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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

AltaVista Company v. Stoneybrook aka Stonybrook Investments

Case No. D2000-0886

 

1. The Parties

The Complainant is AltaVista Company, a corporation organized in the State of Delaware, United States of America (USA), with place of business in Palo Alto, California, USA.

The Respondent is Stoneybrook, also known as Stonybrook Investments, with address in Belize City, Belize.

 

2. The Domain Names and Registrars

The disputed domain names are "alfavista.com", "algavista.com", "altavisfa.com", "altavisha.com", "altavitsa.com", "altavsta.com", "altawista.com", "atavista.com", "atlavista.com", "atlavisa.com" and "wwwalavista.com".

The registrar of the disputed domain names "alfavista.com", "altavitsa.com", "altavsta.com", "altawista.com", "atavista.com" and "atlavista.com" is Tucows.com (Open Shared Registration System), with business address in Toronto, Ontario, Canada.

The registrar of the disputed domain names "algavista.com", "altavisfa.com", "altavisha.com", "atlavisa.com" and "wwwalavista.com" is Network Solutions, Inc., with business address in Herndon, Virginia, USA.

 

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

(a) Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on July 27, 2000, and by courier mail received by WIPO on August 1, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. Complainant filed an amendment to its complaint by e-mail received by WIPO on August 16, 2000, and by courier mail received by WIPO on August 21, 2000.

(b) On August 3, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Tucows.com, regarding the domain names "alfavista.com", "altavitsa.com", "altavsta.com", "altawista.com", "atavista.com" and "atlavisa.com. On August 6, Tucows responded to WIPO indicating that "Stoneybrook" was named as registrant of the aforesaid names, with the exception of "atlavisa.com", which was not registered with it. August 3, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions, regarding the domain names "algavista.com", "altavisfa.com", "altavisha.com", "atlavisa.com" and "wwwalavista.com". On August 15, Network Solutions responded to WIPO indicating that "Stonybrook Investments" was named as registrant of the aforesaid names. On August 16, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Tucows.com, regarding the domain name "atlavista.com". On August 16, Tucows responded to WIPO indicating that "Stoneybrook" was named as registrant of the aforesaid name. On August 16, 2000, WIPO completed its formal filing compliance requirements checklist.

(c) On August 31, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail and courier mail. Notification was also transmitted via e-mail and courier mail to Respondents Technical Contact. Courier receipts indicate successful delivery to the addresses of each Respondent and its Technical Contact.

  1. On September 22, 2000, WIPO transmitted notification to Respondent of its default in responding to the complaint via courier mail and e-mail.

(e) On October 10, 2000, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On October 10, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.

(f) On October 12, 2000, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by October 26, 2000. On, October 12, 2000, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondents default in responding to the complaint). The proceedings have been conducted in English.

 

4. Factual Background

Complainant is the holder of service mark registrations for "ALTAVISTA" and "ALTA VISTA" on the Principal Register at the U.S. Patent and Trademark Office (USPTO), Reg. Nos. 2,047,808 and 2,052,345, dated March 25, 1997 and April 15, 1997, respectively, in International Class 42, covering "computer services" (as further specified). (Complaint, paragraph 14 and Annex D). These registrations are valid and subsisting. Complainant is the holder of a trademark registration for "ALTAVISTA" on the Principal Register at the USPTO, Reg. No. 2,112,885, dated November 11, 1997, in International Class 9, covering "computer hardware" and "computer software" (as further specified) (id., paragraph 14 and Annex D). Complainant is the holder of a trademark and service mark registration for "ALTAVISTA" on the Principal Register at the USPTO, Reg. No. 2,181,100, dated August 11, 1998, in International Classes 9, 16 and 41 covering "computer hardware" and "computer software", "printed matter" and "educational services" (as further specified) (id., paragraph 14 and Annex D). These registrations are valid and subsisting. "ALTAVISTA" and "ALTA VISTA" are hereinafter sometimes referred to as the "AltaVista marks".

Complainant has used the AltaVista marks in commerce since at least March 25, 1997, based on the earliest of the dates of registration of those marks, and without prejudice to whether Complainant may hold earlier-arising rights in those marks.

