DECISION

 

AltaVista Company v. Astavista.com

Claim Number: FA0007000095251

 

PARTIES

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

 

PROCEDURAL HISTORY

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.

 

RELIEF SOUGHT

 

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

 

PARTIES’ CONTENTIONS

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]

 

FINDINGS

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).

 

DISCUSSION

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.

 

Admissions

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.

 

Procedural Status

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.

 

DECISION

 

The domain name should be immediately transferred to Complainant.

 

 

M. KELLY TILLERY, ESQUIRE, ARBITRATOR

 

August 17, 2000

 

 

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