LeitsätzlichesEin weiterer Fall der "Vertipper"-Reihe: Auch die WIPO-Schiedsrichter halten die Registrierung von Vertipper-Domains ohne eigene Rechte an der Bezeichnung für rechtswidrig.
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fall Nummer: D2002-0934
Entscheidung vom 29. November 2002
1. The Parties
The Complainant in this administrative proceeding is Alta Vista ..., USA.
The Respondent in this administrative proceeding is Amjad K., an individual of Karachi, Pakistan.
2. The Domain Name and Registrar
The domain name in dispute is <altavissta.com> (hereinafter the "Domain Name").
The registrar with which the Domain Name is registered is eNom Inc., email info@eNom.com (hereinafter the "Registrar") of Redmond, WA, USA.
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by hard copy on October 9, 2002.
On October 10, 2002, the Center sent an Acknowledgement of Receipt of Complaint to the Complainant. On October 10, 2002, the Center sent a Request for Registrar Verification to the Registrar. On October 12, 2002, the Registrar responded confirming that it is the registrar of the Domain Name and that the Respondent is the current registrant of the Domain Name, providing details of the Administrative Contact and Technical Contact for the registration, confirming that the Policy is in effect in respect of the registration that the language of the service agreement is English, and that the registration was active at that time.
In accordance with paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and paragraph 5 of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules"), the Center reviewed the Complaint to ascertain whether it satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules and the Supplemental Rules and that payment in the required amount had been made by the Complainant.
On October 16, 2002, the Center sent a Complaint Deficiency Notification to the Complainant requesting confirmation whether "www" is included in the domain name or whether the disputed domain name is <altavissta.com>, and further requesting an electronic version of the Complaint as set out in Para 3(b) of the Rules.
On October 16, 2002, the Complainant responded confirming the disputed domain is <altavissta.com> and attaching an electronic version of the Complaint.
On October 18, 2002, the Center sent a Notification of Complaint and Commencement of Administrative Proceedings to the Respondent. The Notification was sent to the Respondent by courier (with enclosures) and by email (Complaint without attachments). A copy of the Notification was sent to the authorised representative of the Complainant by email. Further copies of the Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to the Registrar by email (without enclosures).
The Notification of Complaint and Commencement of Administrative Proceedings advised the Respondent that, inter alia, the Administrative Proceedings had commenced on October 18, 2002, and that the Respondent was required to submit a response to the Center on or before November 7, 2002.
The Respondent did not submit a Response.
On November 8, 2002, the Center sent a Notification of Respondent Default to the Respondent and the Complainant with a copy to the Registrar by email.
On November 14, 2002, after having received a Statement of Acceptance and Declaration of Impartiality from the sole member Administrative Panel in accordance with paragraph 7 of the Rules, the Center proceeded to appoint Charters Macdonald-Brown as the sole Administrative Panel.
In the view of the Administrative Panel, proper procedures were followed and the Administrative Panel was properly constituted.
4. Factual Background
The Complainant claims that its predecessor-in-title commenced using the mark ALTA VISTA to identify Internet search engine services and software in May 1996, and that the Complainant received a valid assignment conveying rights in the mark ALTA VISTA and the goodwill associated with the ALTA VISTA mark. A copy of the assignment was not provided. The Complainant continues to use the mark ALTA VISTA to identify its internet services and search software.
The Complainant also claims to have invested extensive resources to publicise the mark ALTA VISTA and has widely dispersed the ALTA VISTA mark in a manner designed to ensure its automatic identification in the minds of consumers with the Complainant's software and services. No evidence of the investment or customer recognition was provided.
The Complainant owns US trade mark registrations for the mark ALTA VISTA with registration numbers 2181100 and 2047808. The Complainant also owns the registration for the mark ALTA VISTA with registration number 135542 in Pakistan, the country in which the Respondent is located. Copies of these trade mark registrations were provided.
The Respondent is the current registrant of the Domain Name. The Domain Name was created on June 26, 2001. The Respondent's website provides internet services and search software.
5. Parties' Contentions
The Complainant claims that the Domain Name is confusingly similar to the Complainant's mark ALTA VISTA as required by paragraph 4(a)(i) of the Policy. It is noted that the only difference between the two names is the addition of the extra "s" in the Domain Name. The Complainant refers the Administrative Panel to a number of cases: Morrison & Foerster, LLP v. Brian Wick and American Distribution Systems, Inc (NAF Case No. 94380); Bama Rags, Inc v. John Zuccarini (NAF Case No. 94381); and Bama Rags, Inc v. John Zuccarini d/b/a (Cupcake Confidential) (NAF Case No. 94380).