Complainant has registered the domain name "altavista.com" and has operated a website with the Internet address "www.altavista.com" since December 1995 (id., at paragraph 18 and Annex E).

The AltaVista marks are well known among users of the Internet as identifying the source of an Internet search engine (id., paragraph 13 and 19).

According to the "Tucows.com" verification responses to WIPO, dated August 6 and 16, 2000, "Stoneybrook" is the listed registrant of the domain names "alfavista.com", "altavitsa.com", "altavsta.com", "altawista.com", "atavista.com" and "atlavista.com". "The Administrative Contact is "Dow, John", with e-mail address at "accounting@stoney-brook.com". According to the Network Solutions verification response to WIPO, dated August 15, 2000, "Stonybrook Investments" is the listed registrant of the domain names "algavista.com", "altavisfa.com", "altavisha.com", "atlavisa.com" and "wwwalavista.com". The Administrative Contact is "Dow, John", with e-mail address at info@ucount.com. The Belize City, Belize addresses listed for the registrant under the names "Stoneybrook" and "Stonybrook Investments" are identical. The Network Solutions mailing address for the Administrative Contact, "Dow, John", is identical to the mailing address listed for "Stonybrook Investments". Network Solutions WHOIS database searches indicate that the records of registration for the disputed domain names registered with Network Solutions were created between December 25, 1999 and January 13, 2000 (Complaint, Annex J).

Network Solutionss WHOIS database searches dated June 23, 2000 show that the domain names "alfavista.com", "altavitsa.com", "altavsta.com", "altawista.com", "atavista.com" and "atlavista.com" were then registered to the name "Data Art Corp.", with a mailing address in Belize identical to that of "Stoneybrook" and "Stonybrook Investments". The records of such registrations were created between August 1, 1997 and September 6, 1997. Id., Annex F.

A Network Solutions WHOIS database search of July 26, 2000, with results aborting after 50 records found, shows that Data Art Corp. is the registrant of a substantial number of domain names that are identical or confusingly similar to well known names and marks of other enterprises, including, for example, "kodack.com", "www.geocities.com", "american-air.com", "www.nytimes.com", "yafoo.com", "wwwabc.com", "compuserver.com", "msword.com", "wwwzdnet.com", "continentalairline.com" and "adobi.com".

A Network Solutions WHOIS database search of July 26, 2000, with results aborting after 50 records found, shows that "Stonybrook Investments" is the registrant of a substantial number of domain names that are identical or confusingly similar to well known names and marks of other enterprises, including, for example, "sprinpcs.com", "wwwnewyorktimes.com", "fideliy.com", "wwwlexus.com" and "wwwsportsillustrated.com."

When the disputed domain names registered with Tucows.com are entered as Internet addresses, the user is redirected to websites at "www.mindgaming.com" and www.otcstreet.com". The "www.mindgaming.com" website identifies itself as a "casino and sportsbook," and the "www.otcstreet.com" website identifies itself as a "trivia challenge" site that posts various advertisements. The "mindgaming.com" domain name is registered to Mindgaming, Ltd., with the same mailing address in Belize as Respondent (Complaint, paragraph 25 and Annexes L and M, and WIPO Case File, item H)

The Service Agreements in effect between Respondent and Tucows.com, and Respondent and Network Solutions, subject Respondent to each of Tucows and Network Solutions dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, paragraph 4(a)).

5. Parties Contentions

A. Complainant

Complainant states in its own words:

V. Factual and Legal Grounds

A. Introduction

12. "This Complaint concerns the Respondents blatant, bad faith attempt to disrupt Internet traffic intended for Complainant thereby interfering with Complainants business and causing Complainant to lose revenue, to misappropriate Complainants goodwill, and to profit by deceiving Internet users as to the Complainants sponsorship, affiliation, or endorsement of the Respondents and/or its affiliates websites. The Complainants website provides Internet search, information, e-commerce, and portal services, including gaming services. The Infringing Domain Names consist of 11 slight misspellings of the Complainants trademark ALTAVISTA. If a user types the six Infringing Domain Names at Tucows into his browser, he is automatically forwarded to the "http://www.mindgaming.com/" as well as "http://www.otcstreet.com/". The other five sites are currently inactive. This blatant, bad faith attempt to interrupt Complainants business, to profit by deceiving Internet users as to the Complainants sponsorship, affiliation, or endorsement of these websites, and to misappropriate the Complainants goodwill by registering and using the Infringing Domain Names which are confusingly similar to the Complainants famous trademark, clearly violates the ICANN and NSI policies and the Tucows Registration Agreement.

