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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AltaVista Company v Dotsan
Case No. D2002-0779
1. The Parties
The Complainant is AltaVista Company of Palo Alto, California, United States of America.
The Respondent is Dotsan of Mumbai, India.
2. The Domain Name and Register
The Domain Name the subject of the Complaint is <altaviista.com> (the "Domain Name").
The Registrar with which the Domain Name is registered is BulkRegister.com of 10 East Baltimore Street, Suite 1500, Baltimore, Maryland 21202, United States of America (the "Registrar").
3. Procedural History
The World Intellectual Property Organization Center (the "Center") received the Complaint by e-mail on August 19, 2002, and subsequently by hard copy on August 22, 2002. An Acknowledgement of Receipt of Complaint was sent by the Center on August 21, 2002.
On August 21, 2002, a Request for Registrar Verification was transmitted to the Registrar requesting it to:
(1) confirm that a copy of the Complaint was sent to the Registrar by the Complainant as required by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), paragraph 4(b);
(2) confirm that the Domain Name is registered with the Registrar;
(3) confirm that the Respondent is the current registrant of the Domain Name;
(4) provide full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) that are available in the Registrar’s WHOIS database for the Domain Name registrant, technical contact, administrative contact and billing contact, for the Domain Name;
(5) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") applies to the Domain Name;
(6) confirm that the Domain Name would remain locked during the pending administrative proceeding;
(7) indicate the specific language of the registration agreement as used by the registrant for the Domain Name; and
(8) indicate whether the Domain Name registrant has submitted in its Registration Agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the Domain Name.
On August 21, 2002, the Registrar confirmed by reply e-mail that the Domain Name is registered with it and that the Respondent is the current registrant of the Domain Name. The Registrar also confirmed the Respondent’s address and that the Administrative and Technical Contact is listed as "R. S. Potdar, Dotsan," providing e-mail and telephone details. The Registrar also forwarded the requested WHOIS details and confirmed that the Policy applies to the Domain Name. The Registrar also confirmed that the language of the registration agreement is English.
The Registrar confirmed that the Respondent has submitted in its registration agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the Domain Names.
On August 26, 2002, the Center completed a Formal Requirements Compliance Checklist, verifying that the Complaint satisfied the formal requirements of the Policy. It is apparent that there was such compliance.
On August 27, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the "Complaint Notification") and the Complaint (without annexures) was transmitted by e-mail to the Respondent. The Complaint Notification, the Complaint and the annexed documentation were also forwarded to the Respondent by courier.
As no response was filed within the time specified by paragraph 5 of the Rules, on September 18, 2002, the Center gave the Respondent formal Notification of Respondent Default.
The Complainant elected to have the dispute determined by a single-member Administrative Panel in accordance with paragraph 3(b)(iv) of the Rules.
The Panel appointed consists of Dr Annabelle Bennett SC (the "Panelist"). On September 26, 2002, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from the Panelist, the Center notified the parties of the appointment of the Panelist.
On October 9, 2002, having considered the Complaint and the annexures provided by the Complainant, the Panelist issued Procedural Order No. 1 requesting clarification of certain matters relating to the Complainant’s assertion as to its ownership of certain trade marks. The Complainant responded to the Procedural Order and the Center forwarded a response to the Panelist on October 10, 2002.
4. Factual Background
The following facts are asserted by the Complainant in the Complaint and are not disputed. The Panel finds these facts are proved.
The Complainant is an Internet search company which provides Internet search services and sells Internet and document search software through its well known web site at the domain name <altavista.com>.
The Complainant’s predecessor in interest, Digital Equipment Corporation, began using the mark ALTAVISTA to identify Internet search engine services and software in May 1996. The Complainant received a valid assignment conveying all rights and interests in the mark and the goodwill associated with the mark and continues to use the mark to identify its Internet services and search software.
The Complainant has invested extensive resources to publicise the mark ALTAVISTA and has widely dispersed the mark in a manner designed to ensure its automatic identification in the minds of consumers with the Complainant’s software and services.
The Complainant owns trade mark registrations for the mark ALTAVISTA in the United States of America, the particulars of which are as follows:
Goods and Services
August 11, 1998
Computer hardware; computer software for use with local area, wide area, and/or global computer communications networks, namely, searching for, compiling, indexing, and organizing information, providing security for communications, electronic mail, and facilitating workgroup communications; computer software for searching for, compiling, indexing, and organizing information within individual work stations or personal computers, in class 9.
Printed matter, namely, books, manuals, magazines, drawings, brochures and leaflets on the subject of computers, computer programs, computer peripherals, the computer industry and related fields; user's guides, printed forms, workbooks, training manuals, user manuals and data sheets for use with computer programs, computers and their application, in class 16.
Educational services in the data and word processing field, including; organizing, sponsoring and conducting meetings, conferences, lectures, workshops, seminars and symposia on data education and training in the design, development, installation, use, maintenance and repair of computer programs and data and word processing equipment and general purpose computers, in class 41.
March 25, 1997
Computer services, namely, providing a directory on computer communications networks that organizes and indexes widespread web sites, news groups and other resources into easy-to-find topic areas permitting customers to acess them, and providing demographic data, in class 42.
The Complainant also owns a European Community Trade Mark registration for the mark ALTAVISTA which was granted in February 1999 (Registration No. 000258954). In addition, the Complainant is the applicant for registration of the mark ALTAVISTA in India in respect of goods being computer hardware and computer software (Application No. 713271).
The Respondent operates a web site located at the Domain Name. The web site features a "search box" function and indexed web links that mimic the format of the Complainant’s well known web site, but, unlike the Complainant’s web site, these features search for and link to gambling, pornography and other content. In particular, the Respondent’s web site features an option designated "hot topics," which includes the topic "Sex." If selected, that topic directs the user to a summary of possible pornographic sites.
