WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al.
Case No. D2000-0848
1. The Parties
Complainant is AltaVista Company, 529 Bryant Street, Palo Alto, California, 94301, U.S.A.
Respondents are Grandtotal Finances Limited, Grandtotal Finances Ltd., S.A., Grandtotal Finances S.A., Grandtotalfinances Limited, Grandtotalfinances Ltd., S.A., 34-20 Calle 34, Panama, Panama 5.
Grandtotal Finances Limited, Grandtotal Finances Ltd., S.A., Grandtotal Finances S.A., Grandtotalfinances Limited, Grandtotalfinances Ltd., S.A., P.O. Box 93, Riga, Latvia, 1012.
2. The Domain Name and Registrar
The domain names at issue [hereinafter the Domain Names] are:
"actavista.com"; "aliavista.com"; "alkavista.com"; "alsavista.com"; "altaaista.com"; "altadista.co"; "altaeista.com"; "altamista.com"; "altanista.com"; "altarista.co"; "altasista.com"; "altatista.com"; "altauista.com"; "altavifta.com"; "altavilta.com"; "altavisca.com"; "altavisia.com"; "altaviska.com"; "altavispa.com"; "altavisti.com"; "altavistq.com"; "altavistr.com"; "altavisty.com"; "altavistz.com"; "altavixta.com"; "altavlsta.com"; "altaxista.com"; "altayista.com"; "ltazista.com"; "altlvista.com"; "altqvista.com"; "altrvista.com"; "altvvista.com"; "altzvista.com"; "alvavista.com"; amtavista.com"; "antavista.com"; "aptavista.com"; "autavista.com"; "eltavista.com"; "lltavista.com"; "vltavista.com"; and "wltavista.com".
The registrar of the Domain Names is Network Solutions, Inc., 505 Huntmar Park Dr., Herndon, Virginia, 20170, U.S.A.
3. Procedural History
On July 21st, 2000, Complainant filed a complaint [hereinafter the Complaint] with the WIPO Arbitration and Mediation Center [hereinafter the Center], receipt of said Complaint being acknowledged by the Center in a letter to the Complainant dated July 26th, 2000. In a letter dated July 31st , 2000, the Center informed the registrar, Network Solutions, Inc., that the Complaint had been submitted to the Center regarding the Domain Names.
The Center then proceeded to verify that the complaint satisfied the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy [hereinafter referred to as the ICANN Rules] and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [hereinafter referred to as the WIPO Rules], including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on August 11th, 2000.
The Panel has reviewed the documentary evidence provided by the parties and the Center and agrees with the Centerís assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Rules.
In a letter dated August 14th, 2000, the Center informed the Respondent of the commencement of the proceedings as of August 14th, 2000, and of the necessity of responding to the Complaint within 20 days. Evidence provided by the Center supports the finding that the Center acted diligently in its attempts to inform the Respondent of the proceedings.
On September 1st, 2000, the Respondent through counsel requested an extension of 30 days in which to reply to the Complaint. Complainantís counsel objected to any extension citing repeated efforts by the Complainant to contact the Respondent as evidence of bad faith. Notwithstanding these objections the Center granted the Respondent a further 15 days within which to file a Response with the Center.
In a letter September 26th, 2000, the Center informed the Respondent that he was in default pursuant to the ICANN Rules and the WIPO Rules and that an administrative panel would be appointed based on the number of panelists designated by the Complainant. The Panel believes it was constituted in compliance with the ICANN Rules and the WIPO Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.
The Panel has received no further submissions from either party since its formation.
The Panel is obliged to issue a decision on or Prior to October 17th, 2000, in the English language and is unaware of any other proceedings, which may have been undertaken by the parties or others in the present matter.
4. Factual Background
The Complainant is a corporation organised under the laws of Delaware. The Complainant provides Internet users with search, information, e-commerce and portal services. The Complainant has one of the World Wide Webís largest search indexes and directories. The Complainantís search engines perform more than 40 million searches a day.
No information has been supplied regarding the attributes and businesses of the Respondent although it appears that the Respondent maintains offices in both Panama and Latvia. It also appears given the hyperlinks offered via the Respondentís web page, that the Respondent has some connection to the Latvian banking sector.
As shown by the evidence, the Respondent registered the Domain Names, which consist of 43 variations on ALTAVISTA, all with slight misspellings, on or about February 25, 1999. The Respondent operated 43 identical websites corresponding to the Domain Names. The websites offered the user either the choice of linking to the Altavista search engines or to a second website, having the domain name "paritate.com", by clicking on the hyperlink titled "Searching for financial services? Go here!". The website at "paritate.co" is also administered through an intermediary in Latvia.
