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Generic Top Level Domain Name (gTLD) Decisions |
America Online, Inc. v. J.P. Henry
Claim Number: FA0201000104112
PARTIES
Complainant
is America Online, Inc., Dulles, VA
(“Complainant”) represented by James R.
Davis, of Arent Fox Kintner Plotkin
& Kahn. Respondent is J.P. Henry, Tucson, AZ (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <netscapet.com>,
registered with eNom, Inc.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known
conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on January 25, 2002; the Forum received
a hard copy of the
Complaint on January 31, 2002.
On
January 30, 2002, eNom, Inc. confirmed by e-mail to the Forum that the domain
name <netscapet.com> is
registered with eNom, Inc. and that Respondent is the current registrant of the
name. eNom, Inc. has verified that
Respondent is bound by the eNom, Inc. 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
January 31, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of February 20, 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@netscapet.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
February 26, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed
Hon. Carolyn Marks
Johnson 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
allegations:
1.
Respondent’s <netscapet.com>
domain name is confusingly similar to Complainant’s NETSCAPE mark.
2.
Complainant holds the federal trademark
registration for the famous NETSCAPE mark.
Based on the fame of the NETSCAPE mark, Respondent’s offer to sell the
disputed domain name to Complainant shows that Respondent knows
about
Complainant’s interest in the mark.
Respondent’s use of <netscapet.com> domain name to redirect users to its own
commercial website, which provides services identical to those found at
Complainant’s website
<netscape.com>, is not a bona fide use creating an
interest in the domain name in Respondent. In addition, Complainant urges
that
Respondent has not made any reference to NETSCAPE or <netscapet.com> at its commercial website and that
Respondent cannot claim, in good faith, that he did not have any knowledge of
Complainant’s rights
in the NETSCAPE mark.
Furthermore, Respondent cannot claim, in good faith, that he made a
legitimate noncommercial or fair use of the disputed domain name
or that he is
commonly known by the name NETSCAPE or <netscapet.com>.
3.
Bad faith registration is evident by the fact that Respondent registered the
disputed domain name years after the now famous NETSCAPE
mark was federally
registered by Complainant. Respondent
has registered <netscapet.com>
and has used it to redirect users to a commercial website, which competes with
Complainant’s <netscape.com> website.
Respondent’s actions indicate that he intends to attract consumers and
mislead them into believing that Complainant authorizes or
is affiliated with
the commercial services provided by Respondent’s website
<tradersclub.com>. A bad faith
intent is even more evident because <tradersclub.com> does not make a
single reference to the name or mark NETSCAPE.
Thus, Respondent deliberately chose the domain name to commercially gain
from it, and not to define the services provided at the corresponding
<tradersclub.com> site.
Respondent’s
bad faith registration and use of <netscapet.com>
is further demonstrated by the fact
that Respondent offered to sell the disputed domain name to Complainant in
reply to a cease and
desist request.
Therefore, Respondent has registered and used <netscapet.com> in bad faith.
B.
Respondent did not file a Response in this proceeding.
FINDINGS
Complainant is the owner of numerous
trademark registrations for NETSCAPE, including U.S. Trademark Registration No.
2,027,552, registered December 31,
1996. Complainant used the website
<netscape.com> as early as 1994 in connection with various services,
including e-mail services,
auction sales, business information, financial
services and car sale classifieds.
Complainant has invested a substantial
amount of money advertising and promoting NETSCAPE. As a result, the mark has gained worldwide recognition. Complainant’s <netscape.com> website
is one of the Top-10 most-visited Internet sites, with more than 45 million
registered
users.
Respondent registered <netscapet.com> on August 31, 2001. In the past, Respondent has used the
disputed domain name to redirect users to its website <tradersclub.com>,
which offers among
other things e-mail services, auction sales, auto sales, financial
services and business information. In
answer to Complainant’s cease and desist request, Respondent refused the offer
and then concluded his e-mail by making a veiled,
transparent attempt to sell
the disputed domain name by saying he is “always open to hearing what people
have to say” and is “certainly
willing to entertain your offer.”
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.
Complainant
has established its rights with the mark NETSCAPE through federal registration
and continuous use. Further, Respondent
registered and began using the disputed domain name years after Complainant
acquired rights in NETSCAPE. The
confusing similarity between <netscapet.com>
and NETSCAPE are immediately apparent.
Respondent’s
<netscapet.com> differs from Complainant’s mark by one
letter, the addition of the letter “t.”
Thus, it does not serve to distinguish the disputed domain name from the
famous NETSCAPE mark. See Victoria’s Secret v. Zuccarini, FA 95762
(Nat. Arb. Forum Nov. 18, 2000) (finding that misspelling words and adding
letters on to words does not create a distinct
mark but is nevertheless
confusingly similar with Complainant’s marks); see also America Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and
<oicq.com> are confusingly similar to Complainant’s
mark, ICQ); see
also EBAY, Inc. v. MEOdesigns
& Matt Oettinger, D2000-1368 (WIPO Dec. 15, 2000) (finding that
Respondent’s domain name "eebay.com" is confusingly similar to
Complainant’s
registered trademark).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Respondent did not file a response in
this matter. Therefore, the Panel may
conclude that Respondent 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).
