America Online, Inc. v. Kevin Crothers
Claim Number: FA0204000112603
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”).
The
domain name at issue is <netscape.biz>,
registered with Network Solutions, Inc.
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.
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.
Transfer
of the domain name from Respondent to Complainant.
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.
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>.
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
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.
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.
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.
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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