Home
| Databases
| WorldLII
| Search
| Feedback
Generic Top Level Domain Name (gTLD) Decisions |
Claim Number: FA0007000095251
The
Complainant is AltaVista Company, Palo Alto, CA, USA ("Complainant").
The Respondent is Astavista.com, Chambly, Quebec,
Canada
("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is “ASTAVISTA.COM”, registered with Network Solutions Inc
(“NSI”).
PANELIST
The
Panelist certifies that he has acted independently and impartially and to the
best of his knowledge, has no known conflict in
serving as the Panelist in this
proceeding.
M.
KELLY TILLERY, ESQUIRE
Complainant submitted a Complaint to the
National Arbitration Forum ("The Forum") electronically on 07/18/2000;
The Forum
received a hard copy of the Complaint on 07/20/2000.
On 07/19/2000, NSI confirmed by e-mail to
The Forum that the domain name “ASTAVISTA.COM” is registered with NSI, that
Respondent is
the current registrant of the name and that the name was created
on 5/31/98. NSI has verified that
Respondent is bound by the Network Solutions Service Agreement Version 5.0 and
has thereby agreed to resolve
domain-name disputes brought by third parties in
accordance with ICANN’s UDRP.
On 07/24/2000, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"),
setting a deadline of 08/14/2000 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e-mail,
post and fax, and to all entities and persons listed on Respondent’s registration
as technical, administrative and billing contacts
by e-mail.
On August 14, 2000, pursuant to
Complainant’s request to have the dispute decided by a Single 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:
Mark |
International
Class (goods/services): |
Registration
Number: |
Registration
Date: |
ALTAVISTA |
42 (computer
services) |
2,047,808 |
March 25, 1997 |
ALTA VISTA |
42 (computer
services) |
2,052,345 |
April 15, 1997 |
ALTAVISTA |
9 (computer
software) |
2,112,885 |
November 11,
1997 |
ALTAVISTA |
9 (computer
software), 16 (printed matter), and 41 (educational services) |
2,181,100 |
August 11,
1998 |
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 widely in a manner designed to ensure
its
automatic identification with Complainant in the minds of Internet users.
Complainant contends that on or about May
31, 1998, Respondent registered the domain name ASTAVISTA.COM. [emphasis
added], that this website automatically redirects Internet users to another
website at BITCHPOST.COM, which
promotes and displays sexually explicit
material, directs users to other sexually explicit websites and offers an
Internet search
service. That domain
name is owned by Respondent’s Administrative and Billing Contact, Jean-Daniel
Gamache.
At present, the bottom of the home page
at BITCHPOST.COM reads: “This site is
in NO way associated with Alta Vista.
If you want to go on Alta Vista, the URL is AltaVista.com.” and “This
site is for sale. To make an offer
click here.” The link for the
offer for sale directs Internet users to send an email to
“admin@bitchpost.com.”
Complainant contends that there is no
evidence that Respondent has any trademark or other rights in the name
ASTAVISTA and that on
March 24, 2000, its’ attorney sent a letter to Mr.
Gamache, demanding that he cease and desist use of ASTAVISTA.COM and Mr.
Gamache
responded by stating, “If you are willing to buy AstaVista.com please
make an offer.”
Complainant contends that on April 10,
2000, its’ attorney offered to pay
Respondent’s registration costs for ASTAVISTA.COM in exchange for the
transfer of the name to AltaVista and on
May 3, 2000, Respondent’s attorney stated that his client had the right
to use ASTAVISTA.COM “in each country where WWW.ALTAVISTA.COM
is not registered
as a trade mark” and offered to sell the domain name ASTAVISTA.COM to
Complainant for $3,000.
Complainant contends that the domain name
ASTAVISTA.COM is confusingly similar to Complainant’s mark ALTAVISTA. The only difference between the two
names is the substitution of the letter “s” for the letter “l” in
Complainant’s mark.
Complainant contends that Respondent has no rights or legitimate interests in respect of the domain name ASTAVISTA.COM, that Respondent is not a licensee of Complainant and that Respondent is not otherwise authorized to use Complainant’s mark.
Complainant contends that there is no indication that Respondent used ASTAVISTA.COM as its name prior to its registration and use of ASTAVISTA.COM, nor that Respondent is commonly known as ASTAVISTA.COM, nor that Respondent has any trademark or service mark rights in ASTAVISTA.COM.