B. The Complainants Mark

13. "AltaVista has trademark rights in the mark ALTAVISTA. Since 1995, AltaVista has used this internationally famous mark to identify its website and its broad range of highly distinctive Internet content and services to AltaVistas users and commerce and media partners.

14. "AltaVista owns registrations or has applied for registration of the trademark ALTAVISTA in over one hundred countries around the world. The registrations for these trademarks in the United States are as follows:

[see Factual Background, supra]

[An] Annex [hereto] contains copies of the registration certificates for these trademark registrations.

15. "International Class 9 is defined, in part, as computer software for use with local area, wide area, and/or global computer communications networks, namely, searching for, compiling, indexing, and organizing information [and] computer software for searching for, compiling, indexing, and organizing information within individual work stations or personal computers. International Class 42 is defined, in part, as computer services, namely providing a directory on computer communications networks that organizes and indexes widespread websites, news groups and other resources into easy-to-find topic areas permitting customers to access them.

16. "AltaVista also has registrations for the mark ALTAVISTA in Albania, Argentina, Armenia, Australia, Azerbaijan, Bahamas, Bahrain, Belarus, Bermuda, Bolivia, Brazil, Brunei, Bulgaria, Cambodia, Chile, China, Colombia, Costa Rica, Croatia, Czech Republic, Dominican Rep., Equador, El Salvador, Estonia, European Community, Georgia, Guatemala, Haiti, Honduras, Hong Kong, Hungary, Iceland, Indonesia, Israel, Jamaica, Japan, Jordan, Kyrgystan, Laos, Latvia, Lebanon, Lithuania, Macau, Malagasy Republic, Mauritius, Mexico, Moldova, Nepal, New Zealand, Nicaragua, Nigeria, Norway, Oman, Panama, Papua N.G., Paraguay, Peru, Poland, Portugal, Romania, Russia, Saudi Arabia, Singapore, Slovak Republic, Slovenia, South Africa, South Korea, Sri Lanka, Swaziland, Switzerland, Syria, Tangier, Taiwan, Thailand, Trinidad & Tobago, Tunisia, Turkey, U.A.E., Uruguay, Uzbekistan, Vietnam, Yemen, Yugoslavia, and Zimbabwe. AltaVista also has pending trademark applications for the ALTAVISTA mark in approximately twenty other countries.

17. "The Complainants rights in the ALTAVISTA mark and confusingly similar variations thereof predate the registration of the Infringing Domain Names by Respondent.

18. "The Complainant owns the domain name "ALTAVISTA.COM" and has operated a website at "ALTAVISTA.COM" since December of 1995. The fifth category on the AltaVista home page is Games, which includes Gambling. A copy of the home page of "ALTAVISTA.COM" on July 26, 2000 is provided as [an] Annex [hereto].

19. "AltaVista has invested many millions of dollars over the years to publicize the mark ALTAVISTA and has used this mark widely in a manner designed to ensure its automatic identification in the minds of Web users with excellence in Internet search, information, e-commerce, and portal services.

C. The Respondents and Its Affiliates Websites

20. "The six Infringing Domain Names at Tucows which currently host active websites were first registered in August and September, 1997 under the name Data Art Corp., located at the identical address in Belize as Respondent, c/o Stoneybrook. True and correct copies of printouts made on June 23, 2000 of the NSI Whois database for these sites are provided as [an] Annex [hereto]. Data Art Corp. has registered in excess of 50 domain names with NSI, the majority of them also being slight alterations of other trademarks, including "ahoo.com", "mcirosoft.com", "yajoo.com", "wwwaol.com", and "kodack.com". A true and accurate copy of a printout made on July 26, 2000 of the NSI Whois database for domain names registered by Data Art Corp. is provided as [an] Annex [hereto].

