Generic Top Level Domain Name (gTLD) Decisions

The Complainant is AltaVista Company , Palo Alto, CA, USA ("Complainant"). The Respondent is Orbyt Web Solutions d/b/a Net Meter ("Respondent").

The domain names at issue are <alravista.com> (Gandi) <altaviasta.com> (Gandi)

<altaviosta.com> (Network Solutions), registered with Gandi and 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 14, 2000; The Forum received a hard copy of the Complaint on September 11, 2000.

On September 18, 2000 and September 14, 2000 respectively, Gandi and Network Solutions confirmed by e-mail to The Forum that the domain names <alravista.com> (Gandi) <altaviasta.com> (Gandi) and <altaviosta.com& gt; (Network Solutions) are registered with Gandi and Network Solutions and that Respondent is the current registrant of the names. Gandi and Network Solutions have verified that Respondent is bound by the Gandi and Network Solutions 5.0 registration agreements and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On September 18, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 8, 2000 by which Respondent could file a Response to the Complaint, was tr ansmitted 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@alravista.com, postmaster@altaviasta.com, and postmaster@altaviosta.com by e-mail.

On October 10, 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 names 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 created/registered its domain names ALRAVISTA.COM and ALTAVIOSTA.COM on August 9, 2000, more than four and a half (4 ½ ) years after Complainant’s adoption and first use of its ALTAVISTA mark and tha t Respondent created/registered its ALTAVIOSTA.COM domain name on March 21, 2000, more than four (4) years after Complainant adopted and first used its ALTAVISTA mark.

Complainant claims that Respondent is in fact Orbyt Web Solutions which has registered more than two (2) dozen other domain names, the overwhelming majority which are misspellings of other trademarks.

Complainant contends that when an internet user types in any one of the domain names at issue, they are automatically forwarded to http://www.altaviosta.com, a web page of Respondent containing a copy of the AV:mark logo of Complainant as well as an active link to Complainant’s search engine site.

Complainant contends that Respondent uses these domain names to automatically forward users who mistyped Complainant’s domain name to Respondent’s Website in a bad faith attempt to divert potential users of Complainant’s site to Respond ent’s site, to confuse internet users as to the source, sponsorship, affiliation, or endorsement of the Respondent’s site and to disrupt internet traffic intended for Complainant.

Complainant contends that mislead users never in fact arrive at Complainant’s home page and are directed instead to a page with the AV: mark and an improperly-functioning link to Complainant’s internet search engine.

Complainant further contends that these domain names are confusingly similar to Complainant’s mark, that Respondent has no rights or legitimate interest in respect of these domain names, that Respondent is not a licensee of Complainant, nor is it otherwise authorized to use Complainant’s marks, that there is no indication that Respondent used any of these domain names as its name prior to their registration and use, that Respondent is not commonly known as any of these names nor does Re spondent have any trademark or service marks rights in those names, that there is nothing in Respondent’s Website that would in any way justify the use of these names, that Respondent’s choice of a confusingly similar variation of Complainant’s famous mar k supports a finding of lack of rights or legitimate interests, that the names are registered and are being used in bad faith and that Respondent knew of Complainant’s mark when it registered the names.

Complainant further contends that that the registration and use of a domain name with a common misspelling demonstrates bad faith and that Respondent has used Complainant’s AV: Mark logo and provided users with an improperly functioning link to Complainant’s search engine.

B. Respondent

Respondent contends that it is in fact Orbyt Web Solutions "sometimes doing business as" Net Meter", that it registered these domain names in good faith, that before any notice to Respondent of the dispute, Respondent was using the domain names in connection with a bona fide offering of goods or services, and that Complainant is in fact using the UDRP in bad faith attempting to "reverse-hijack the three domain names."

Respondent contends that it is in the business of registering typos of common domain names or Uniform Resource Locators (URLs) and re-directing those typos to the URL that was mistyped.

Respondent contends that this is a growing business on the internet that is sometimes referred to as an "internet spell/checker." Respondent contends that through its service it acts as a mediator who politely redirects internet users t o their intended destination.

Respondent acknowledges that the three domain names redirect an internet user to a web page under the domain name ALTAVIOSTA.COM and that it contains a copy of the AV: mark logo of Complainant as well as an active link to Complainant’s search engine.

Respondent contends that it is a client of Complainant and that Complainant knew about, reviewed and approved the domain name ALTAVIOSTA.COM as the Website of the Respondent. Respondent does not make any such contention in regard to the other two domain names.

Respondent further contends that it has legitimate rights in the domain names because it is a licensee of the Complainant and was authorized to use Complainant’s trademark.

Respondent does not deny that the domain names in question are identical or confusingly similar to any mark in which Complainant has an interest.

Respondent contends that it did not act in bad faith because it was working in affiliation with Complainant to assist internet surfers who mistyped their URL’s.

Complainant has met its burden to prove by a preponderance of the credible, relevant admissible evidence that all three (3) of Respondent’s domain names are identical or confusingly similar to a trademark or service mark in which Co mplainant has rights. 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 three (3) domain names. U.D.R.P. 4(a)(ii).

