOL’s favor.
Factor 4 is not relevant here.
In a copy of an excerpt from Respondent’s Internet webpage <topicq.com> the English translation of two sentences in Chinese as stated in Kwan Koehler’s declaration is:
"The simplified Chinese version of Topciq (abbreviated as Ticq) is free software. It is a new force in the ICQ family . . . in addition to ICQ’s usual functions, such as instant messaging, instant chatrooms, instant transmission of documents, and web sites. Topicq offers special functions including breaking news, collective alarm clock, jokes and net communications."
Respondent alleges that the statement on the website is "not a corporate policy of Respondent but merely innocent acts of a programmer employee in Fujian citing quotes and/or summarizing of other media reports from the other media report in China. The management of the corporation has no idea that the employee misquoted from a report which misspelled "Topic Q" into TOPICQ or short for TICQ and comparing same with ICQ." If the media and/or Respondent’s own employee is confused about whether "Topic Q" and "ICQ" are associated, then that in itself shows the likelihood of confusion, if not actual confusion. Additionally, the fact that the excerpt from the media report was posted on the website serves to confuse computer online and Internet users into believing that "topicq" and "ticq" are an improved version of ICQ. Thus, factor 5 is present in AOL’s favor.
As discussed below, I do not find that Respondent adopted its domain name in good faith. Thus, factor 6 is also in AOL’s favor.
There is nothing in the record about factor 7.
As to factor 8, the Panel finds that the buyers of the services are not sophisticated.
Based on all of the facts, I find that the Respondent’s domain names <topicq.com> and <ticq.com> are confusingly similar to Complainant’s trademarks or service marks. Respondent’s use is likely to cause confusion, mistake or deception as to the affiliation, connection or association between Complainant and Respondent and/or the sponsorship or endorsement of Respondent’s website by Complainant. Therefore, the requirement of Paragraph 4(a)(i) is met.
III Rights or Legitimate Interests in Respect of the Domain Name
Paragraph 4(c) of the Policy enumerates how a Respondent may establish rights to and legitimate interests in a domain name. Respondent asserts that it has rights to and legitimate interests in the domain names under Paragraph 4(c)(i).
Respondent states that "topicq" and "ticq" stands for the slogans "technology onward progressing interlocking Chinese quarters" and "telecommunication interlocking Chinese quarters" respectively. These slogans are said to date back to the Korean War. The quarters refer to the four parts of the Chinese people: the People’s Republic of China, Taiwan, Hong Kong, and Singapore. The Panel finds that these slogans are a random string of words. Respondent has not provided any evidence of the actual text of the slogans in Chinese. It has offered no affidavit or documentary evidence explaining how its domain names were created – only statements in its responsive brief. It does not deny it knew of AOL’s ICQ Marks when it created its domain names. Respondent further states that because it is owned by persons of Chinese extraction, "it has an inherent interest to use the word ‘C’ was [sic] used as acronym to stand for ‘Chinese’."
Respondent also asserts that it has pending trademarks in <topicq.com> and <ticq.com> in both China and the United States. The Response adds that "the fact that English has only 26 letters created the inherent possibility of some duplication of letters even in the same order. TICQ is merely sort of a business slogan of applying telecommunication interlocking Chinese quarters."
Complainant’s rebuttal notes that the pending trademark applications were filed after this proceeding was initiated ("topicq" and "ticq" were filed on August 28, 2000 and September 11, 2000 respectively. The Complaint was filed on July 17, 2000). The filing of a trademark application does not create rights or legitimate interests in the domain names.
The record taken as a whole does not establish that Respondent has any rights or legitimate interests in the domain names. Indeed, I find that the record establishes it does not. Therefore, the requirement of Paragraph 4(a)(ii) of the Policy has been fulfilled by Complainant.
IV Bad Faith
The third element Complainant must prove is in the conjunctive: the domain name "has been registered" and "is being used in bad faith."
The Policy provides in Paragraph 4(b):
"b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
* * * *
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
In this proceeding, the Panel finds that the Respondent intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement.
Respondent is using the domain names <topicq.com> and <ticq.com> to confuse consumers and capitalize on the goodwill Complainant has created in the ICQ Marks. The text translated in Kwan Koehler’s declaration provides: "The simplified Chinese version of Topciq (abbreviated as Ticq) is free software. It is a new force in the ICQ family . . . in addition to ICQ’s usual functions, such as instant messaging, instant chatrooms, instant transmission of documents, and web sites. Topicq offers special functions including breaking news, collective alarm clock, jokes and net communications."
Respondent claims that <topicq.com> and <ticq.com> are acronyms for the slogans "technology onward progressing interlocking Chinese quarters" and "telecommunication interlocking Chinese quarters" respectively. These slogans were not incorporated into Respondent’s website until after AOL’s widespread use of its marks. There is no evidence to support that these acronyms truly stood for these slogans prior to Complainant’s filing of the Complaint.
Additionally, in a screen shot of the Respondent’s web site on July 17, 2000 the right hand side shows two references to "TopICQ." This stylization of the domain name "topicq" is more likely to confuse consumers into believing that the domain name is affiliated or sponsored by the Complainant since the "ICQ" is accentuated.
Considering all of the evidence, I find that the Respondent both registered and used the domain name in bad faith. Therefore, the requirements of Paragraph 4(a)(iii) of the Policy have been proved.
Complainant has proved the necessary elements that the domain names are identical or confusingly similar to its trademark or service mark, that Respondent has no rights or legitimate interests in the domain names and that Respondent registered the domain names in bad faith and is using them in bad faith. Therefore, the remedy requested by Complainant is granted. The Sole Panelist orders the transfer of the domain names <topicq.com> and <ticq.com> to Complainant.
Thomas L. Creel
Dated: December 15, 2000
1. Polaroid Corp. v. Polarad Electornics Corp., 287 F.2d 492, 495 (2d Cir. 1961).
2. Fisons Horticulture, Inc. v. Vigoro. Indus., Inc. 30 F.3d 466 (3d Cir. 1994)