21. "After first registering with NSI, Respondent changed both registration name and registrars for the six domain names hosting active websites, and they are currently registered under the name Stoneybrook with the registrar Tucows. True and correct copies of printouts made on July 26, 2000 of the Verio, Inc. Whois database for Infringing Domain Names at Tucows are provided as [an] Annex [hereto].

22. "Upon information and belief, Respondent switched registrars for the Infringing Domain Names at Tucows on June 30, 2000 after receiving Complainants cease and desist letter sent by overnight mail on June 28, 2000. True and correct copies of printouts made on July 26, 2000 of the current NSI Whois database showing the date of the switch are provided as [an] Annex [hereto].

23. "The five Infringing Domain Names at NSI which are currently not active were registered in December, 1999 and January, 2000 under the name Stonybrook Investments. True and correct copies of printouts made on July 26, 2000 of the NSI Whois database for the Infringing Domain Names at NSI are provided as [an] Annex [hereto]. Stonybrook Investments has registered in excess of 50 domain names with NSI, the majority of them being slight alterations of other trademarks, including "nrtscape.com", "meryl-lynch.com", "wwwporshe.com", "wwwnewyorktimes.com", and "eeeyahoo.com". A true and accurate copy of a printout made on July 26, 2000 of the NSI Whois database for domain names registered by Stonybrook Investments is provided as [an] Annex [hereto].

24. "When a user types the Infringing Domain Names at Tucows into his server, he is automatically forwarded to the websites http://mindgaming.com and http://otcstreet.com. Upon information and belief, both websites are operated by Respondent or its affiliate.

25. "At the website http://www.mindgaming.com, the Respondent or its affiliate offers users the chance to place bets on sporting events and to play casino games over the Internet. A true and accurate copy of a printout of the home page on July 26, 2000 is provided as [an] Annex [hereto]. The domain name "mindgaming.com" is also registered at Tucows under the name Mindgaming Ltd., which is located at the same address in Belize as Respondent. A true and accurate copy of the printout from the Verio, Inc. Whois database on July 26, 2000 is provided as [an] Annex [hereto]. Typing the address "http://www.stoney-brook.com/" also brings the user to "http://www.mindgaming.com/", and "stoney-brook.com" is registered to Respondent. A true and accurate copy of the printout from the NSI Whois database on July 26, 2000 for "stoney-brook.com" is provided as [an] Annex [hereto].

26. "At the website "http://www.otcstreet.com", the Respondent or its affiliate offers users the chance to guess on trivia questions in return for a chance at winning prizes or an internet e-commerce gift certificate. The links on the home page to Contact and About Us are not functional. A true and accurate copy of a printout of the home page on July 26, 2000 is provided as [an] Annex [hereto]. The domain name "otcstreet.com" is also registered at Tucows under the name Quantum Leap Media, Inc., which has the same technical contact as Respondent. A true and accurate copy of the printout from the Verio, Inc. Whois database on July 26, 2000 is provided as [an] Annex [hereto].

27. "Respondent, by registering the Infringing Domain Names and by operating infringing websites, seeks to capture users who are trying to get to Complainants website but inadvertently mistype the domain name. Such users would not notice their typographical error and assume that they are in fact using services provided at "http://www.altavista/". They would never arrive at their intended destination at Complainants website. Respondent therefore aims to divert Internet traffic intended for Complainant thereby interfering with Complainants business and causing Complainant to lose revenue, and to deceive users as to the Complainants sponsorship, affiliation, or endorsement of the Respondents or its affiliates websites, thereby generating business and advertising for Respondent or its affiliate.

D. The Communications Between the Parties

28. "On June 28, 2000 the Complainant sent a letter by overnight mail to the Respondent at its address in Belize, demanding that it cease and desist from using the Infringing Domain Names. A true and accurate copy is provided as [an] Annex [hereto]. Complainant did not receive a response.

29. "On June 30, 2000, upon information and belief, the day after receiving Complainants cease and desist letter, Respondent switched registrant name and registrar for the Infringing Domain Names at Tucows on June 30, 2000. See Annex [hereto].

