START-UP TRADEMARK OPPOSITION POLICY

DECISION

America Online, Inc. v. Kevin Crothers

Claim Number: FA0204000112603

PARTIES

Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, II, of Arent Fox Kintner Plotkin & Kahn.  Respondent is Kevin Crothers, Ridgeland, MO (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <netscape.biz>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel.  As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).

Complainant submitted a Complaint to the Forum electronically on April 26, 2002; the Forum received a hard copy of the Complaint on April 27, 2002.

On May 2, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 22, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).

Having received no formal 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 June 13, 2002, pursuant to STOP Rule 6(b), the Forum appointed Sandra Franklin as the single 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 STOP Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The domain name <netscape.biz> is identical to Complainant’s NETSCAPE mark.

Respondent has no rights or legitimate interests in the <netscape.biz> domain name.

Respondent registered the <netscape.biz> domain name in bad faith.

B. Respondent

Respondent did not submit a formal Response in this proceeding, although it did “cc” a copy of its e-mail correspondence with Complainant to the Forum.  This communication did not assert any defense to Complainant’s STOP Complaint pursuant to STOP Rule 5(c)(i) and was not in formal compliance with the other provisions of STOP Rules 5(b) & (c).  Accordingly, the Panel will proceed with this case as if no Response had been received.

FINDINGS

Complainant owns numerous trademark registrations for its famous NETSCAPE mark, including U.S. Reg. Nos. 2,027,552 and 2,082,141.  Complainant has used its NETSCAPE mark extensively in connection with computer and Internet-related goods and services.  Complainant also owns a federal trademark application for the NETSCAPE.COM mark. 

Complainant’s NETSCAPE services are accessed by millions of consumers each year.  Millions of others are exposed to Complainant’s NETSCAPE mark through advertising and promotion.  Sales of services under the NETSCAPE mark have amounted to many millions of dollars, which results in the general public associating the NETSCAPE mark with Complainant.  Hence, the NETSCAPE mark is well-known among the general public.

On March 27, 2002 Respondent registered the <netscape.biz> domain name.  Respondent is not licensed or otherwise authorized to use the NETSCAPE mark in this manner.  Complainant’s investigation shows no use of the disputed domain name and no intent to use it in connection to a bona fide offering of goods or services.  In communications initiated by Complainant, Respondent admitted that he had knowledge of Complainant’s NETSCAPE brand prior to registering <netscape.biz>.

DISCUSSION

Paragraph 15(a) of the STOP 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 formal 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 STOP Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the STOP Rules.

Paragraph 4(a) of the STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:

(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.

Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form.  Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights.  The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.

Complainant’s Rights in the Mark

Complainant has established its rights in the NETSCAPE mark through registration with the United States Patent and Trademark Office.  Respondent’s <netscape.biz> domain name is identical to Complainant’s NETSCAPE mark, but for the insignificant addition of “.biz.”

The Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant has demonstrated its rights to and interests in the NETSCAPE mark.  Because Respondent has not submitted a substantive Response in this matter, the Panel may presume it has no rights or interests in the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondent’s failure to respond can be construed as an admission that they have no legitimate interest in the domain names).  Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant.  See 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).

Respondent has failed to provide evidence that it is the owner or beneficiary of a trade or service mark that is identical to <netscape.biz> pursuant to STOP Policy ¶ 4(c)(i), nor has Respondent provided any evidence that it is commonly known by NETSCAPE or <netscape.biz> pursuant to STOP Policy ¶ 4(c)(iii).  See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests under the UDRP where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that Respondent’s failure to produce requested documentation supported a finding for Complainant under the UDRP).

Furthermore, due to the notoriety of Complainant’s mark, it is not plausible that Respondent could be known by NETSCAPE or <netscape.biz>.  In fact, Respondent is only known to this Panel as Kevin Crothers; thus, Respondent has failed to meet the burden of STOP Policy ¶ 4(c)(iii).  See Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark); 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).

Any attempt by Respondent to use <netscape.biz> would constitute an opportunistic attempt to trade on Complainant’s NETSCAPE mark, due to the level of fame the mark has achieved.  Therefore, Respondent cannot possibly make a bona fide offering of goods or services in connection with <netscape.biz> pursuant to STOP Policy ¶ 4(c)(ii).  See Nat’l Acad. Of Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb. 11, 2002) (finding that any planned use of <grammy.biz> by Respondent would be an opportunistic attempt to attract Internet users via Complainant’s famous GRAMMY mark, therefore, Respondent had no rights or legitimate interests).

The Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.

Registration or Use in Bad Faith

Respondent had knowledge of Complainant’s rights in the NETSCAPE mark at the time it registered <netscape.biz> due to the unique nature of the STOP registration procedure, the Principal Register registration status of the NETSCAPE mark, the fame Complainant’s NETSCAPE mark enjoys, and Respondent’s own admission to Complainant that he had knowledge of the NETSCAPE brand.  Therefore, Respondent’s subsequent registration of <netscape.biz>, in light of his awareness of Complainant’s rights in the NETSCAPE mark, constitutes bad faith.  See Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that the unique nature of the STOP Policy and the notice given to Respondent regarding existing IP Claims identical to its chosen domain name precluded good faith registration of <genelogic.biz> when Respondent registered it with “full knowledge that his intended business use of this domain name was in direct conflict with a registered trademark of a known competitor in exactly the same field of business”); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration).

In light of Respondent’s admission that he knew about Complainant’s NETSCAPE brand, it can be inferred that Respondent registered <netscape.biz> in order to prevent Complainant from reflecting the NETSCAPE mark in a corresponding domain name.  Thus, Respondent registered the domain name in bad faith pursuant to STOP Policy ¶ 4(b)(ii).  See Peachtree Software v. Scarponi, FA 102781 (Nat. Arb. Forum Jan. 23, 2002) (finding bad faith under STOP Policy ¶ 4(b)(ii), noting that it was reasonable to conclude Respondent registered <peachtree.biz> with the intent to prevent Complainant from reflecting its PEACHTREE mark in a corresponding domain name, given Respondent's knowledge of Complainant's mark and Respondent's lack of rights or interests in the mark).

The Panel finds that STOP Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the STOP Policy, the Panel concludes that relief shall be hereby granted.

Accordingly, it is Ordered that the <netscape.biz> domain name be transferred from Respondent to Complainant, and that subsequent challenges under the STOP Policy against this domain name shall not be permitted.

Sandra Franklin, Panelist

Dated: June 18, 2002

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