Complainant contends the Respondent’s
marketing of pornographic images and websites along with an Internet search
service does not
constitute a bona fide offering of goods or services.
Complainant contends that Respondent knew
of Complainant’s internationally famous mark when it registered ASTAVISTA.COM
and that Respondent’s registration and use
of same to generate Internet traffic to pornographic websites evidences bad
faith.
Finally, Complainant contends that
Respondent’s registration and use of a domain name with a common misspelling of
Complainant’s well-known
mark and Respondent’s offer to sell the domain name to
Complainant for $3,000 indicates bad faith.
B.
RESPONDENT
Respondent’s only response to Complainant’s Complaint is an e-mail dated 7/27/00 from Jean-Daniel Gamache, Respondent’s Administrative and Billing Contact, to the National Arbitration Forum stating: “I do not wish to keep the domain names.”[1]
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 rights.
Rule 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. Rule 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. Rule 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 the 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 has not complied with UDRP
Rules 5(b)(i) and/or 5(b)(viii). Respondent did not “Respond specifically to
the statements
and allegations contained in the complaint and include any and
all bases for the Respondent (domain-name holder) to retain registration
and
use the disputed domain name…” Rule 5(b)(i) and did not “Conclude with
the following statement followed by the signature of the Respondent or its
authorized representative: “Respondent
certifies that the information contained
in this Response is to the best of Respondent’s knowledge complete and
accurate, that this
Response is not be presented for any improper purpose, such
as to harass, and that the assertions in this response are warranted
under these
Rules and under applicable law, as it now exists or as it may be extended by a
good-faith and reasonable argument.” Rule
5(b)(viii).
UDRP Rule 14 entitled “Default” provides in part (b) that “If a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”
The UDRP Rules thus provide that Respondent is required to specifically respond to each and every substantive, well-plead factual allegation of Complainant’s Complaint and make a certification regarding same. Federal Rule of Civil Procedure Rule 8(d) provides that, “Averments in a pleading to which a responsive pleading is required, other than those as to the amount of damages, are admitted when not denied in the responsive pleading. Averments in a pleading to which no responsive pleading is required or permitted shall be taken as denied or avoided.” While the Federal Rules do not govern here, guidance may be drawn therefrom.
Complainant has set forth in simple, concise language, thirty-two (32) numbered paragraphs of specific, factual allegations regarding its rights and the lack thereof of Respondent. Because Respondent has consciously chosen not to respond to each of these factual allegations in accordance with the Rules, each and every one of those well-plead factual allegations shall be deemed admitted for purposes of this proceeding. However, the several legal conclusions contained therein are not deemed admitted, as they would not be under the Federal Rules of Civil Procedure.
At first blush, this case appears quite
simple and straightforward. Complainant
wishes to have the domain name transferred to it and Respondent ‘does not wish
to keep the domain name.’[2] However, Respondent has not transferred the
domain name to Complainant, which, of course, it is free to do, if that is its
wish. UDRP 8(a).[3] Thus, transfer can only be made if this
Arbitrator finds that Complainant has proven each and every element required by
Rule 4(a).
At second blush, this case may still
appear simple and straightforward since all of the well-plead, factual
allegations of Complainant’s
Complaint have been deemed admitted. However, since the legal conclusions plead
have not and cannot be deemed admitted, what is left to determine is whether
the now-admitted
facts are admissible, relevant and prove by a preponderance of
the evidence the three elements required by Rule 4(a).
IDENTICAL
AND/OR CONFUSINGLY SIMILAR
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 simple, perhaps common,
misspelling of Complainant’s mark(s).
Respondent’s domain name is different from Complainant’s mark(s) by only
one letter – the second letter in Respondent’s domain name
is “s”, rather than
the “1” in Complainant’s mark(s). One
erroneous keystroke by a consumer looking for Complainant’s search engine
services can send him/her into the electronic nether
world of the sexually
explicit and perhaps pornographic sites 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 5/31/98. 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. Respondent’s domain name is clearly
confusingly similar to mark(s) in which Complainant has substantial rights.