E. Confusing Similarity

30. "The Infringing Domain Names are confusingly similar to the Complainants ALTAVISTA mark as required by paragraph 4(a)(i) of the ICANN Policy and the NSI Policy.

31. "The only difference between the AltaVista trademark and the Infringing Domain Names is the Respondents substitution, inversion, addition or removal of one or two letters in the Complainants mark. On June 14, 2000, a WIPO panel addressed this exact issue in Yahoo! Inc. v. Eitan Zviely, et al., WIPO Case No. D2000-0273, which involved a cybersquatter who had registered 37 domain names which were either misspellings or slight alterations to the YAHOO! mark, including "ayahho.com", "yahoa.com", "yahop.com", and "yhahoo.com". Id.,  2 at 1-3. In that case, the respondent registered under seven different entities with slightly different names and at several different addresses. Id.,  1 at 1. In finding the domain names to be confusingly similar, the panel noted that [e]specially pertinent here, is the fact that [respondent] has apparently used each of the websites at issue to direct users to [respondents] Internet search services. Id.,  5.a. at 8. The panel further stated that its finding of confusing similarity is reinforced by [respondents] pattern of conduct in registering 37 Yahoo-like domain names, as well as dozens of other trademark-related domain names. [Respondents] only purpose in registering so many trademark-related domain names must have been to trade on the good will and fame associated with those marks. Specifically, in light of the global fame and good will associated with Yahoo!s marks and domain names, [respondent] must necessarily have expected to attract visitors to his website. Confusing similarity is what [respondent] has been counting on. Id.

Here, Respondent has registered 11 domain names that are confusingly similar to Complainants mark (as well as dozens of names similar to other marks) with the intent to trade on the good will and fame associated with the ALTAVISTA mark and to confuse users as to Complainants sponsorship, affiliation or endorsement, all to attract visitors to Respondents and its affiliates website.

32. "Other arbitrators applying the ICANN Policy have consistently found that misspellings or typographical variations of famous marks are confusingly similar as required by paragraph 4(a)(i). See Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330, 3 at 2 (finding Respondents domain names "BRTANNICA.COM", "BRITANNCA.COM", and "BITANNICA.COM" virtually identical and confusingly similar to Complainants BRITANNICA and "BRITANNICA.COM" marks); Geocities v. Geociites.com, WIPO Case No. D2000-0326, 6(A) at 4 (finding that the domain name "GEOCIITES.COM" is a simple misspelling of and confusingly similar to both the domain name and trademark "GEOCITIES.COM" owned by the Complainant); Sunglass Hut Corporation v. AAANET, Inc., ICANN Case No. NAF-FA0094370, at 3-4 (finding domain name "SUNGLASSHOT.COM" confusingly similar to mark SUNGLASS HUT and domain name "SUNGLASSHUT.COM" because names differed only in a single letter, the u in Complainants name and the o in Respondents name); Bama Rags, Inc. v. John Zuccarini, d/b/a Cupcake Confidential, ICANN Case No. NAF-FA0094380, at 3-4 (finding domain name "DAVEMATHEWSBAND.COM" confusingly similar to mark DAVE MATTHEWS BAND because of typographical error using one t in MATTHEWS); Hewlett-Packard Company v. Cupcake City, ICANN Case No. NAF-FA0093562, at 3 (finding domain name "HEWLITTPACKARD.COM" nearly identical to mark HEWLETT PACKARD).

33. "The Respondents registration and use of the prefix www in one of the Infringing Domain Names in conjunction with the Complainants well-known mark does not alter this result, because the primary element of the "wwwalavista.com" domain name is the word AltaVista. See "InfoSpace.com", Inc. v. Registrar Administrator Lew Blanck, ICANN Case No. D2000-0069,  6.A, at 2 (domain name wwwinfospaces confusingly similar to trademark INFO SPACE because addition of www before Complainants mark and addition of s after the mark were not sufficient to avoid confusion).

34. "The Infringing Domain Names create an imitation of the ALTAVISTA mark which undoubtedly will cause confusion among Internet users, which Respondent clearly intended to do by registering the Infringing Domain Names.

35. "For the above-stated reasons, the Complainant has satisfied paragraph 4(a)(i) of the Policy.

