Generic Top Level Domain Name (gTLD) Decisions

The Complainant is AltaVista Company , Palo Alto, CA, USA ("Complainant"). The Respondent is James A. Maggs, UK ("Respondent").

The domain name at issue is "caltavista.com", registered with Easyspace Limited.

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

M. KELLY TILLERY, ESQUIRE, Panelist

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on August 31, 2000. On September 8, 2000, Easyspace Limited confirmed by e-mail to The Forum that the domain name "caltavista.com" is registered with Easyspace Limited and that Respondent is the current registrant of the name. Easyspace Limited has verified that Respondent is bound by the Easyspace Limited registration agreement and has thereby agreed to resolve domain-name disput es brought by third parties in accordance with ICANN’s UDRP.

On September 11, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 31, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@caltavista.com by e-mail.

On October 6, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed M. Kelly Tillery, Esquire as Panelist.

Complainant requests that the domain name be transferred from Respondent to Complainant.

A. Complainant

Complainant contends that it is a world-renowned provider of Internet search, information, e-commerce, and portal services and has been using the mark ALTAVISTA to identify its company and Internet services since December of 1995.

Complainant contends that it owns registrations or has applied for registration of the trademark ALTAVISTA in over one hundred countries around the world. The registrations in the United States are as follows:

Complainant also contends it has a pending application for the mark ALTAVISTA in Canada and in twenty other countries.

Complainant contends it owns the domain name ALTAVISTA.COM, has operated a website at ALTAVISTA.COM since December of 1995, has invested many millions of dollars over the years to publicize the mark ALTAVISTA and has used this mark wide ly in a manner designed to ensure its automatic identification with Complainant in the minds of Internet users.

Complainant further contends that Respondent registered the domain name in question on July 21, 2000, four and a half (4 ½) years after Complainant’s first use of its Alta Vista mark and has at least since August 4, 2000 utilized the do main name to lead internet users to a page entitled "Charity Search-Alta Vista" located at http://www.thecharitypot.com/calta vista/index.html and that THECHARITYPOT.COM is also registered to Respond ent.

Complainant further contends that the Web Page of Respondent to which one is led upon entering CALTAVISTA.COM includes the motto "C the difference one letter makes" and states that "by searching with this site you are helping a charity. "

Complainant contends that the site of Respondent in more than one place utilizes the actual ALTA VISTA mark and name and refers users to the ALTA VISTA search engine. Complainant further contends that the site also redirects users to GO OGLE.COM to search the internet.

Complainant contends that Respondent uses the CALTAVISTA.COM domain name to automatically forward users who mistype Complainant’s domain name to Respondent’s website located at THECHARITYPOT.COM in a bad faith attempt to divert potentia l users of Complainant’s site to Respondent’s site, to confuse internet users as to the source, sponsorship, affiliation or endorsement of Respondent’s site and to disrupt internet traffic intended for Complainant and to indicate to users that Respondent’ s pages are somehow sponsored by or affiliated with Complainant.

Complainant contends that it’s attorney sent a Cease and Desist letter to Respondent on August 16, 2000 and that on August 23, 2000 Respondent refused to take down its site or transfer the domain name.

Complainant contends that the CALTAVISTA.COM domain name is confusingly similar to Complainant’s ALTAVISTA marks, that Respondent has no rights or legitimate interests in respect of the domain name, that Respondent is not a licensee of Complainant or otherwise authorized to use Complainant’s marks, there is no indication that Respondent used CALTAVISTA as its’ name prior to its registration and use of CALTAVISTA.COM, that Respondent is not commonly known as CALTAVISTA, nor does the Resp ondent have any trademark or service mark rights in CALTA VISTA or CALTAVISTA.COM.

Complainant further contends that there is nothing on Respondent’s website that would in any justify the use of the term CALTA VISTA within the domain name, that Respondent’s choice of a confusingly similar variation of Complainant’s fa mous and unmistakable mark to promote its own internet search services supports a finding of lack of rights or legitimate interests, that Respondent’s domain name has been registered and is being used in bad faith, that Respondent knew of Complainant’s in ternationally famous mark when it registered its domain name, that Respondent provides users with an actual link to Complainant’s search engine and finally, that Respondent’s failure to provide any, much less accurate, registration and contact information , is further evidence of bad faith.

B. Respondent

Respondent claims that he is an 18 year old who will soon be going to university and that he set up the website THECHARITY POT.COM during his summer holidays to help charity, to learn web design and to do something during the holida ys with no intention to harm ALTA VISTA or to steal their internet traffic. Respondent claims that the idea of his website is to guide and allow the user to use internet services while creating money for charity. Respondent acknowledges that his domain na me "allows users to search using the ALTA VISTA engine."