Disclaimer
Although Respondent’s website to which a
consumer is directed by using the domain name in question includes a
“disclaimer” at the
bottom of the home page, such is inadequate to dispel the
substantial likelihood of confusion between Respondent’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 “disclaimer” is in
small print at the bottom of the home page and would only be seen by a consumer
after he/she has already potentially
been confused and either perused and/or
been offended by the sexually explicit graphics and language of the home page.
RIGHTS OR LEGITIMATE INTERESTS
Complainant has alleged, as required by
Rule 4(a)(ii), that Respondent has no rights or legitimate interests in respect
of the domain
name. This issue is at
best, a mixed question of fact and law, and therefore Complainant cannot clear
the hurdle of Rule 4(a)(ii) merely
by virtue of the factual admissions made by
Respondent.
Respondent has not even attempted to
demonstrate its rights to and legitimate interests in the domain name in
responding to the Complaint
in accord with Rule 4(c). However, it is conceivable that any of the circumstances set
forth in Rule 4(c)(i), (ii) or (iii), or other sufficient, like circumstances
could be found based upon an evaluation of all evidence presented, even though
all of evidence has been submitted by Complainant.
The record reflects that Respondent may have been using its domain name in connection with an offering of goods or services as early as 5/31/98, almost two (2) years before 3/24/00, the apparent first date of notice to Respondent of the dispute. Complainant contends that Respondent’s marketing of pornographic images and websites along with an Internet search service does not constitute a “bona fide” offering of goods and services.
Although this Arbitrator is not prepared
to opine as to whether the clearly sexually explicit material on Respondent’s
websites is
in fact “pornographic”,[4]
it can, however, be said that merely because goods or services offered in
connection with a domain name are sexually explicit or
even pornographic does
not mean that such offerings cannot be “bona fide.”[5]
The analysis does not end here. Respondent is neither the owner of nor a
licensee of the U.S. Federally-registered (or any other) mark(s) of
Complainant. There is no evidence of
record about why Respondent chose this particular domain name or what its
source is, other than the argument
and logical presumption made by Complainant
that it was selected and used to confuse consumers with Complainant’s mark(s).
This Arbitrator cannot and does not find
that Respondent’s offering of goods and/or services prior to 3/24/00 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.”[6] 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, Rule 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.
REGISTRATION AND USE IN BAD FAITH
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.
The list of circumstances set forth in
Rule 4(b) which, if found, can constitute registration and/or use in bad faith
is not exclusive. This Arbitrator also
finds that the intentional association of the confusingly similar domain name
with a sexually explicit website
can, and here does, constitute bad faith
registration and use for purposes of Rule 4(a)(iii).
Although this Arbitrator is not bound by
prior decisions in other ICANN proceedings, Complainant has cited several
decisions in similar
cases in which similar results have obtained. See, 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. 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).
Complainant and Respondent shall both now
have their wish. Hasta la vista,
ASTAVISTA.COM.
The domain name should be immediately
transferred to Complainant.
M. KELLY TILLERY, ESQUIRE, ARBITRATOR
August 17, 2000
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
[1] Mr. Gamache is the Respondent in a separate, but related ICANN/NAF proceeding, Altavista Company v. Jean-Daniel Gamache, NAF Claim No. FA0007000095249, involving the domain name ALTAIVSTA. Mr. Gamache sent this e-mail response in reference to the Complaints in both actions.
[2] Respondent is apparently still using the domain name so it cannot be said to have been “abandoned” same in the normal sense of the word and certainly not in the trademark sense.
[3] Presumably, Complainant would agree as required by UDRP 8(a).
[4] This is so despite the fact that at least one page of Respondent’s website actually uses the word “porn.” Unlike Justice Stewart, I cannot say that I “know it when I see it.” See, Jacobellis v. State of Ohio, [1964] USSC 164; 378 U.S. 184, 197, [1964] USSC 164; 84 S. Ct. 1676, 1683.
[5] Cf., MatchNetplc. v. MAC Trading, WIPO Case No. D2000-0205, §6 at 7.
[6] “Bona Fide” is a Latin phrase best explained in Amo, Amas, Amat and More by Eugene Ehrlich (Harper & Row
1985) as follows: “in good faith
This phrase can also be translated as “honestly,” “sincerely,” or any other word or e expression denoting “without deception.” . . . No fraud or deceit is intended or shown.”
WorldLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.worldlii.org/int/other/GENDND/2000/915.html