F. Lack of Rights in Domain Name

36. "The Respondent has no rights or legitimate interests in respect of the Infringing Domain Names as required by paragraph 4(a)(ii) of the ICANN and NSI Policies.

37. "The Respondent is not a licensee of the Complainant, nor is it otherwise authorized to use the Complainants mark.

38. "The Respondent does not use any of the Infringing Domain Names as its business name, and there is no evidence that it did so prior to his registration and use of Infringing Domain Names. The Respondent is not commonly known by the Infringing Domain Names. The Respondent has no trademark or service mark rights in the Infringing Domain Names.

39. "The Respondents rights and interests in Infringing Domain Names are undermined further by its automatic forwarding of Internet users to other websites which Respondent either operates or with which it is affiliated, "http://www.mindgaming.com/" and "http://www.otcstreet.com/". Such an attempt to attract Internet users to other sites is not a legitimate use of a domain name. See America Online, Inc. v. Tencent Communications Corp., ICANN Case No. NAF-FA0093668 at 3 (use of a website as a portal to suck surfers into a site sponsored by Tencent seems hardly legitimate); Bennett Coleman,  6.B. at 4 (finding of no rights and illegitimate interests fortified by the fact that the Respondents sites appear to act as postal addresses to other sites).

40. "There is nothing on the Respondents or its affiliates websites that refers to the Infringing Domain Names or that would in any way justify or explain the use of the imitation ALTAVISTA mark within the domain name. See Nokia Corporation v. "Nokiagirls.com" a.k.a. IBCC, ICANN Case No. D2000-0102,  6.b at 4 (finding that Respondent had no rights or legitimate interests in domain name "NOKIAGIRLS" because there was no element on the Respondents website that would justify use of the word NOKIA within the domain name).

41. "For the above-stated reasons, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

G. Bad Faith Registration and Use

42. "Respondent has registered and used the Infringing Domain Name in bad faith in violation of paragraph 4(a)(iii) of the ICANN and NSI Policies. The Respondents registration and use of the 11 confusingly similar variations of the Complainants well-known mark are inherently deceptive and clearly done with bad faith intent to disrupt Internet traffic intended for Complainant thereby interfering with Complainants business and causing Complainant to lose revenue, to create confusion as to the source, sponsorship, affiliation, or endorsement of the Respondents websites, and to divert Internet traffic and business to the Respondents and its affiliates websites.

43 "The Respondent knew of the Complainants internationally famous mark when it registered the Infringing Domain Names. It is highly unlikely, if not impossible, that anyone providing services on the Web would not be aware of AltaVista, one of the Internets most recognizable brand names. See Samsonite Corporation v. Colony Holding, NAF Case No. 94313, at 3 (finding that Respondent had actual or constructive knowledge of commonly known mark SAMSONITE); Barneys Inc. v. BNY Bulletin Board, ICANN Case No. D2000-0059,  6 at 3 (charging Respondent with knowledge of Complainants rights in its registered mark BARNEYS NEW YORK).

44. "In the recent Yahoo! decision cited above, the panel found that the respondent had registered the 37 domain names in bad faith in light of the following facts: (1) [respondents] pattern of conduct registering hundreds of domain names based on trademarks owned by others, (2) the confusing similarity between the 37 domain names in issue and the Yahoo!s marks, (3) [respondents] programming of his websites to direct users away from the Yahoo! search engine, (4) [respondents] registrations under phony names, and (5) [respondents] continued use of the phonetically identical domain name to direct users to [respondents website]. Yahoo! Inc., WIPO Case No. D2000-0273,  5.c. at 9.

45. "Similarly, here Respondent has (1) registered dozens of domain names based on trademarks owned by others, including "nrtscape.com", "meryl-lynch.com", "wwwporshe.com", "wwwnewyorktimes.com", and "eeeyahoo.com"; (2) registered the 11 Infringing Domain Names which are confusingly similar to the ALTAVISTA mark; (3) programmed the Infringing Domain Names at Tucows to automatically forward users away from the AltaVista search engine to its own or its affiliates websites; (4) registered the Infringing Domain Names under multiple fictitious names; and (5) continues to direct users to its or its affiliates websites.