The Complainant owns registrations or has applied for registrations for the trademark ALTAVISTA in over 100 countries around the world. The Complainant registered the Trademark ALTAVISTA in the United States for use with computer services, said registration as of the date of April 15, 1997. The Complainant also holds a trademark registration for ALTAVISTA in Latvia dated July 20, 1998, and in Panama dated March 18, 1997.
The Complainant owns the domain name "altavista.com" and has been operating a website at this address since December 1995.
The Respondent is not a licensee of the Complainant nor is it otherwise authorised to use the Complainantís mark.
5. Partiesí Contentions
At paragraph 6 to the Complaint the Complainant maintains that the Respondent is a cybersquatter. The Complainant also maintains that the Respondent registers domain names under a number of different fictitious names to evade service of process and to conceal the Respondentís true identity.
At paragraph 11 to the Complaint the Complainant maintains that the Respondent has attempted to profit by deceiving Internet users as to the Complainantís sponsorship, endorsement, affiliation or endorsement of the Respondentís and affiliatesí websites.
At paragraph 26 to the Complaint the Complainant maintains that the Respondent has registered at least 244 distinct domain names, many of which include misspellings of other trademarks or well known domain names, for example "swisair.com" and "lycoz.com". Furthermore, the Complainant alleges at paragraph 27 to the Complaint that entities with names markedly similar to that of the Respondent and having the same address have registered at least a further 216 domain names of a similar nature including "retuers.com" and "volswagen.com".
At paragraph 31 to the Complaint the Complainant continues by alleging that are confusingly similar to the Complainantís ALTAVISTA trademark. This is supported, the Complainant maintains at paragraph 34 to the Complaint, by the Respondentís use of e-mail addresses as contacts which are located at "altavista.net" for a number of the Domain Names.
At paragraph 37 to the Complaint the Complainant maintains that the Respondent has no legitimate rights or interests in the Domain Names. In this regard the Complainant points out at paragraph 40 to the Complaint that the Domain Names are used merely to direct users to the affiliated website at "paritate.com".
At paragraph 43 to the Complaint the Complainant alleges that the registration and use of the Domain Names given the Complainantís well known mark is inherently deceptive and clearly done in bad faith with the intent to create confusion.
At paragraph 44 to the Complaint the Complainant maintains that the Respondent knew of the Complainantís mark when the Domain Names were registered.
The Respondent failed to file a response with the Center within the foreseen delays, notwithstanding a request to postpone the delay for filing a response, and has failed to file a response since.
6. Discussion and Findings
Referring to paragraph 14 of the ICANN Rules, in the absence of a response to the complainantís allegations by the respondent, the Panel may consider those claims in light of the unchallenged evidence submitted by the Complainant. While, the Panel cannot decide in the Complainantís favor solely given the Respondentís default but is entitled to draw, and in this case does draw such inferences as it deems appropriate and just in the circumstances from the Respondentís failure to respond.
Pursuant to the Uniform Domain Name Dispute Resolution Policy [hereinafter the ICANN Policy] the Complainant must convince the Panel of three elements if it wishes to have the Domain Name transferred. It is incumbent on the Complainant to show:
i) that the Domain Name is identical or confusingly similar to a trademark in which the it holds rights;
ii) that the Respondent has no legitimate rights or interests in the Domain Name; and
iii) that the Domain Name was registered and used in bad faith.
These three elements are considered below.
Identical or Confusingly Similar to Trademark
The Complainant provided evidence to the effect that it was registered owner of the trademark ALTAVISTA in a number of jurisdictions prior to the registration of the Domain Names by the Respondent. All of the Domain Names have been formed by commencing with "altavista" and modifying one of the letters in it to create a non-identical word. In this regard the Panel subscribes to the decision in Yahoo! Inc. v. Eitan Zviely, et al., WIPO Case No. D2000-0273, where the panel held that such misspellings were a "close variant" of the complaintís mark and therefore confusingly similar.
The Panel is also of the opinion that it is evident that the Respondent was intending to take advantage of inadvertent misspellings of web users. Therefore, notwithstanding that the misspellings may create words which in and of themselves are not confusing with the Complainantís trademark, as the intention of the user at the time of incorrectly typing was obviously, in the Panelís opinion, to type the Complainantís trademark, the only conclusion is that such misspellings of a trademark must necessarily lead to confusion on behalf of the user.