Respondent has used the disputed domain
name to redirect users to its website, which offers goods and services similar
to Complainant’s
website. After
receiving a cease and desist request, Respondent replied that he was “willing
to entertain (an) offer” for the disputed domain
name. Respondent’s actions do not demonstrate that
he has used the domain name in connection with a bona fide offering of goods
and services
pursuant to Policy ¶ 4(c)(i).
See North Coast Med., Inc.
v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona
fide use where Respondent used the domain name to divert Internet users
to its
competing website); see also Skipton
Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in
a domain name where Respondent offered the infringing domain name for sale).
Respondent has used the disputed domain
name to redirect users to a commercial website that offers goods and services
similar to Complainant’s
website <netscape.com> without any right to do
so by license or agreement with Complainant.
This action by Respondent does not demonstrate that he is making a
legitimate noncommercial or fair use of the disputed domain name
pursuant to
Policy ¶ 4(c)(iii). See Toronto-Dominion Bank v. Karpachev,
D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests
where Respondent diverted Complainant’s customers to
his websites); see also
Vapor Blast Mfg. Co. v. R & S Tech.,
Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s
commercial use of the domain name to confuse and divert Internet
traffic is not
a legitimate use of the domain name).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent has made a veiled attempt to
sell the disputed domain name to Complainant.
Although there is no direct evidence of Respondent’s intent, the Panel
can presume that Respondent did intend to sell <netscapet.com> for
consideration in excess of out-of-pocket costs because it would be hard to
believe that Respondent had any intention otherwise. See American Anti-Vivisection Soc’y v. “Infa dot Net”
Web Serv., FA 95685 (Nat. Arb.
Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even
if no certain price is demanded,
are evidence of bad faith”). Therefore, Respondent’s registration of <netscapet.com> was in bad faith as outlined in Policy
¶ 4(b)(i). See Wal-Mart Stores,
Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of
bad faith); see also Banca
Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000)
(finding bad faith where Respondent offered the domain names for sale); see
also America Online, Inc. v. Avrasya
Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000)
(finding bad faith where Respondent offered domain names for sale); see also
Little Six, Inc v. Domain For Sale,
FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell
the domain name at issue to Complainant was evidence
of bad faith).
Complainant’s
NETSCAPE mark was federally registered and had already gained fame and
notoriety years before Respondent registered
<netscapet.com>. Therefore, Respondent’s registration of a
confusingly similar domain name which redirects users to a website that offers
similar goods
and services to Complainant’s website <netscape.com>
constitutes bad faith registration pursuant to Policy ¶ 4(b)(iii). See
EBAY, Inc. v. MEOdesigns & Matt
Oettinger, D2000-1368 (Dec. 15, 2000) (finding that the Respondent
registered and used the domain name <eebay.com> in bad faith where
Respondent has used the domain name to promote competing auction sites); see
also EthnicGrocer.com, Inc. v.
Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000)
(finding that the minor degree of variation from the Complainant's marks
suggests that
the Respondent, the Complainant’s competitor, registered the
names primarily for the purpose of disrupting the Complainant's business);
see
also EthnicGrocer.com, Inc. v.
Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith
where Respondent’s sites pass users through to Respondent’s competing
business); see also Southern
Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18,
2000) (finding that Respondent registered the domain name in question to
disrupt the business
of Complainant, a competitor of Respondent).
Respondent has used the confusingly
similar domain name to redirect users to its own commercial website that offers
services which
are similar to Internet services Complainant offers on its
site. Therefore, Respondent’s use of <netscapet.com> is evidence of intentionally attempting to
attract, for commercial gain, Internet users to its website by creating a
likelihood of
confusion with Complainant’s NETSCAPE mark as to the source of
Respondent’s website, and is in bad faith as outlined in Policy ¶
4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat.
Arb. Forum Oct. 30, 2000) (finding that Respondent had engaged in bad faith use
and registration by linking the
domain name to a website that offers services
similar to Complainant’s services, intentionally attempting to attract, for
commercial
gain, Internet users to its website by creating a likelihood of
confusion with Complainant’s marks); see also America Online, Inc. v. Fu, D2000-1374
(WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to
attract Internet users to his website for commercial
gain by creating a
likelihood of confusion with Complainant’s mark and offering the same chat
services via his website as Complainant);
see also AltaVista v. Krotov, D2000-1091 (WIPO
Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the Respondent
linked the domain name to a website
that offers a number of web services).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
be hereby granted.
Accordingly, it is Ordered that the
domain name <netscapet.com> be
transferred from Respondent to Complainant.
Hon.
Carolyn Marks Johnson, Panelist
Dated: March 11, 2002.
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