Generic Top Level Domain Name (gTLD) Decisions

The Complainant is AltaVista Company , Palo Alto, CA, USA ("Complainant"). The Respondent is Altavisa, Newark, NJ, USA ("Respondent").

The domain name at issue is altavisa.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 August 24, 2000; The Forum received a hard copy of the Complaint on August 24, 2000.

On August 28, 2000, Network Solutions confirmed by e-mail to The Forum that the domain name altavisa.com is registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verifi ed that Respondent is bound by the Network Solutions registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On August 30, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 19, 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@altavisa.com by e-mail.

On October 11, 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 created/registered its domain name on September 6, 1999, almost four (4) years after Complainant’s adoption and use of its mark. Complainant acknowledges that Respondent utilizes a disclaimer and "re -direct" at the top of its home page as follows: "Alta Visa, not a search engine. . . . you have come to the wrong place . . . maybe you were looking for altavista.com." altavisa.com provides a direct link to Complainant’s Website at altavista.com.

Complainant contends that Respondent’s site advertises the sale of various books on typing and indicates that "Alta Visa" credit cards will be available soon.

Complainant contends that altavisa says it has had in excess of 65,000 visitors to its site in each of the months of May, June and July, 2000.

Complainant contends that altavisa.com advertises books for sale on typing and keyboarding and on searching the World Wide Web including a book about Complainant entitled Alta Vista Search Revolution.

Complainant contends that Respondent has no trademark or other rights in the name Alta Visa.

Complainant contends that on July 31, 2000, Complainant’s Counsel attempted to communicate by Cease and Desist letter to Respondent but the letter was returned undeliverable.

Complainant contends that the altavisa.com name is confusingly similar to Complainant’s mark and the only difference between the two is the omission of the letter "t" in Complainant’s mark.

Complainant further contends that Respondent has no rights or legitimate interests in respect to the domain name, that Respondent is not a licensee of Complainant nor otherwise authorized to Complainant’s mark, that there is no indicati on that Respondent used the domain name as its name prior to its registration and use of same, that Respondent is not commonly known as the domain name nor does Respondent have any trademark or service mark rights in the name.

Complainant further contends that there is nothing on Respondent’s Web Site that would in any way justify the use of term altavisa within the domain name.

Complainant contends that Respondent consciously chose a confusingly similar variation of Complainant’s famous mark to promote books on internet search and such constitutes bad faith.

Complainant contends that Respondent’s disclaimer is inadequate to dispell the substantial likelihood of confusion because it does not accompany the domain name nor could it. Complainant contends that the domain name attracts the consum er’s initial interest and that consumer is misdirected long before he or she has the opportunity to see the disclaimer.

Complainant further contends that the domain name has been registered and is being used in bad faith, that Respondent knew of Complainant’s famous mark when it registered its domain name, that registration with a common misspelling cons titutes bad faith and, finally, that Respondent provided false registration information further demonstrating bad faith.

B. Respondent

Respondent contends that it registered the domain name on September 6, 1999 to promote the altavisa credit card and is in the process of negotiating with MBNA Bank to "co-brand" a Visa credit card with the Alta Network, that it is a n affiliate of the amazon.com and provides links to amazon.com Websites and that Respondent removed the book Alta Vista Search Revolution from its Website after notice of this dispute.

Respondent contends that it has acquired trademark or other rights in the mark "altavisa" by using said mark in commerce in connection with its services.

Respondent contends that its domain name is not confusingly similar to the mark of Complainant for Respondent’s mark contains two words: "Alta" and "Visa" which because of the way that domain names operate must be put together without a space. Respondent contends that "Alta" simply means "high" in Spanish and Visa is the owner of credit cards which Respondent plans to co-brand with MBNA Bank.

Respondent does not contend that it is presently a licensee of Visa or otherwise authorized to use the Visa trademark. Respondent contends that it is in the process of affiliating itself with MBNA and that "while Respondent was negotiat ing with MBNA, Respondent decided to generate revenue with its Website by selling books through amazon.com on the site."

