America Online, Inc. v. Netscape Designs
Claim Number: FA0210000128678
PARTIES
Complainant
is America Online, Inc., Dulles, VA
(“Complainant”) represented by James R.
Davis, of Arent Fox Kintner Plotkin
& Kahn. Respondent is Netscape Designs, Oak Brook Terrace,
IL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <netscapedesigns.com>,
registered with AWRegistry Services.
PANEL
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.
Tyrus
R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on October 22, 2002; the Forum received a hard copy of the
Complaint on October 24, 2002.
On
October 22, 2002, AWRegistry Services confirmed by e-mail to the Forum that the
domain name <netscapedesigns.com>
is registered with AWRegistry Services and that Respondent is the current
registrant of the name. AWRegistry
Services has verified that Respondent is bound by the AWRegistry Services
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 28, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 18, 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 postmaster@netscapedesigns.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
December 6, 2002, 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
assertions:
Respondent’s
<netscapedesigns.com> domain name is confusingly similar to
Complainant’s registered NETSCAPE mark.
Respondent does not have any rights or legitimate
interests in the <netscapedesigns.com> domain
name.
Respondent registered and used the <netscapedesigns.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant, America Online, Inc., holds
numerous registrations for the NETSCAPE mark, including U.S. Reg. Nos.
2,027,552 and 2,082,141 (registered on the Principal Register of the United
States Patent and Trademark Office (“USPTO”) on December 31, 1996 and July 22,
1997, respectively). Complainant also holds a federal trademark application for
the NETSCAPE.COM mark, filed on October 6, 2000. Complainant uses these marks
in connection with with computer and Internet-related goods and services.
Complainant’s NETSCAPE service has over 48 million subscribers worldwide and is
one of the top-10 most-visited websites worldwide, generating millions of
dollars since its inception.
Respondent, Netscape Designs, registered
the <netscapedesigns.com> domain name June 21, 2002. Respondent has
not been authorized or licensed to use Complainant’s NETSCAPE mark for any
purpose. Respondent’s use of the disputed domain name consists of
providing, inter alia, online calanders, electronic mail services, and
various eCommerce services, all services also offered by Complainant. During a
phone conversation, Respondent informed Complainant that it was actually named
Equest, and had just recently began using the name Netscape Designs.
DISCUSSION
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.
Identical and/or Confusingly Similar
Complaint has established rights in its
distinctive NETSCAPE mark through registration on the Principal Register of the
USPTO along with widespread and continuous use of the mark in commerce
worldwide.
Respondent’s <netscapedesigns.com> domain name is confusingly similar to
Complainant’s NETSCAPE mark. The only difference between Respondent’s domain
name and the registered mark of Complainant is the addition of the top-level
domain “.com,” and the addition of the generic word “designs.” As top-level
domains are a required feature for each domain name, the “.com” in the disputed
domain name does not prevent a finding of confusing similarity. See Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic
top-level domain (gTLD) name ‘.com’ is . . . without legal significance since
use of a gTLD is required of domain name registrants"); see also Visit Am., Inc. v. Visit Am., FA 95093
(Nat. Arb. Forum Aug. 14, 2000) (finding that the “.com” is part of the
Internet address and does not add source identity significance).
The addition of the generic word
“designs” to the disputed domain name also fails to sufficiently differentiate
the disputed domain name from the mark. The dominant feature of the disputed
domain name remains Complainant’s distinctive NETSCAPE mark. See Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in
dispute contains the identical mark of Complainant combined with a generic word
or term); see also L.L. Bean, Inc.
v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that
combining the generic word “shop” with Complainant’s registered mark “llbean”
does not circumvent Complainant’s rights in the mark nor avoid the confusing
similarity aspect of the ICANN Policy).
As both Complainant and Respondent
operate in the same industry (e.g., providing electronic mail and
eCommerce services), confusion between the disputed domain name and
Complainant’s mark is even more likely, and the addition of a generic word is
not enough to overcome such confusion. See Vivid Video, Inc. v. Tennaro
a/k/a Vivid Revolution, FA 126646 (Nat. Arb. Forum Nov. 14, 2002) (finding
that any distinctiveness resulting from Respondent’s addition of a generic word
to Complainant’s mark in a domain name is less significant because Respondent
and Complainant operate in the same industry); see also Slep-Tone Entm't Corp. v. Sounds Choice Disc
Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (stating that
“likelihood of confusion is further increased by the fact that the Respondent
and [Complainant] operate within the same industry”).