46. "Respondent also showed bad faith in registering and using "wwwalavista.com" by adding the prefix www to Complainants mark. See InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck, ICANN Case No. D2000 0069,  6.C at 3 (finding that wwwinfospaces was registered and used for the sole purpose of creating a likelihood of confusion with Complainants mark INFOSPACE and website address infospace to divert potential customers to Respondents business, reasoning that addition of www and s to Complainants mark is best explained as a deliberate attempt to exploit users typographical mistakes when seeking Complainants website).

47. "Because the websites at the Infringing Domain Names at Tucows are currently active, even though the websites at the Infringing Domain Names at NSI are not currently active, the Respondent has satisfied its burden of showing bad faith registration and use for all of the Infringing Domain Names. In Yahoo!, the panel ordered the transfer of all 37 domain names even where the websites associated with the infringing addresses were no longer active (with one exception), given the respondents current use of the one active site and its past use of the other sites. Yahoo! Inc., WIPO Case No. D2000-0273,  5.c. at 9. As demonstrated above in 44-45, the same pattern of bad faith present in Yahoo! exists here. This pattern, including Respondents active use of the six websites, demonstrates abundantly that Respondent has registered and used all 11 of the Infringing Domain Names in bad faith. Id.

48. "For the above-stated reasons, the Complainant has satisfied paragraph 4(a)(iii) of the Policy." (Complaint)

Complainant requests that the Panel transfer the disputed domain name to it (Complaint, paragraph 49)

B. Respondent

Respondents did not reply to Complainants contentions.

 

6. Discussion and Findings

The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion 1. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond

(see, e.g., paragraph 2(a), Rules).

In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by WIPO.

As a threshold matter, the Panel determines that Stoneybrook and Stonybrook Investments will be treated as a single Respondent for purposes of this proceeding. The two names, used in connection with registration of the disputed domain names, employ the same mailing address in Belize and designate the same administrative contact. No evidence has been submitted to suggest that the two names refer to distinct legal entities or that, should they refer to distinct legal entities, these entities have different beneficial ownership. In light of the common registration information and pattern of conduct, the Panel will treat Stoneybrook and Stonybrook Investments as a single Respondent.

Paragraph 4(a) of the Policy sets forth 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) Respondents domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondents domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

Because the Respondent has defaulted in providing a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, paragraph 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of Complainants undisputed representations (id., paragraph 15(a)).

Complainant is the holder of trademark and service mark registrations for the terms "ALTAVISTA" and "ALTA VISTA", in the United States and is using those marks in commerce (see Factual Background, supra). Complainants registration of the AltaVista marks on the Principal Register at the USPTO establishes a presumption of their validity in U.S. law 2. The Panel determines that Complainant has rights in the trademark and service mark "ALTAVISTA" and "ALTA VISTA". Based on the March 25, 1997, date of the earliest registration submitted in this proceeding, and without prejudice to whether Complainant may hold earlier-arising rights in the marks, the Panel determines that Complainants rights in the AltaVista marks arose prior to Respondents earliest registration, on August 1, 1997, of one of the disputed domain names ("altawista.com").

Complainants "ALTAVISTA" mark is well known to users of the Internet as identifying the source of a search engine service.

Respondent has registered the domain names "alfavista.com", "algavista.com", "altavisfa.com", "altavisha.com", "altavitsa.com", "altavsta.com", "altawista.com", "atavista.com", "atlavista.com", "atlavisa.com" and "wwwalavista.com". Each of these domain names (1) incorporates a minimal spelling variation of Complainants AltaVista marks, and (2) adds the generic top-level domain (gTLD) ".com". One such name adds the letters "www" before its variation of Complainants marks.

The addition of the generic top-level domain (gTLD) ".com" is without legal significance from the standpoint of comparing the disputed domain names to "ALTAVISTA" since use of a gTLD is required of domain name registrants, ".com" is one of only several such gTLDs, and ".com" does not serve to identify a specific enterprise as a source of goods or services 3.