The Complainant submits that the Respondent is not its licensee and is not otherwise authorised to use the Complainant's ALTA VISTA mark. The Respondent is not commonly known as ALTA VISTA. The Complainant also refers to the fact that the Respondent's website involves the provision of gambling and pornographic content on the internet.
In relation to bad faith, the Complainant states that the Respondent had constructive knowledge of the Complainant's trade mark rights as a result of its ownership of European Community Trade Mark (registration number 000258954) for the trade mark ALTA VISTA which was registered in February 1999. A copy of this registration was not provided.
The Complainant also noted the attempt to divert internet users from the Complainant's site to the Respondent's site by the use of a similar domain name, the association with gambling resulting in trade mark tarnishing and that the Respondent has mimicked the Complainant's "look and feel" on its website. The Administrative Panel is referred to Campmor, Inc v. Baltic Consultants Limited (NAF Case No. FA103138); Dow Jones & Company, Inc and Dow Jones LP v. Powerclick, Inc, WIPO Case No. D2000-1259; Microsoft Corporation v. Stoneybrook, WIPO Case No. D2000-1274; and Bama Rags, Inc v. John Zuccarini NAF Case No. 94381.
The Complainant also relies on the fact that the Respondent has not ceased its use of the website despite the Complainant's written requests to cease and desist. Copies of the correspondence are not provided. In this regard, the Administrative Panel is referred to Home Interiors & Gifts, Inc v. Home Interiors,WIPO Case No. D2000-0010.
The Administrative Panel notes that copies of the various decisions referred to above were not provided.
The Respondent did not provide a Response.
6. Discussions and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the Domain Name registered by the Respondent is identical or confusingly similar to a trade mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
(i) Identical or confusingly similar
The Administrative Panel accepts the Complainant's submission that the Domain Name is confusingly similar to the Complainant's mark ALTA VISTA. The Complainant's trade mark registrations for the ALTA VISTA marks are sufficient evidence of its rights in the mark.
The Domain Name differs by only a single character from the trade mark, and can be considered as one of the so called "typographical error" cases, where the Domain Name is found to be confusingly similar.
(ii) Rights or legitimate interest
The Domain Name was registered on June 26, 2001, after the ALTA VISTA mark was registered as a European Community Trade Mark in February 1999, and the mark has been used by the Complainant prior to the registration of the Domain Name. The Administrative Panel accepts that the Respondent must have known of the ALTA VISTA mark and the reputation in such mark, particularly given the similarity of the Domain Name.
While the Respondent has established a website offering internet search services, this cannot be bona fide use of the Domain Name in connection with the offering of services because the Respondent was aware of the Complainant's mark and adopted a confusingly similar mark for its own use, in order to benefit from the Complainant's goodwill and reputation without the authority or licence of the Complainant.
(iii) Bad Faith
The Administrative Panel accepts that the Respondent must have known of the Complainant, its goodwill and its trade mark ALTA VISTA prior to registering the Domain Name. The use of the confusingly similar Domain Name and the creation of a likelihood of confusion, affiliation or endorsement of the website is sufficient to support the allegation of bad faith. The Respondent registered and is relying upon the confusing similarity of the Domain Name to trade on and commercially profit from the Complainant's ALTA VISTA mark.
Although links to gambling and pornography on the Respondent's website are not in themselves evidence of bad faith, it does amount to bad faith in this case, given the similarity between the Domain Name and the Complainant's mark and the mimicking of the Complainant's website by the Respondent, which may result in internet users believing the Complainant to be connected with or authorising the Respondent's website. Such association could tarnish the Complainant's ALTA VISTA mark and is further evidence of bad faith.
The Administrative Panel is unable to comment on the Respondent's refusal to cease its behaviour because copies of the correspondence between the Complainant and the Respondent have not been provided. In any event, for the reasons stated above, the Administrative Panel is not required to consider this point.
With specific reference to paragraph 4(i) of the Policy and paragraph 15 of the Rules, it is the decision of the Administrative Panel that the Complainant has established that the Domain Name, <altavissta.com>, is identical to the Complainant's trade mark ALTA VISTA in which the Complainant has rights, that the Respondent has no rights or legitimate interest in the Domain Name and that the Respondent has registered and is using the Domain Name in bad faith.
The Administrative Panel therefore directs that the Domain Name, <altavissta.com>, shall be transferred to the Complainant.