Accordingly, the Panel finds that the <netscapedesigns.com> domain name
is confusingly similar to Complainant’s registered and distinctive NETSCAPE
family of marks under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant’s allegations that Respondent
has no rights or legitimate interests in the disputed domain name have gone
uncontested by Respondent. In such a situation, the Panel will accept all
reasonable assertions by Complainant as true. See Do the Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to
come forward to [contest complainant’s allegations] is tantamount to admitting
the truth of complainant’s assertion in this regard”); see also 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).
The Panel will also weigh Respondent’s
lack of a Response as evidence that it 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); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw
adverse inferences from Respondent’s failure to reply to the Complaint).
Respondent is using the <netscapedesigns.com> domain name to redirect Internet users to its
own competing website. Misdirecting Internet traffic by utilizing Complainant’s
registered mark, while commercially competing with the holder of the mark, does
not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i),
nor is it an example of legitimate noncommercial or fair use of a domain name
under Policy ¶ 4(c)(iii). Respondent is merely attempting to capitalize on the
goodwill associated with the registered and distinctive mark of Complainant to
gain additional Internet traffic for its own website. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide
offering of services in a respondent’s operation of web-site using a domain
name which is confusingly similar to the Complainant’s mark and for the same
business”); see also Toronto-Dominion Bank
v. Karpachev, 188 F.Supp.2d
110, 114 (D.
Mass. 2002) (finding that, because Respondent's sole purpose in selecting the
domain names was to cause confusion with Complainant's website and marks, it's
use of the names was not in connection with the offering of goods or services
or any other fair use); see also Chip Merch., Inc. v. Blue
Star Elec., D2000-0474
(WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly
similar to Complainant’s mark and that Respondent’s use of the domain names to
sell competing goods was illegitimate and not a bona fide offering of goods).
Respondent’s contact information
indicates that it is known as “Netscape Designs.” However, Complainant’s
uncontroverted statements allege that Respondent is actually “commonly known
by” the name Equest, and only recently began using the name “Netscape Designs.”
The Panel infers from this fact that Respondent used the name “Netscape
Designs,” which incorporates in its entirety Complainant’s distinctive and
registered NETSCAPE mark, in order to justify its registration of an infringing
domain name. This activity is insufficient to demonstrate that Respondent is or
ever was “commonly known by” the name
“Netscape Designs.” See RMO,
Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail"); 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).
By successfully demonstrating that
Respondent has no rights or legitimate interests in the disputed domain name
under Policy ¶ 4(c)(i)-(iii), Complainant shifts the burden of proof to
Respondent to produce evidence rebutting these assertions. See Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that
once Complainant asserts that Respondent has no rights or legitimate interests
in respect of the domain, the burden shifts to Respondent to provide credible
evidence that substantiates its claim of rights and legitimate interests in the
domain name); see also Clerical
Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28,
2000) (finding that under certain circumstances the mere assertion by
Complainant that Respondent has no right or legitimate interest is sufficient
to shift the burden of proof to Respondent to demonstrate that such a right or
legitimate interest does exist). As Respondent submitted no Response to the
Complaint, it fails to meet this burden.
Accordingly, the Panel finds that
Respondent does not have rights or legitimate interests in the <netscapedesigns.com> domain name
under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
The Policy lists four circumstances
evidencing bad faith registration and use of a domain name. The fourth example
listed states that bad faith registration and use of a disputed domain name is
evidenced if Respondent has, “intentionally attempted to attract, for
commercial gain, Internet users to [its] web site…by creating a likelihood of
confusion with the complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of your web site.” Given the distinctive nature of
Complainant’s mark, in light of the fact that Complainant’s NETSCAPE browser is
one of the two most popular web browsers in existence, Respondent could have
only registered the infringing <netscapedesigns.com>
domain name with an intent to
confuse Internet users as to the source or sponsorship of its website. In
fostering that likelihood of confusion in order to create an online presence
that commercially competed with Complainant’s on-line services, Respondent fell
within the ambit 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 was using 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 Cellular
One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding bad faith when
(1) the domain name contains the Complainant’s mark in its entirety, (2) the
mark is a coined word, well-known and in use prior to Respondent’s registration
of the domain name, and (3) Respondent fails to allege any good faith basis for
use of the domain name).
Accordingly, the Panel finds that
Respondent registered and used the <netscapedesigns.com>
domain name in bad faith, and Policy ¶ 4(a)(iii) is satisfied.
DECISION
Having established all three elements
under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <netscapedesigns.com> domain name
be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 17, 2002
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