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Generic Top Level Domain Name (gTLD) Decisions |
America Online, Inc. v. Zheliazko
Vodenicharov
Claim
Number: FA0410000349041
Complainant is America Online, Inc. (“Complainant”), represented
by James R. Davis, of Arent Fox PLLC, 1050
Connecticut Avenue, NW, Washington, DC 20036.
Respondent is Zheliazko
Vodenicharov, Chaika, bl. 68/D ap. 85, Varna, 9005, BULGARIA (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <www-netscape.net> and
<ntscape.net>, registered with Go Daddy Software, Inc.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on October
22, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on October 27, 2004.
On
October 22, 2004, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <www-netscape.net> and <ntscape.net>
are registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the names. Go Daddy Software, Inc. has
verified that Respondent
is bound by the Go Daddy Software, 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
October 27, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of November 16, 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@www-netscape.net and
postmaster@ntscape.net by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
November 22, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed the
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <www-netscape.net> and
<ntscape.net> domain names are confusingly similar to Complainant’s
NETSCAPE mark.
2. Respondent does not have any rights or
legitimate interests in the <www-netscape.net> or
<ntscape.net> domain names.
3. Respondent registered and used the <www-netscape.net>
and <ntscape.net> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
America Online, Inc., and its affiliated entity, Netscape Communications Corp.,
hold numerous trademark registrations
with the United States Patent and
Trademark Office (“USPTO”) for the NETSCAPE mark, including U.S. Reg. Nos.
2,027,552 (issued December
31, 1996) and 2,082,141 (issued July 22, 1997). Complainant uses its NETSCAPE mark in
connection with providing various Internet services. Since 1996, the distinctive NETSCAPE mark has been used
continuously and extensively in interstate and international commerce in
connection
with the advertising and sale of the NETSCAPE services.
On December 13,
2003 and January 11, 2004, Respondent registered the disputed domain
names. Respondent is using each domain
name to redirect users to Respondent’s own commercial websites. These websites feature links to third-party
commercial Internet service websites.
Respondent’s commercial websites also feature numerous pop-up
advertisements.
Complainant has
attempted to contact Respondent several times demanding immediate transfer of
the disputed domain names, but has yet
to receive any response from Respondent.
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.
Complainant has
established that it has rights in the NETSCAPE mark through registration with
the USPTO and through the continuous
use of the mark in international commerce
since 1996. See Men’s Wearhouse,
Inc. v. Wick, FA 117861
(Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks
hold a presumption that they are inherently
distinctive and have acquired
secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
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).
Respondent’s
disputed domain names are confusingly similar to Complainant’s NETSCAPE
mark. But for the “www” prefix and the
hypen, Respondent’s <www-netscape.net> domain name is identical to
the NETSCAPE mark. The addition of a
prefix, such as “www” or a hypen, does not negate the confusing similarity of
Respondent’s domain name pursuant
to Policy ¶ 4(a)(i). See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1,
2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is
confusingly similar
to Complainant’s registered trademark BANK OF AMERICA
because it “takes advantage of a typing error (eliminating the period between
the www and the domain name) that users commonly make when searching on the
Internet”); see also Marie Claire Album v. Blakely, D2002-1015 (WIPO
Dec. 23, 2002) (holding that the letters "www" are not distinct in
the "Internet world" and
thus Respondent 's
<wwwmarieclaire.com> domain name is confusingly similar to Complainant's
MARIE CLAIRE trademark); see also
Teleplace, Inc. v. De Oliveira, FA 95835 (Nat. Arb. Forum Dec. 4, 2000)
(finding that the domain names <teleplace.org>, <tele-place.com>,
and <theteleplace.com>
are confusingly similar to Complainant’s TELEPLACE
trademark); see also Nintendo of
Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000)
(finding <game-boy.com> identical and confusingly similar Complainant’s
GAME BOY mark, even
though the domain name is a combination of two descriptive
words divided by a hyphen).
Additionally,
Respondent’s <ntscape.net> domain name is merely a typographical
misspelling of the NETSCAPE mark. Such
typographical misspellings are considered to be confusingly similar with
regards to the original mark, as they purposefully deviate
slightly from the
original mark to take advantage of typing errors. See Bank of Am.
Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that
Respondent’s domain name <wwwbankofamerica.com> is confusingly similar
to
Complainant’s registered trademark BANK OF AMERICA because it “takes advantage
of a typing error (eliminating the period between
the www and the domain name)
that users commonly make when searching on the Internet”). See Compaq Info. Techs. Group, L.P. v.
Seocho, FA 103879 (Nat. Arb. Forum
Feb. 25, 2002) (finding that the domain name <compq.com> is
confusingly similar to Complainant’s COMPAQ mark because the omission of the
letter “a” in the domain
name does not significantly change the overall
impression of the mark); see
also Hewlett-Packard Co. v. Zuccarini,
FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name
<hewlitpackard.com> to be identical or confusingly similar
to
Complainant’s HEWLETT-PACKARD mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed
to respond to the Complaint. Therefore,
the Panel accepts all reasonable allegations set forth in the Complaint as
true. See Am.
Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003)
(finding that the failure to challenge a complainant’s allegations allows a
panel to accept
all of the complainant’s reasonable allegations and inferences
as true); see also Wells
Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003)
(finding that the failure to respond to a complaint allows a panel to make
reasonable inferences
in favor of a complainant and accept the complainant’s
allegations as true).
In addition, the
Panel construes Respondent’s failure to respond as an admission that Respondent
lacks rights and legitimate interests
in the disputed domain names. 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.”)
Respondent is
using the disputed domain names to redirect Internet users to Respondent’s
commercial website that provides links to
various websites and services, many
of which compete directly with the services provided by Complainant, as well as
numerous pop-up
advertisements.
Respondent’s use of domain names confusingly similar to Complainant’s
mark is not a use in connection with a bona fide offering of
goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the
domain names pursuant to Policy ¶
4(c)(iii).
By registering domain names featuring common misspellings of a famous
mark, Respondent is engaging in typosquatting and lacks any
rights or
legitimate interests to the disputed domain names. See Diners Club Int’l Ltd. v. Domain Admin******It's all in
the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that
Respondent’s <wwwdinersclub.com> domain name, a typosquatted version of
Complainant’s DINERS CLUB mark, was evidence in and of itself that Respondent
lacks rights
or legitimate interests in the disputed domain name vis á vis
Complainant); see also Nat’l Ass’n of
Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21,
2003) (“Typosquatting as a means of redirecting consumers against their will to
another site, does not
qualify as a bona fide offering of goods or services,
whatever may be the goods or services offered at that site.”)
Furthermore,
Respondent’s use of the disputed domain names to divert Internet users to
Respondent’s commercial websites tends to establish
a lack of rights or
legitimate interests. See Wells
Fargo & Co. v. Party Night Inc. and Carrington, FA 144647 (Nat. Arb.
Forum March 18, 2003) (holding that Respondent’s use
of confusingly similar derivatives of Complainant’s WELLS FARGO mark to divert
Internet users to websites featuring
pop-up advertisements was not a bona fide
offering of goods or services); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000)
(finding no rights or legitimate interests in the famous MSNBC mark where
Respondent attempted to
profit using Complainant’s mark by redirecting Internet
traffic to its own website).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered the disputed domain names primarily for the purpose of taking
advantage of Complainant’s goodwill by redirecting
Internet traffic intended
for Complainant to Respondent’s commercial website. Such activity is conclusive evidence of bad faith registration
and use on the part of Respondent pursuant to Policy ¶ 4(b)(iv). See 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)); see also State
Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000)
(finding bad faith where Respondent registered the domain name
<bigtex.net> to infringe
on Complainant’s goodwill and attract Internet
users to Respondent’s website).
Additionally,
Respondent registered domain names that are commonly misspelled variations of
Complainant’s famous mark. Such activity
is often classified as “typosquatting”
and is evidence of Respondent’s bad faith registration and use of the disputed
domain names
pursuant to Policy ¶ 4(c)(iii). See Canadian Tire Corp.,
Ltd. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232
(WIPO May 22, 2003) (holding that “[t]he absence of a dot between the
‘www’ and ‘canadiantire.com’ [in the
<wwwcanadiantire.com> domain name is] likely to confuse Internet users,
encourage them to access
Respondent’s site” and evidenced bad faith
registration and use of the domain name); see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini,
D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling
of words with intent to intercept and siphon off
traffic from its intended
destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of
itself evidence of bad faith”).
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 relief shall be GRANTED.
Accordingly, it
is Ordered that the <www-netscape.net> and <ntscape.net>
domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
December 6, 2004
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