Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Alta Vista Company, Palo Alto, CA, USA ("Complainant"). The Respondent is Curtis Claar d/b/a Tae Po Promotions, Rapid City, SD, USA ("Respondent").

The domain name at issue is "Altavistas.com", registered with Network Solutions.

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 September 1, 2000; The Forum received a hard copy of the Complaint on August 31, 2000.

On September 6, 2000, Network Solutions confirmed by e-mail to The Forum that the domain name "Altavistas.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 4.0 registration agreement and has thereby agreed to resolve domain-name disputes 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@altavistas.com by e-ma il.

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 contends that Respondent registered/created its domain on December 11, 1998, three (3) years after Complainant’s first use of its mark(s), that Respondent’s domain name automatically forwards internet users to http://www.site-exposure.com which invites users to search the internet on its search engine and provides advertising as well as a variety of services aimed at increasing web traffic on websites.

Complainant contends that Respondent uses the domain name to automatically forward users who mistype Complainant’s domain name and mark to Respondent’s website in a bad faith attempt to divert potential users of Complainant’s site to Re spondent’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.

Complainant further contends that on August 18, 2000 its’ attorneys sent a Cease and Desist Letter to Respondent and Respondent did not reply thereto.

Complainant further contends that the domain name in question is confusingly similar to Complainant’s mark and that the only difference between the two is the addition of an "s" to the end of Complainant’s mark, that Respondent has no r ights or legitimate interests in respect of the domain name and Respondent is not a licensee of Complainant, nor is it otherwise authorized to use Complainant’s mark, that there is no indication that Respondent used the domain name as its name prior to re gistration and use of the domain name, that Respondent is not commonly known as the domain name, nor does Respondent have any trademark or service rights in and to the domain name.

Complainant further contends that there is nothing on Respondent’s website that would in any way justify the use of ALTAVISTA within the domain name, that Respondent’s choice of the confusingly similar variation of Complainant’s famous mark 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 and that Respondent knew of Complainant’s internationally famous mark when it registered its’ domain name.

B. Respondent

Respondent contends that the domain name in question is not confusingly similar to any mark of Plaintiff, that it is the plural of common English/Spanish phrase, which means "High View." Respondent claims that there are many other c ompanies which utilize the name/mark ALTA VISTA, that there are other trademark registrations for ALTA VISTA and that there are many other similar pending trademark registrations and that there are other foreign trademark registration and domain name regi strations of ALTA VISTA that do not belong to the Complainant.

Respondent claims that he grew up in Wyoming and over a period of years moved from Wyoming to Colorado back to Wyoming and then to South Dakota and that since in each area where he lived or worked, there was a roadway named "Alta Vista" , "it is not surprising that Respondent ended up with the domain name ALTAVISTAS.COM."

Respondent claims that Complainant has not proven any damage to the ALTA VISTA mark by the existence of his domain name.

Respondent acknowledges that his use of ALTAVISTA.COM to forward to SITE-EXPOSURE.COM but claims that it is not in bad faith nor an attempt to divert Complainant’s potential traffic to Respondent’s site.

Respondent claims that it abhors "under construction" pages so that after activating a new domain names chooses to forward them to SITE-EXPOSURE.COM. Respondent further claims that there is no attempt to confuse internet users as to the source, sponsorship, affiliation or endorsement of Respondent’s site.

Respondent further claims that his use of the domain name is a temporary use to direct friends, family and colleagues to SITE-EXPOSURE.COM.

Respondent further claims that it was providing legitimate goods and services at the domain name SITE-EXPOSURE.COM where the domain name ALTAVISTAS.COM is dumped prior to notice of the Complaint.

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:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

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

(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, mistyping/misspelling of Complainant’s mark(s). Respondent’s domain name is different from Complainant’s mark(s) by only one letter – an "s" added to the end of Complainant’s mark. It is merely the plural of Complainant’s mark. One erroneous keystrok e by a consumer looking for Complainant’s search engine services can send him/her into 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 the domain name in question on 12/11/98. Respondent had at leas t 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. Respon dent has taken no such care. In fact, Respondent has intentionally chosen a name virtually identical to the mark(s) of Complainant. Respondent’s domain name is clearly confusingly similar to mark(s) in which Complainant has substantial rights.

This Arbitrator cannot and does not find that Respondent’s offering of goods and/or services prior to 8/18/00 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 there is 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 do main name.

Respondent does not claim rights or legitimate interests based upon U.D.R.P. 4(c)(ii) or 4(c)(iii). Respondent’s purported preoccupation with roadways in the vicinity of his homes and/or businesses – the "explanation" for his selection of the domain name is, while creative and amusing, simply not credible.

Respondent’s arguments as to other registrations and absence of damages are equally without merit.

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 commercial gain, Internet users to its websit e 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 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); AltaVista Company v. J ean-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 (MORRISONFOR ESTER.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.