America Online, Inc. v. J.P. Henry
Claim Number: FA0201000104112
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.
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.
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 firstname.lastname@example.org 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
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.
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.”
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.
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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