Respondent contends that the pages of his website "looks sufficiently different, that nobody would mistakenly think that his page was part of ALTA VISTA."

Respondent contends that he is part of the "Affiliate Network" of ALTA VISTA and that 95% of the monies earned by this site are donated to charity, although the charity is not specified.

Respondent contends that CALTA VISTA is and cannot be a common misspelling or mistyping of ALTA VISTA and Respondent distinguishes the cases of Asta Vista and Altaivsta claiming that there was no response in those cases, t hat they were not affiliates of ALTA VISTA and there was no apparent reason why those domain names were chosen other than to "suck" traffic from ALTA VISTA.

Respondent claims that he has never offered to sell, transfer or auction the domain name nor does he intend to do so, that he does not wish to disrupt the business of ALTA VISTA and that he portrays ALTA VISTA as an excellent search eng ine. Respondent offers to utilize a disclaimer but does not do so at the present time.

Respondent claims that he lives at home, does not have a P.O. Box and did give his address on the registration details because he was worried about junk mail and that his address is available to anyone that e-mails him.

Complainant has met its burden to prove by a preponderance of the credible, relevant admissible evidence that Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which Complainant has right s. U.D.R.P.4(a)(i).

Complainant has met its burden to prove by a preponderance of the credible, relevant admissible evidence that Respondent has no rights or legitimate interest in respect to the domain name. U.D.R.P. 4(a)(ii).

Complainant has met is burden to prove by a preponderance of the credible, relevant admissible evidence that Respondent’s domain name has been registered and is being used in bad faith. U.D.R.P. 4(a)(iii).

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(3) the domain name has been registered and is being used in bad faith.

Respondent’s domain name is clearly not identical to the mark(s) of Complainant. Just as clear is the fact that Complainant has substantial rights in the ALTAVISTA mark(s). Respondent’s domain name is, however, a simple, perhaps com mon, misspelling/mistyping of Complainant’s mark(s). Respondent’s domain name is different from Complainant’s mark(s) by only one letter – the first letter in Respondent’s domain name is "c", followed by Complainant’s mark(s). One erroneous keystroke by a consumer looking for Complainant’s services can send him/her to the site(s) of Respondent.

Complainant’s first Federal U.S. Service Mark Registration was issued on 3/27/97 and reflects first use in commerce on 5/31/96, both dates long before Respondent registered/created the domain name in question on 7/21/00. Respondent had at least constructive, if not actual notice, of Complainant’s mark due to the earliest U.S. Federal Registration on 3/27/97. Complainant clearly has priority and as a second comer, Respondent must take care not to use any mark confusingly similar thereto. Respondent has taken no such care; he has in fact intentionally done the exact opposite. Respondent’s domain name is clearly confusingly similar to mark(s) in which Complainant has substantial rights.

Respondent’s contention that there is no such confusion is without merit. The sound, visual and lettering similarity is, of course, obvious. Respondent offers no credible explanation for the creation/registration of his domain name and no excuse for the use of the exact mark(s) of Complainants on his website, his link to Complainant’s site, nor his use of the telling phrase: "C the difference one letter make", except that he claims to be an "Affiliate" of Complainant and that Complainan t allegedly "accepted" his page as an Affiliate on July 24, 2000. Respondent has not provided any document or other evidence supporting this claim of alleged approval.

However, Complainant acknowledges that Respondent did register under the Alta Vista Affiliate Program for the domain name THE CHARITYPOT.COM, but not, as he alleges, under the CALTAVISTA.COM domain name. A review of the evidence, including the AltaVista Affiliate Program Agreement, makes it clear, and this Arbitrator so finds, that Complainant has not in any way authorized Respondent to use its mark(s) or any confusingly similar thereto on or in connection with the domain name in question.

Respondent does not claim that he has been commonly known by the domain name (U.D.R.P. 4(c)(ii)) nor does Respondent clearly make a claim that he is making a legitimate non-commercial or fair use of the domain name, without intent f or commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue. U.D.R.P 4(c)(iii). However, Respondent does, in somewhat veiled fashion, claim that his use of the domain name is for charitable purposes and is with out the intent to misleadingly to divert customers for commercial gain.

Respondent readily admits that he secures monies from visitors to his websites who utilize the domain name in question. He claims that 95% of those monies go to charity, though he fails to identify any particular charity. This Arbitrato r is not prepared to accept such a bald representation upon which to base a finding. Nor is this Arbitrator prepared to find that the alleged use of the domain name as explained by Respondent is a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue. This Arbitrator finds that it is in fact a use which is intended for monetary gain and to divert customers who are seeking the ALTA V ISTA.COM website. Respondent’s protestations to the contrary are simply not credible.

