America Online, Inc. v. The Computer Shop
Claim
Number: FA0408000318032
Complainant is America Online, Inc. (“Complainant”), represented
by James R. Davis, of Arent Fox PLLC, 1050
Connecticut Avenue, NW, Washington, DC 20036.
Respondent is The Computer Shop (“Respondent”),
200 Manitoba Street, Unit 4, Bracebridge, ON, Canada P1L2E2.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <netscapedesign.com>, registered with Tucows
Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on August 25, 2004; the Forum received a hard copy of the
Complaint on August 27, 2004.
On
August 26, 2004, Tucows Inc. confirmed by e-mail to the Forum that the domain
name <netscapedesign.com> is registered with Tucows Inc. and that
Respondent is the current registrant of the name. Tucows Inc. has verified that
Respondent is bound by the Tucows 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
August 30, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 20, 2004 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@netscapedesign.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
September 27, 2004, 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <netscapedesign.com>
domain name is confusingly similar to Complainant’s NETSCAPE mark.
2. Respondent does not have any rights or
legitimate interests in the <netscapedesign.com> domain name.
3. Respondent registered and used the <netscapedesign.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
America Online, Inc., along with its related company Netscape Communications
Corp., owns numerous trademark registrations for its NETSCAPE name and mark,
including U.S. Reg. Nos. 2,027,552 (issued Dec. 31, 1996, in connection with
“computer software for use in the transfer of information and the conduct of
commercial transactions across local, national, and world-wide information
networks”) and 2,082,141 (issued July 22, 1997, in connection with
“publications, namely manuals, magazines, newsletters, house organs, and course
materials relating to computing, communications, networks, computer research,
and information technology”).
Each year
approximately 19.5 million unique visitors use the NETSCAPE service, which has
become one of the foremost Internet services.
Respondent
registered the disputed domain name <netscapedesign.com> on May
17, 2001. Subsequently, Complainant and
Respondent engaged in a telephone conversation in which Respondent stated that
the disputed domain name was meant to play off of Complainant’s NETSCAPE
mark. Respondent uses the disputed
domain name to provide website design services.
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 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 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.
Under Policy ¶
4(a)(i), a complainant may establish rights in a mark by providing evidence of
its registration of the mark with an appropriate governmental authority. Complainant has provided evidence that it
owns two U.S. registrations for the NETSCAPE mark. Therefore, Complainant has established rights in the NETSCAPE mark
pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption); see also Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the United States Patent and Trademark Office creates
a presumption of rights in a mark).
A domain name
that incorporates another’s mark, and merely adds a single generic or
descriptive term, has been found to be confusingly similar to such marks under
the Policy. In the instant case, the
disputed domain name contains Complainant’s NETSCAPE mark in its entirety, and
has merely included the term “design.”
In a dispute regarding nearly an identical domain name as the one in
dispute here, the panel found that the domain name <netscapedesigns.com> was confusingly similar to the
NETSCAPE mark. Am. Online, Inc. v.
Netscape Designs, FA 128678 (Nat. Arb. Forum Dec. 17, 2002). Consistent with prior decisions under the
Policy, the Panel finds that the domain name <netscapedesign.com> is
confusingly similar to Complainant’s NETSCAPE mark pursuant to Policy ¶
4(a)(i). See
Novell, Inc. v. Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003)
(finding the domain name <novellsolutions.com>
confusingly similar to the NOVELL mark despite the addition of the descriptive
term “solutions” to the mark because even though “the word 'solutions' is
descriptive when used for software, Respondent has used this word paired with
Complainant's trademark NOVELL.”); see also Fidelity
Int’l Ltd. v. Florida760, FA 203903 (Nat. Arb. Forum Dec. 27, 2003) (“The Panel finds that the <fidelity-international.biz>
domain name is confusingly similar to the FIDELITY mark owned by Complainant
because the domain name fully incorporates the mark and merely adds the generic
term 'international' and generic top-level domain '.biz' to the mark.”); see
also Am. Int’l Group, Inc. v. Shing, FA
206399 (Nat. Arb. Forum Dec. 15, 2003) (“Respondent's <aigassurance.com> domain name is confusingly
similar to Complainant's AIG mark because the disputed domain name appropriates
Complainant's entire mark and adds the generic or descriptive term 'assurance'
to the end of the mark. The addition of this generic or descriptive term does
not significantly differentiate the domain name from the mark under Policy ¶
4(a)(i) because the term 'assurance' relates directly to Complainant's business
of providing insurance services.”).
Complainant has
established Policy ¶ 4(a)(i).