Respondent contends that its "exceptionally prominent disclaimer" eliminates any possible confusion with Complainant’s mark or Website and that it in fact Respondent has provided a link to Complainant’s Website for any person who does m istype the Complainant’s domain name.

Respondent acknowledges that it did provide a pseudonym "to protect his privacy and confidentiality" but also provided an accurate e-mail address for contacting.

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 its 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:

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) in which Complainant has rights. Just as clear is the fact that Complainant has substantial rights in the ALTAVISTA mark(s). Respondent’s domain name is, however, a si mple, perhaps common, misspelling/mistyping of Complainant’s mark(s). Respondent’s domain name is different from Complainant’s mark(s) by only one letter – Respondent’s domain name merely omits the "t" between the "s" and "a" in Complainant’s mark(s). One erroneous keystroke by a consumer looking for Complainant’s search engine services can send him/her to Respondent’s site.

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 9/6/99. Respondent had a t 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. Respondent’s domain name is clearly confusingly similar to mark(s) in which Complainant has substantial rights.

Although Respondent’s Website to which a consumer is directed by using the domain name in question includes a "disclaimer" at the top of the home page, such is inadequate to dispel the substantial likelihood of confusion between Res pondent’s domain name and Complainant’s mark(s).

The "disclaimer" does not accompany the domain name, nor could it. Thus, the domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the "disclaimer." The "discl aimer" would only be seen by a consumer after he/she has already potentially been confused and exposed to the offers of Respondent for sale of goods

The "re-direct" to Complainant’s site is also insufficient to dilute improper confusion for it, too, occurs only after substantial initial interest confusion and is not automatic but requires a new choice on the part of the consumer. Su ch corrective measures are too little and too late to adequately negate the adverse effect of initial consumer confusion.

Respondent claims that it has "rights or legitimate interests" in the domain name because it "plans to" do something with the issuing authority for VISA cards in the future and because it is "in negotiations with" MBNA. Respondent h as submitted no credible evidence that it has any authority whatsoever, at present, to use the VISA trademark/service mark. In fact, this Arbitrator, on this record, is not prepared to accept the contention that any such plans or negotiations have taken o r are in fact taking place.

Respondent knowingly draws misled consumers to his site and offers them goods for sale, while at the same time stating, without any significant substantiation, that he plans to use the same site to engage in what appears to be a wholly unrelated business – the providing of credit cards.

Respondent acknowledges that it has no agreement with MBNA or any other entity which might have the power to authorize use of the VISA marks, yet it knowingly and openly uses said marks in a commercial enterprise. Under all of these cir cumstances, it is very difficult for this Arbitrator to believe that there is any substance to Respondent’s vague allegations of its intent and/or authority.

This Arbitrator also cannot and does not find that Respondent’s offering of goods and/or services prior to 8/30/00 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 domain name in bad faith. Rule 4(a)(iii). Respondent clearly uses the domain name to attract, for commercial 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. Rule 4(b)(iv). Respondent clearly attempts to reap where it has not sown.

While not determinative, Respondent’s failure to provide an accurate geographic address is also some evidence of bad faith.

On October 19 and 23, 2000 respectively, the National Arbitration Forum received additional submissions from Complainant and Respondent. The National Arbitration Forum has informed this Arbitrator that these submissions were late an d therefore the NAF does not consider the submissions 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 submissions were "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 administrative 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" 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 submissions, it is, of course, necessary to review the untimely submissions. Hav ing done so, this Arbitrator finds that this is "an exceptional case", at least in regard to the substance of the untimely submissions. Thus, this Arbitrator will exercise discretion and will consider both untimely submissions.

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; AltaVista Company v. Global Net 2000, I nc., NAF Claim No. 95483 (LTAVISTA.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 (MORRISONFORESTER.COM and MORRISONA NDFOESTER.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).