DECISION

America Online, Inc. v. Netscape Designs

Claim Number: FA0210000128678

PARTIES

Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn.  Respondent is Netscape Designs, Oak Brook Terrace, IL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <netscapedesigns.com>, registered with AWRegistry Services.

PANEL

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.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 22, 2002; the Forum received a hard copy of the Complaint on October 24, 2002.

On October 22, 2002, AWRegistry Services confirmed by e-mail to the Forum that the domain name <netscapedesigns.com> is registered with AWRegistry Services and that Respondent is the current registrant of the name.  AWRegistry Services has verified that Respondent is bound by the AWRegistry Services registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On October 28, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 18, 2002 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@netscapedesigns.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On December 6, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant makes the following assertions:

Respondent’s <netscapedesigns.com> domain name is confusingly similar to Complainant’s registered NETSCAPE mark.

Respondent does not have any rights or legitimate interests in the <netscapedesigns.com> domain name.

Respondent registered and used the <netscapedesigns.com> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, America Online, Inc., holds numerous registrations for the NETSCAPE mark, including U.S. Reg. Nos. 2,027,552 and 2,082,141 (registered on the Principal Register of the United States Patent and Trademark Office (“USPTO”) on December 31, 1996 and July 22, 1997, respectively). Complainant also holds a federal trademark application for the NETSCAPE.COM mark, filed on October 6, 2000. Complainant uses these marks in connection with with computer and Internet-related goods and services. Complainant’s NETSCAPE service has over 48 million subscribers worldwide and is one of the top-10 most-visited websites worldwide, generating millions of dollars since its inception.

Respondent, Netscape Designs, registered the <netscapedesigns.com> domain name June 21, 2002. Respondent has not been authorized or licensed to use Complainant’s NETSCAPE mark for any purpose. Respondent’s use of the disputed domain name consists of providing, inter alia, online calanders, electronic mail services, and various eCommerce services, all services also offered by Complainant. During a phone conversation, Respondent informed Complainant that it was actually named Equest, and had just recently began using the name Netscape Designs.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that the 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; and

(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.

Identical and/or Confusingly Similar

Complaint has established rights in its distinctive NETSCAPE mark through registration on the Principal Register of the USPTO along with widespread and continuous use of the mark in commerce worldwide.

Respondent’s <netscapedesigns.com> domain name is confusingly similar to Complainant’s NETSCAPE mark. The only difference between Respondent’s domain name and the registered mark of Complainant is the addition of the top-level domain “.com,” and the addition of the generic word “designs.” As top-level domains are a required feature for each domain name, the “.com” in the disputed domain name does not prevent a finding of confusing similarity. See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants"); see also Visit Am., Inc. v. Visit Am., FA 95093 (Nat. Arb. Forum Aug. 14, 2000) (finding that the “.com” is part of the Internet address and does not add source identity significance).

The addition of the generic word “designs” to the disputed domain name also fails to sufficiently differentiate the disputed domain name from the mark. The dominant feature of the disputed domain name remains Complainant’s distinctive NETSCAPE mark. See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with Complainant’s registered mark “llbean” does not circumvent Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy).

As both Complainant and Respondent operate in the same industry (e.g., providing electronic mail and eCommerce services), confusion between the disputed domain name and Complainant’s mark is even more likely, and the addition of a generic word is not enough to overcome such confusion. See Vivid Video, Inc. v. Tennaro a/k/a Vivid Revolution, FA 126646 (Nat. Arb. Forum Nov. 14, 2002) (finding that any distinctiveness resulting from Respondent’s addition of a generic word to Complainant’s mark in a domain name is less significant because Respondent and Complainant operate in the same industry); see also Slep-Tone Entm't Corp. v. Sounds Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (stating that “likelihood of confusion is further increased by the fact that the Respondent and [Complainant] operate within the same industry”).

Accordingly, the Panel finds that the <netscapedesigns.com> domain name is confusingly similar to Complainant’s registered and distinctive NETSCAPE family of marks under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant’s allegations that Respondent has no rights or legitimate interests in the disputed domain name have gone uncontested by Respondent. In such a situation, the Panel will accept all reasonable assertions by Complainant as true. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

The Panel will also weigh Respondent’s lack of a Response as evidence that it has no rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

Respondent is using the <netscapedesigns.com> domain name to redirect Internet users to its own competing website. Misdirecting Internet traffic by utilizing Complainant’s registered mark, while commercially competing with the holder of the mark, does not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is it an example of legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii). Respondent is merely attempting to capitalize on the goodwill associated with the registered and distinctive mark of Complainant to gain additional Internet traffic for its own website. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business”); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, it's use of the names was not in connection with the offering of goods or services or any other fair use); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods).

Respondent’s contact information indicates that it is known as “Netscape Designs.” However, Complainant’s uncontroverted statements allege that Respondent is actually “commonly known by” the name Equest, and only recently began using the name “Netscape Designs.” The Panel infers from this fact that Respondent used the name “Netscape Designs,” which incorporates in its entirety Complainant’s distinctive and registered NETSCAPE mark, in order to justify its registration of an infringing domain name. This activity is insufficient to demonstrate that Respondent is or ever was “commonly known by” the name “Netscape Designs.”  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).

By successfully demonstrating that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(i)-(iii), Complainant shifts the burden of proof to Respondent to produce evidence rebutting these assertions. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist). As Respondent submitted no Response to the Complaint, it fails to meet this burden.

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <netscapedesigns.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

The Policy lists four circumstances evidencing bad faith registration and use of a domain name. The fourth example listed states that bad faith registration and use of a disputed domain name is evidenced if Respondent has, “intentionally attempted to attract, for commercial gain, Internet users to [its] web site…by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site.” Given the distinctive nature of Complainant’s mark, in light of the fact that Complainant’s NETSCAPE browser is one of the two most popular web browsers in existence, Respondent could have only registered the infringing <netscapedesigns.com> domain name with an intent to confuse Internet users as to the source or sponsorship of its website. In fostering that likelihood of confusion in order to create an online presence that commercially competed with Complainant’s on-line services, Respondent fell within the ambit of Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding bad faith when (1) the domain name contains the Complainant’s mark in its entirety, (2) the mark is a coined word, well-known and in use prior to Respondent’s registration of the domain name, and (3) Respondent fails to allege any good faith basis for use of the domain name).

Accordingly, the Panel finds that Respondent registered and used the <netscapedesigns.com> domain name in bad faith, and Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.

Accordingly, it is Ordered that the <netscapedesigns.com> domain name be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated: December 17, 2002

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