NetZero, Inc. v My.com, Inc.
Claim Number: FA0110000100569
Complainant is NetZero, Inc., Westlake Village, CA (“Complainant”) represented by Steven C. Sereboff. Respondent is My.com, Inc., Seattle, WA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mynetzero.com>, registered with Network Solutions, Inc.
On November 30, 2001 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist. 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.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 12, 2001; the Forum received a hard copy of the Complaint on October 16, 2001.
On October 16, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <mynetzero.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 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 17, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 6, 2001 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 email@example.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.
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.
1. The contested domain name is confusingly similar to Complainant’s NETZERO trademark. The contested domain name is identical to Complainant’s MYNETZERO trademark. Through considerable advertising and market penetration, the NETZERO mark has become famous and the MYNETZERO mark has become very well known.
2. Respondent has no rights or legitimate interests in respect of the domain name that is the subject of the complaint.
(i.) Respondent does not currently use, and has no demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
(ii.) Respondent (as an individual, business, or other organization) has never been commonly known by the domain name.
(iii.) The contested domain name was registered over 4 years after Complainant began using the NETZERO trademark. By the time the contested domain name was registered, Complainant had over 1.5 million users and was famous for its Internet access service.
(iv.) There is no legitimate use for the contested domain name except in conjunction with the business of Complainant. Because of the worldwide fame of the NETZERO trademark, only Complainant has a legitimate reason to include the NETZERO trademark in a domain name.
(v.) The contested domain name was registered at a time when many Internet companies began offering personalized pages. The domain name <mynetzero.com> was clearly registered with the intention of capitalizing on the public’s expectations that Complainant would offer a personalized service at <mynetzero.com>, and the Respondent therefore clearly intended to interfere with Complainant’s business.
3. The domain name was registered and is being used in bad faith. ICANN Rule 3(b)(ix)(3); ICANN Policy ¶ 4(a)(iii).
(i.) Because only Complainant may legitimately use the contested domain name, it is clear that Respondent acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant or to a competitor of Complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name.
(ii.) The contested domain name was registered in order to prevent Complainant from reflecting the mark in a corresponding domain name and so far has succeeded in this goal.
(iii.) The contested domain name is currently not in use, <mynetzero.com> does not resolve to a web page.
(iv.) Respondent has engaged in a pattern of this kind of behavior. Respondent owns at least twelve domain names which comprise a famous trademark prepended with “my,” including: <myibm.com>, <myimac.com>, <mycostco.com>, <myjfax.com>, <myplaystation.com>, <mydirecttv.com>, <mytivo.com>, <mynsi.com>, <myntserver.net>, <myask.com>, <myefax.com>, <myhotmail.com> and <mypcworld.com>.
No Response was received.
Complainant NetZero is a leading ISP in the US and Canada. The NetZero Internet access service is provided in almost all areas of the US and Canada, and Complainant has millions of users.
Complainant uses the trademark MyNetZero in conjunction with a portal/start page. The MyNetZero start page is the first Web page seen by the millions of NetZero users each time they sign on to the NetZero Internet access service.
NetZero owns the following relevant registrations and applications:
1. US Trademark Registration No. 2,382,595 for NETZERO. Goods: Downloadable computer software for accessing a global computer network (first use October 16, 1998).
2. US Trademark Registration No. 2,304,296 for NETZERO. Services: Providing multiple-user access to a global computer information network (first use May 25, 1997).
3. US Trademark Application No. 78/048,791 filed February 16, 2001 (approved for publication) for MYNETZERO. Goods and services: computer services, namely, creating indexes of information, sites, and other resources available on computer networks for others; searching and retrieving information, sites, and other resources available on computer networks; providing an online link to news, weather, sports, current events and reference materials; computer services, namely, providing hyperlinks to the sites of third parties for obtaining data and information over a global computer network.
4. NetZero has registered the NETZERO mark in Australia, Canada, Chile, China, Colombia, Hong Kong, Israel, Japan, Korea, Mexico, New Zealand, Singapore and Taiwan.
Respondent registered <mynetzero.com> on February 21, 2000, and no website has been used in connection with the domain name.
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.
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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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
Complainant has established rights in the famous NETZERO mark through its extensive and continuous use, as well as its numerous United States and foreign registrations. Furthermore, the disputed domain name contains the generic word "my" in front of Complainant’s NETZERO mark. The addition of a generic word to Complainant’s mark makes the disputed domain name confusingly similar to Complainant’s NETZERO mark. See ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (finding that the "domain name MYSPORTSCENTER.COM registered by Respondent is confusingly similar to Complainant’s SportsCenter mark…"); see also Infospace.com, Inc. v. Delighters, Inc., D2000-0068 (WIPO May 1, 2000) (finding that the domain name <myinfospace.com> is confusingly similar to Complainant’s mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward to demonstrate it has rights or legitimate interests in the <mynetzero.com> domain name. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) ("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint").
Furthermore, there is a presumption that Respondent has no rights or legitimate interests with respect to a disputed domain name where Respondent fails to submit a Response. 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’s passive holding of the <mynetzero.com> domain name does not demonstrate a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See American Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name); see also Bloomberg L.P. v. Sandhu, FA 96261 (Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way).
There is no evidence in the record, and Respondent has not come forward to establish that it is commonly known by the <mynetzero.com> domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).
Furthermore, there is no evidence that demonstrates Respondent is making a legitimate noncommercial, or fair use of the <mynetzero.com> domain name pursuant to Policy ¶ 4(c)(iii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names, and that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
When viewed in light of Complainant’s well-established NETZERO mark, Respondent's passive holding of the confusingly similar domain name is evidence of bad faith and, therefore, satisfies Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Lastly, Complainant has shown that Respondent has engaged in a pattern of registering domain names incorporating famous trademarks with the term “my.” Such activity may imply bad faith use and registration under Policy ¶ 4(b)(ii). See General Elec. Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that the Respondent engaged in a pattern of conduct, by registering over fifty domain names such as <amazondirect.com> and <lycosdirect.com>, and intended to prevent holders from using their marks in corresponding domain names).
Therefore, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <mynetzero.com> be transferred from Respondent to Complainants.
James P. Buchele, Panelist
Dated: December 7, 2001
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