As of August 11, 2002, the Respondent’s web site was formatted in a manner that imitates the Complainant’s web site, including a search engine "box" appearing at the top of the web page, indexed web links and a separate arrangement of specialised links listed vertically and horizontally.
5. Parties’ Assertions
A. The Complainant
The Complainant asserts that the Domain Name should be transferred to it as it is able to satisfy all three conditions provided in paragraph 4(a) of the Policy.
The Complainant asserts that the Domain Name is identical to or confusingly similar to the trade mark ALTAVISTA, in which the Complainant has rights. The registration numbers of the Complainant’s trade marks and the goods and services in respect of which they are registered in the United States of America are detailed above.
The Complainant observes that the only difference between the Complainant’s trade mark ALTAVISTA and the relevant part of the Domain Name is the additional character "i" which is included in the Domain Name. The Complainant asserts that the addition of a single character to an established trade mark is not sufficient to avoid a finding of confusing similarity under paragraph 4(a)(i) of the Policy.
The Complainant asserts that when users encounter the Domain Name on the Internet they naturally will think of the Complainant, which has a wide ranging presence on the Internet, because of the confusingly similar appearance of the two marks.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name and relies upon the following assertions:
(1) The Respondent is not a licensee of the Complainant, nor is it otherwise authorised to use the Complainant’s trade mark.
(2) Upon information and belief, the Respondent has not used the Domain Name for any business purpose other than attracting web traffic based upon the provision of gambling, pornography and other content since its registration of the Domain Name in October 2001.
(3) Upon information and belief, the Respondent does not use the Domain Name, or any other known permutation of the Domain Name, as its business name in any way other than in connection with the provision of gambling and pornographic content on the Internet, and there is no evidence that it did so prior to its registration and use of the Domain Name.
(4) There is no indication that the Respondent is commonly known as "altaviista."
The Complainant contends that the Respondent registered and is using the Domain Name in bad faith and relies upon the following assertions:
(1) The Respondent had constructive knowledge of Complainant’s trade mark rights by virtue of the Complainant’s ownership of its European Community Trade Mark registration and the Complainant’s trade mark application in India.
(2) The Respondent has failed to make good faith use of the Domain Name since it was registered. The Complainant refers to a number of cases as authority for the proposition that the redirection or attempted redirection of Internet users to gambling or like web sites may constitute bad faith use under paragraphs 4(a)(iii) and 4(b)(iv) of the Policy: Dow Jones & Company, Inc. and Dow Jones, L.P. v Powerclick, Inc., WIPO Case No. D2000-1259; Microsoft Corporation v Stoneybrook, WIPO Case No. D2000-1274.
(3) The Respondent’s bad faith is further demonstrated by the fact that the Respondent created a domain name that is similar to the Complainant’s domain name <altavista.com>, save for one letter, and the fact that the Respondent’s web site mimics the look and feel of the Complainant’s web site.
(4) The Respondent has not ceased such behavior, despite repeated written requests which the Complainant asserts it has made requesting the Respondent to cease and desist from use of the Domain Name. In this regard, the Complainant refers to Home Interiors & Gifts, Inc. v Home Interiors, WIPO Case No. D2000-0010.
(5) As a result, the Domain Name has been registered and is being used in bad faith as required by Paragraph 4(a)(iii) of the Policy.
B. The Respondent
No Response was received from the Respondent.
6. Discussion and Findings
Identical or Confusingly Similar Domain Name (paragraph 4(a)(i)).
The Domain Name in issue is <altaviista.com>. The relevant part of the Domain Name is "altaviista." The Domain Name incorporates the trade mark ALTAVISTA, the only difference being the inclusion in the Domain Name of an additional character "i". The Panel is satisfied that the Domain Name is confusingly similar to the trade mark ALTAVISTA which is registered in the name of the Complainant.
Respondent’s Rights or Legitimate Interests in the Domain Name (paragraph 4(a)(ii)):
The Complainant submitted evidence of its registration of the ALTAVISTA mark and its (and its predecessor in interest’s) use of the mark since May 1996, in relation to Internet search engine services and software. The Panel finds that the Complainant’s web site and the ALTAVISTA mark have become well known as a result of such use.
The Complainant also submitted evidence in support of its assertion that the Respondent can have no legitimate rights or interests in respect of the Domain Name pursuant to paragraph 4(a)(ii) of the Policy. Based on the evidence and the assertions of the Complainant, which were unchallenged by the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
Domain Name Registered and Used in Bad Faith (paragraph 4(a)(iii)):
For the Complainant to satisfy this requirement it must prove bad faith in registration as well as bad faith in use of the Domain Name. Bad faith in registration alone is an insufficient ground for obtaining a remedy under the Policy: Telstra Corporation Limited v Nuclear Mushrooms, WIPO Case No. D2000-0003.
The grounds advanced by the Complainant in support of its assertion that the Respondent has both registered and used the Domain Name in bad faith are summarised in paragraph 5A above, and the facts supporting these grounds are detailed in paragraph 4 above.
The Panel takes all these matters into account and, in the absence of any response from the Respondent, finds that the Complainant has established that the Domain Name has been registered and is being used in bad faith.
The Panel decides that:
(i) the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith by the Respondent.
Accordingly, the Panel decides that the Complainant has proven each of the elements in paragraph 4(a) of the Policy. The Panel therefore requires that the Domain Name <altaviista.com> be transferred to the Complainant, this being the remedy sought by the Complainant.
Dr Annabelle Bennett SC
Dated: October 11, 2002