The terms "alfavista.com", "algavista.com", "altavisfa.com", "altavisha.com", "altavitsa.com", "altavsta.com", "altawista.com", "atavista.com", "atlavista.com", "atlavisa.com" and "wwwalavista.com" are similar to "ALTAVISTA" in their visual impression. An Internet user or consumer viewing the disputed domain names is likely to confuse any one of them with the term "ALTAVISTA" (or "altavista.com"). The addition of "www" in front of one variation of Complainants mark has the appearance of combining Complainants mark with a standard format "world wide web" address prefix, omitting the period or "dot" between "www" and the mark. Complainants "ALTAVISTA" mark is strong among Internet users, and this factor contributes to the likelihood of confusion 4. Moreover, Respondent has undoubtedly employed minor misspellings of Complainants mark to take bad faith advantage of typographical errors made by Internet users while attempting to enter Complainants Internet address on their web browsers. Demonstrable bad faith in selecting a domain name may contribute to a finding of confusing similarity 5. The Panel determines that the disputed domain names "alfavista.com", "algavista.com", "altavisfa.com", "altavisha.com", "altavitsa.com", "altavsta.com", "altawista.com", "atavista.com", "atlavista.com", "atlavisa.com" and "wwwalavista.com" are confusingly similar to "ALTAVISTA" in the sense of paragraph 4(a)(i) of the Policy.

Complainant has met the burden of proving that Respondent is the registrant of domain names that are identical or confusingly similar to trademarks and service marks in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.

Respondents only demonstrated use of the disputed domain names has been in connection with redirecting Internet users to websites unrelated to Complainant. Such use is hereinafter determined to be in bad faith. Bad faith use of domain names does not establish rights or legitimate interests in the names in the sense of paragraph 4(a)(ii) of the Policy.

Respondent has failed to establish rights or legitimate interests in the disputed domain names. Thus, Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.

The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, paragraph 4(b)). Among these circumstances are that a respondent "by using the domain name, [has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on-line location, by creating a likelihood of confusion with the complainants mark as to the source, sponsorship, affiliation, or endorsement of [respondents] website or location of a product or service on [its] website or location" (id., paragraph 4(b)(iv)).

Respondent has registered a number of domain names that Internet users are likely to employ inadvertently as they misspell Complainants mark and domain name when attempting to address Complainants website. Respondents choice of multiple misspelled versions of Complainants mark and domain name was deliberate. This is evidenced by the well known nature of Complainants mark and Respondents similar multiple-misspelled registrations of other well known marks and domain names. Respondent has intentionally sought to use Complainants mark to confuse consumers as to sponsorship of, or location of a service on, a website or websites that Respondent operates for commercial gain. This constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration.

The Panel will therefore request the registrar to transfer the domain names "alfavista.com", "algavista.com", "altavisfa.com", "altavisha.com", "altavitsa.com", "altavsta.com", "altawista.com", "atavista.com", "atlavista.com", "atlavisa.com" and "wwwalavista.com" to the Complainant.

 

7. Decision

Based on its finding that the Respondent, Stoneybrook, also known as Stonybrook Investments, has engaged in abusive registration of the domain names "alfavista.com", "algavista.com", "altavisfa.com", "altavisha.com", "altavitsa.com", "altavsta.com", "altawista.com", "atavista.com", "atlavista.com", "atlavisa.com" and "wwwalavista.com" within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain names "alfavista.com", "algavista.com", "altavisfa.com", "altavisha.com", "altavitsa.com", "altavsta.com", "altawista.com", "atavista.com", "atlavista.com", "atlavisa.com" and "wwwalavista.com" be transferred to the Complainant, AltaVista Company.

 


 

Frederick M. Abbott
Sole Panelist

Dated: October 26, 2000

 


 

Footnotes:

1. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.

2. 15 USCS 1057(b). See, e.g., Avery Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999).

3. See Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498 (2d Cir. 2000), citing Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999). For purposes of its decision, the Panel need not address whether ".com" may be capable of acquiring secondary meaning in another context.

4. See Brookfield, id., 174 F.3d 1036, 1053-61 (9th Cir. 1999), citing AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979).

5. Brookfield, id. at 1059 (9th Cir. 1999), quoted and discussed in Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, Case No. D2000-0477, decided July 20, 2000.

 

: http://www.internet-law.ru/intlaw/udrp/2000/d2000-0886.html

 

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