DECISION

America Online, Inc. v. The Computer Shop

Claim Number:  FA0408000318032

PARTIES

Complainant is America Online, Inc. (“Complainant”), represented by James R. Davis, of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036.  Respondent is The Computer Shop (“Respondent”), 200 Manitoba Street, Unit 4, Bracebridge, ON, Canada P1L2E2.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <netscapedesign.com>, registered with Tucows Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her 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 August 25, 2004; the Forum received a hard copy of the Complaint on August 27, 2004.

On August 26, 2004, Tucows Inc. confirmed by e-mail to the Forum that the domain name <netscapedesign.com> is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 August 30, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 20, 2004 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@netscapedesign.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 September 27, 2004, 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:

1. Respondent’s <netscapedesign.com> domain name is confusingly similar to Complainant’s NETSCAPE mark.

2. Respondent does not have any rights or legitimate interests in the <netscapedesign.com> domain name.

3. Respondent registered and used the <netscapedesign.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant America Online, Inc., along with its related company Netscape Communications Corp., owns numerous trademark registrations for its NETSCAPE name and mark, including U.S. Reg. Nos. 2,027,552 (issued Dec. 31, 1996, in connection with “computer software for use in the transfer of information and the conduct of commercial transactions across local, national, and world-wide information networks”) and 2,082,141 (issued July 22, 1997, in connection with “publications, namely manuals, magazines, newsletters, house organs, and course materials relating to computing, communications, networks, computer research, and information technology”).

Each year approximately 19.5 million unique visitors use the NETSCAPE service, which has become one of the foremost Internet services.

Respondent registered the disputed domain name <netscapedesign.com> on May 17, 2001.  Subsequently, Complainant and Respondent engaged in a telephone conversation in which Respondent stated that the disputed domain name was meant to play off of Complainant’s NETSCAPE mark.  Respondent uses the disputed domain name to provide website design services.

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 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 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

Under Policy ¶ 4(a)(i), a complainant may establish rights in a mark by providing evidence of its registration of the mark with an appropriate governmental authority.  Complainant has provided evidence that it owns two U.S. registrations for the NETSCAPE mark.  Therefore, Complainant has established rights in the NETSCAPE mark pursuant to Policy ¶ 4(a)(i).  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the United States Patent and Trademark Office creates a presumption of rights in a mark).

A domain name that incorporates another’s mark, and merely adds a single generic or descriptive term, has been found to be confusingly similar to such marks under the Policy.  In the instant case, the disputed domain name contains Complainant’s NETSCAPE mark in its entirety, and has merely included the term “design.”  In a dispute regarding nearly an identical domain name as the one in dispute here, the panel found that the domain name <netscapedesigns.com> was confusingly similar to the NETSCAPE mark.  Am. Online, Inc. v. Netscape Designs, FA 128678 (Nat. Arb. Forum Dec. 17, 2002).  Consistent with prior decisions under the Policy, the Panel finds that the domain name <netscapedesign.com> is confusingly similar to Complainant’s NETSCAPE mark pursuant to Policy ¶ 4(a)(i).  See Novell, Inc. v. Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the domain name <novellsolutions.com> confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” to the mark because even though “the word 'solutions' is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL.”); see also Fidelity Int’l Ltd. v. Florida760, FA 203903 (Nat. Arb. Forum Dec. 27, 2003) (“The Panel finds that the <fidelity-international.biz> domain name is confusingly similar to the FIDELITY mark owned by Complainant because the domain name fully incorporates the mark and merely adds the generic term 'international' and generic top-level domain '.biz' to the mark.”); see also Am. Int’l Group, Inc. v. Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (“Respondent's <aigassurance.com> domain name is confusingly similar to Complainant's AIG mark because the disputed domain name appropriates Complainant's entire mark and adds the generic or descriptive term 'assurance' to the end of the mark. The addition of this generic or descriptive term does not significantly differentiate the domain name from the mark under Policy ¶ 4(a)(i) because the term 'assurance' relates directly to Complainant's business of providing insurance services.”).

Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent’s failure to respond may be construed as an admission that it lacks rights and 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 Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29, 2004) (“The failure of Respondent to respond to the Complaint functions both as an implicit admission that Respondent lacks rights to and legitimate interests in the domain names, as well as a presumption that Complainant’s reasonable allegations are true.”).

Similarly, the lack of a Response also allows the Panel to accept all reasonable assertions set forth in the Complaint as true.  See Vert. Solutions Mgmt., Inc. v. Webnet-marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant's allegations are true unless clearly contradicted by the evidence).

Without the benefit of a Response, the Panel is forced to examine the evidence within the available record to determine whether Respondent is commonly known by the domain name <netscapedesign.com> pursuant to Policy ¶ 4(c)(ii).  There is no assertion of such in the record.  The WHOIS registration information lists the registrant’s name as “The Computer Store,” and not the disputed domain name.  Furthermore, although there is a printout of Respondent’s website located at the disputed domain name, such evidence does not adequately provide information to the Panel that would suggest that Respodent is commonly known by the domain name.  Such a printout simply indicates that Respondent maintains a website at the disputed domain name.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

Panels have consistently found that it is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii) for a domain name registrant to capitalize on the goodwill surrounding a third party’s mark by intentionally diverting Internet users away from the mark’s owner and towards the registrant’s unrelated commercial website.  In the instant case, Complainant has asserted that, in a telephone conversation with Respondent, Respondent acknowledged that it chose the domain name <netscapedesign.com> in order to play off of Complainant’s NETSCAPE mark.  Respondent subsequently used the domain name to direct Internet users to its website design services, which is the type of situation that previous panels have addressed.  Therefore, the Panel may find that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant Policy ¶ 4(c)(iii).  See Bank of Am. Corp. v. Northwest Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that Respondent’s diversionary use of Complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also U.S. Fran. Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).

Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Policy ¶ 4(b)(iv) is violated when a domain name registrant intentionally attempts to attract Internet users to its website for commercial gain by creating a likelihood of confusion with a complainant’s mark.  Here, Respondent registered a domain name that is confusingly similar to Complainant’s NETSCAPE mark.  Respondent has also failed to provide the Panel with any evidence that could refute the reasonable assertions made by Complainant.  In addition, Respodent has admitted in a telephone conversation with Complainant that it has used the domain name to capitalize on Complainant’s mark in order to attract Internet users to its commercial website.  Therefore, Respondent is in violation 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 used 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 Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).

A panel has stated that Complainant’s NETSCAPE mark has “gained fame and notoriety.” Am. Online, Inc. v. Henry, FA 104112 (Nat. Arb. Forum Mar. 11, 2002).  As stated above, Respondent allegedly chose to register the domain name <netscapedesign.com> because of the correlative nature of the domain name with Complainant’s NETSCAPE mark.  Thus, Respondent had actual knowledge of Complainant’s rights in the famous NETSCAPE mark at the time Respondent registered the confusingly similar domain name and thus registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse.").

Complainant has established Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <netscapedesign.com> domain name be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated:  October 11, 2004

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