Respondent’s
failure to respond may be construed as an admission that it lacks rights and
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 Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s reasonable
allegations are true.”).
Similarly, the
lack of a Response also allows the Panel to accept all reasonable assertions
set forth in the Complaint as true. See
Vert. Solutions Mgmt., Inc. v. Webnet-marketing, Inc., FA 95095 (Nat. Arb.
Forum July 31, 2000) (holding that Respondent’s failure to respond allows all
reasonable inferences of fact in the allegations of Complainant to be deemed
true); see also Desotec
N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that Complainant's allegations are true unless clearly contradicted
by the evidence).
Without the
benefit of a Response, the Panel is forced to examine the evidence within the
available record to determine whether Respondent is commonly known by the
domain name <netscapedesign.com> pursuant to Policy ¶
4(c)(ii). There is no assertion of such
in the record. The WHOIS registration
information lists the registrant’s name as “The Computer Store,” and not the
disputed domain name. Furthermore,
although there is a printout of Respondent’s website located at the disputed
domain name, such evidence does not adequately provide information to the Panel
that would suggest that Respodent is commonly known by the domain name. Such a printout simply indicates that
Respondent maintains a website at the disputed domain name. See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its
failure to imply that Respondent is commonly known by the disputed domain name,
is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish
Country Store, FA 96209
(Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights
in a domain name when Respondent is not known by the mark).
Panels have
consistently found that it is neither a bona fide offering of goods or
services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of a
domain name under Policy ¶ 4(c)(iii) for a domain name registrant to capitalize
on the goodwill surrounding a third party’s mark by intentionally diverting
Internet users away from the mark’s owner and towards the registrant’s unrelated
commercial website. In the instant
case, Complainant has asserted that, in a telephone conversation with
Respondent, Respondent acknowledged that it chose the domain name <netscapedesign.com>
in order to play off of Complainant’s NETSCAPE mark. Respondent subsequently used the domain name to direct Internet
users to its website design services, which is the type of situation that
previous panels have addressed.
Therefore, the Panel may find that Respondent is not using the disputed
domain name in connection with a bona fide offering of goods or services
pursuant Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant
Policy ¶ 4(c)(iii). See Bank
of Am. Corp. v. Northwest Free Cmty. Access, FA
180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i)
and it is not a legitimate noncommercial or fair use under Policy ¶
4(c)(iii).”); see
also Disney Enters., Inc. v. Dot Stop,
FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that Respondent’s
diversionary use of Complainant’s mark to attract Internet users to its own
website, which contained a series of hyperlinks to unrelated websites, was
neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the disputed domain names); see also U.S. Fran.
Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of
Complainant’s mark and the goodwill surrounding that mark as a means of
attracting Internet users to an unrelated business was not a bona fide offering
of goods or services).
Complainant has established Policy ¶ 4(a)(ii).
Policy ¶
4(b)(iv) is violated when a domain name registrant intentionally attempts to
attract Internet users to its website for commercial gain by creating a
likelihood of confusion with a complainant’s mark. Here, Respondent registered a domain name that is confusingly
similar to Complainant’s NETSCAPE mark.
Respondent has also failed to provide the Panel with any evidence that
could refute the reasonable assertions made by Complainant. In addition, Respodent has admitted in a
telephone conversation with Complainant that it has used the domain name to
capitalize on Complainant’s mark in order to attract Internet users to its
commercial website. Therefore,
Respondent is in violation 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
used 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
Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if
Respondent profits from its diversionary use of Complainant's mark when the
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, it may be concluded that Respondent is using the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv)).
A panel has
stated that Complainant’s NETSCAPE mark has “gained fame and notoriety.” Am.
Online, Inc. v. Henry, FA 104112 (Nat. Arb. Forum Mar. 11, 2002). As stated above, Respondent allegedly chose
to register the domain name <netscapedesign.com> because of the
correlative nature of the domain name with Complainant’s NETSCAPE mark. Thus, Respondent had actual knowledge of
Complainant’s rights in the famous NETSCAPE mark at the time Respondent
registered the confusingly similar domain name and thus registered and used the
disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Yahoo!
Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of
the YAHOO! mark negated any plausible explanation for Respondent’s registration
of the <yahooventures.com> domain name); see also Digi Int’l v. DDI
Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal
presumption of bad faith, when Respondent reasonably should have been aware of
Complainant’s trademarks, actually or constructively”); see also
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir.
2002) ("Where an alleged infringer chooses a mark he knows to be similar
to another, one can infer an intent to confuse.").
Complainant has
established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <netscapedesign.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
October 11, 2004
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