Lastly, Respondent, at least indirectly, argues that before notice to him of any dispute, which first occurred by Cease and Desist Letter dated August 18, 2000, he either used or made demonstrable preparations to use the domain name in connection with a "bona fide offering of goods or services." U.D.R.P. 4(c)(i).

The domain name in question seems to have been created on July 21, 2000 and there is some evidence that it was actually used to provide services for compensation prior to Respondent’s receipt of the first Cease and Desist Letter on Augu st 18, 2000, less than one month subsequent to the creation.

However, the crucial element of this provision of the U.D.R.P.4(c)(i) requires a "bona fide" offering of goods and services.

This Arbitrator cannot and does not find that Respondent’s offering of goods and/or services prior to August 18, 2000 were "bona fide." The American Heritage Dictionary of the English Language (Third Edition, 1992) defines "bona fide" as "made or carried out in good faith", "authentic" or "genuine." This Arbitrator cannot find that the use by Respondent of marks identical and/or confusingly similar to valid, Federally-registered marks of another to constitute offering of services "in good faith" and certainly not "authentic" or "genuine", especially since Respondent has no authorization from Complainant. Thus, U.D.R.P. 4(c)(i) is of no avail to Respondent on this record. Respondent has no rights or legitimate interests in respect of the domain name.

The record reflects substantial evidence that Respondent registered and is using the domain name in bad faith. U.D.R.P. 4(a)(iii). Respondent clearly uses the domain name to attract, for monetary, albeit, allegedly charitable gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. U.D.R.P. 4(b)(iv). Respondent clearly attempts to reap where it has not sown.

This Arbitrator finds that the Respondent has intentionally attempted to attract, for commercial gain, internet users to his website and/or other on-line locations by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship and affiliation or endorsement of his website. U.D.R.P.4(b)(iv).

Even if Respondent’s efforts are 100% for charity, they are not non-commercial. Commerce includes all activities connected with the buying, selling, advertising, trading, bartering and/or exchanging of goods and/or services. Such activities can be "commercial" even if they are not for profit or benefit noble and worthy causes.

Although Respondent provided an accurate e-mail address, his failure to provide a physical address, while not rising to the level of bad faith in and of itself, is some evidence of bad faith. Neither ICANN Administrators, potential comp lainants, nor internet users should be denied true and accurate information about the identity and physical location of a domain name registrant.

On October 4, 2000, the National Arbitration Forum received an additional submission from Complainant identified as "Complainant’s Rebuttal to Respondent’s Response." The National Arbitration Forum has informed this Arbitrator that this submission was late and therefore the NAF does not consider this submission to be in compliance with Supplemental Rule #7 of the forum’s Supplemental Rules.

7. Submission of other Written Statements and Documents; No Amendment to the

There is no question here that the aforementioned submission was "not timely submitted" Supplemental Rule 7. However, Rule 10 entitled "General Powers of the Panel" provides in Subsection (c) that, "The Panel shall ensure that the a dministrative proceeding takes place with due expedition and it may, at the request of a party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel." Thus, this Arbitrator may, "in exceptional cases" ex ercise discretion to consider the untimely submission.

In order to determine whether this is in fact "an exceptional case" and whether such discretion should be exercised in favor of considering any of such submissions, it is, of course, necessary to review the untimely submission. Havi ng done so, this Arbitrator finds that this is "an exceptional case", at least in regard to the circumstances and the substance of the untimely submission. In particular, in light of Respondent’s claim that its use was approved by Complainant, the "Alta V ista Affiliate Program Agreement" attached as Exhibit "B" of the untimely submission is especially important. Thus, this Arbitrator will exercise discretion and will consider the untimely submission.

This decision is similar to other cases involving the ALTA VISTA marks. See: AltaVista Company v. Astavista.com, NAF Claim Number: FA0007000095251 (ASTAVISTA.COM confusingly similar to ALTAVISTA); Alta Vista Company v. Jean-Daniel Gamache, NAF Claim Number: FA0007000095249 (ALTAIVSTA.COM confusingly similar to ALTAVISTA); See also, Morrison & Foerster, LLP v. Brian Wick and American Distribution Systems, Inc., NAF Case No. 94380, at 2-3 (MORRISONFO RESTER.COM and MORRISONANDFOESTER.COM confusingly similar to MORRISON & FOERSTER); Bama Rags, Inc. v. John Zuccarini, NAF Case No. 94381, at 3-4 and Bama Rags, Inc. v. John Zuccarini, d/b/a Cupcake Confidential, NAF Case No. 94380, at 3- 4 (DAVEMATTHEWSBAND.COM and DAVEMATHEWSBAND.COM confusingly similar to DAVE MATTHEWS BAND).

The domain name should be immediately transferred to Complainant.