Complainant has met its burden to prove by a preponderance of the credible, relevant admissible evidence that all three (3) of Respondent’s domain names have been registered and are 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:

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 three (3) domain names are clearly not identical to the mark(s) in which Complainant has rights. Just as clear is the fact that Complainant has substantial rights in the ALTAVISTA mark(s). Respondent’s domain names are, however, each a simple, perhaps common, misspelling/mistyping of Complainant’s mark(s). Respondent’s domain names are each different from Complainant’s mark(s) by only one letter. One erroneous keystroke by a consumer looking for Complainant’s search eng ine services can send him/her to the site(s) of Respondent.

One domain name simply substitutes "r" for the third letter "t" in Complainant’s mark. The second merely adds an "a" between the sixth and seventh letters of Complainant’s mark and the third just adds an "o" between the sixth and sevent h letters of Complainant’s mark.

On a standard keyboard, "r" is immediately to the left of "t" and is struck with the same finger. Likewise the letter "a" is immediately to the left of "s" and "o" is right next to "i". Mistyping Complainant’s mark resulting in one of R espondent’s domain names is understandable and foreseeable. The evidence of record leads this Arbitrator to the inescapable conclusion that Respondent consciously chose these three domain names precisely because they are confusingly similar to Complainant ’s marks.

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 even its first domain name in question on 3/21/00. Respondent h ad 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 there to. Respondent has taken no such care. All three (3) of Respondent’s domain names are clearly confusingly similar to mark(s) in which Complainant has substantial rights.

Respondent does not dispute that its domain names are confusingly similar to Complainant’s marks. In fact, it claims that they are so quite intentionally. Respondent claims that it intends by use of these confusingly similar domain name s to catch searchers for Complainant’s site who have misspelled or mistyped Complainant’s domain name and to re-direct them to Complainant’s site.

Respondent’s primary basis for its claim that it has rights to and legitimate interests in these domain names is that it is licensed to do so by Complainant. Complainant denies the existence of any such license, explicit or implied.

A review of the Alta Vista Affiliate Program Agreement upon which Respondent relies makes it clear that Complainant has not granted Respondent license to use its marks or any confusingly similar thereto as domain names. Although it appe ars that Respondent may have passed a preliminary review temporarily, Complainant acted swiftly on 9/22/00 and terminated Respondent’s status for failure to comply with the Agreement.

This Arbitrator also cannot and does not find that Respondent’s offering of goods and/or services prior to 9/18/00 were "bona fide." The American Heritage Dictionary of the English Language (Third Edition, 1992) defines "bona fid e" 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 "i n good faith" and certainly not "authentic" or "genuine", especially since there is no authorization from Complainant. Thus, Rule 4(c)(i) is of no avail to Respondent on this record. Respondent has no rights or legitimate interests in respect of the domai n name.

The record reflects substantial evidence that Respondent registered and is using the three (3) domain names in bad faith. U.D.R.P. 4(a)(iii). Respondent clearly uses these domain names to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark(s) 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.

Respondent acknowledges that it uses domain names that are confusingly similar to Complainant’s marks to intentionally attract for commercial gain, internet users to its Website U.D.R.P.4(b)(iv). While Respondent’s claim to be a new typ e of business - "an internet spell checker" is interesting, novel and may even be true, such does not change the simple fact that this misuse of Complainant’s marks is in bad faith. Such a business world permit Respondent to reap financial benefit from th e valuable marks of Complainant without permission or authority.

Respondent seeks to be a self-appointed toll taker on the information superhighway for those unfortunate souls lost on their way to Complainant’s site. While this may be a well-intentioned and even noble service, it is one from which Re spondent cannot commercially benefit through the use of domain names confusingly similar to the marks of Complainant. Such unauthorized activity makes Respondent more highwayman, than Boy Scout.

The National Arbitration Forum received an additional submission by e-mail in timely fashion, but did not receive hard copies until after the deadline. 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

However, Rule 10 entitled "General Powers of the Panel" provides in Subsection (c) that, "The Panel shall ensure that the administrative proceeding takes place with due expedition and it may, at the request of a party or on its own moti on, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel." Thus, this Arbitrator may, "in exceptional cases" exercise 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 submission, it is, of course, necessary to review the "untimely" submission. Hav ing done so, this Arbitrator finds that this is "an exceptional case", at least in regard to the circumstances of the "untimely" submission. The e-mail version was received in timely fashion and that is sufficient. Thus, this Arbitrator will exercise disc retion and will consider the untimely submission.

Although this Arbitrator is not bound by prior decisions in other ICANN proceedings, in several similar cases, similar results have obtained. See, AltaVista Company v. Astavista.com, NAF Claim Number: FA0007000095251 (ASTA VISTA.COM confusingly similar to ALTAVISTA); Alta Vista Company v. Jean-Daniel Gamache, NAF Claim Number: FA0007000095249 (ALTAIVSTA.COM confusingly similar to ALTAVISTA); AltaVista Company v. James A. Maggs, NAF Claim Number: FA000800009554 5; (ALTAVISTA.COM confusingly similar to CALTAVISTA.COM); Alta Vista Company v. Curtis Claar d/b/a Tae Po Promotions, NAF Claim Number: FA0009000095549 (ALTAVISTA.COM confusingly similar to ALTAVISTAS.COM; See also; Morrison & Foerster, LLP v. Brian Wick and American Distribution Systems, Inc., NAF Case No. 94380, at 2-3 (MORRISONFORESTER.COM and MORRISONANDFOESTER.COM confusingly similar to MORRISON & FOERSTER); Bama Rags, Inc. v. John Zuccarini, NAF Case No. 94 381, 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).