The Panel is therefore that the Complainant has met the burden of proof as established by paragraph 4(a)(i) of the ICANN Policy.
No Rights or Interest
Paragraph 4(a)(ii) of the ICANN Policy inquires as to whether or not the respondent has any rights or legitimate interests vested in the Domain Names. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the Domain Names in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has commonly been known by the Domain Names; and (iii) legitimate non-commercial or fair use of the Domain Names.
The Panel is of the opinion that there is no evidence to support any finding of a legitimate right or interest in the Domain Names on behalf of the Respondent. The Respondent has not shown use of, or preparations to use, the Domain Names in connection with a bona fide offering of goods or services, nor has he shown that he has commonly been known by the Domain Names nor has he shown a legitimate non-commercial or fair use of the Domain Names.
Furthermore, the Panel finds it appropriate in this regard to draw an adverse inference from the Respondentís failure to reply to the Complaint and detail any legitimate rights or interests he may have in the Domain Names of the type defined in paragraph 4(c) of the ICANN Policy.
Pursuant to paragraph 4(a)(iii) of the ICANN Policy it is incumbent on the Complainant to prove that the Respondent has registered and is using the Domain Name in Bad Faith. Paragraph 4(b) of the ICANN Policy provides a number of circumstances which, if found to be present, are evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b)(iv) of the ICANN Policy holds that, if the circumstances indicate that by using the Domain Names the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís website then this is evidence of bad faith registration and use on behalf of the Respondent.
The Panel is of the opinion that the present case is a blatant and egregious example of the kind of bad faith which the ICANN policy addresses at paragraph 4(b)(iv). The Complainant has provided sufficient evidence that entering the Domain Names in a browser had the effect of directing the userís browser towards a website which contained a link to a banking website obviously affiliated with the Respondent. It is quite obvious that the only intent of the Respondent was to appropriate the goodwill of the Complainant and redirect traffic intended for the Complainant for his own purposes. Therefore the Panel is of the opinion that the Complainant has met the burden of proof and has proven that the Respondentís actions have been in bad faith pursuant to paragraph 4(b)(iv) of the ICANN policy.
Furthermore, the Panel is of the opinion that the Domain Names are so obviously connected with the Complainant and its services that its very use by someone with no connection with the Complainant suggests opportunistic bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net Case No. D2000-0226 and Veuve Cliquot Ponsardin, Maison Fondťe en 1772 v. The Polygenix Group Co., Case No. D2000-0163).
7. Alternative Blanket Order
At paragraph 49 to the Complaint the Complainant raised an unusual issue by requesting that the Panel issue a blanket order to the Registrar ordering all domain names registered by the Respondent with the Registrar consisting of similar misspellings of ALTAVISTA be transferred to the Complainant. Without pronouncing on the merit of such a remedy per se, under the circumstances the Panel feels it is unable to award such a remedy, this based on both procedural and equitable grounds.
The recourse to this administrative proceeding flows from a contractual agreement between parties with the panelistís purview being limited by the terms of the contract itself. Therefore, a panelist has no residual jurisdiction which would allow him to award remedies which are not foreseen by the contract.
Section 8 of the Registrarís service agreement holds that any registrant of a domain name through the Registrar agrees to be bound by the Registrarís current domain name dispute policy, in the case at hand the ICANN Policy. Paragraph 4(i) of the ICANN Policy holds that the remedies available to a complainant pursuant to any proceeding before an administrative panel are limited to requiring the cancellation of the respondentís domain name or the transfer of said domain name registration to the complainant. Taken alone this provision might be interpreted as meaning that an administrative panel has the power to transfer any domain name registered by a respondent with the registrar and not only those which are listed explicitly in the complaint.
Every time a registrant registers a domain name with a registrar, the ICANN Policy, and therefore the resort to the administrative proceeding in the event of dispute, is included by reference to the registration agreement. Arguably, therefore, in a given administrative proceeding, an administrative panel could be said to have jurisdiction over all the domain names registered by the respondent with a particular registrar and not only those lodged in the complaint.
However, the award of such a blanket order might lead to a remedy which is unenforceable. Indeed, under the present circumstances and the present version of the ICANN Policy, the Panel feels that it is unable to determine how such an extensive remedy could be applied in an equitable manner.
Finally, notwithstanding the above, in the case at hand the Panel also of the opinion that even if such a remedy were available, such a remedy would be, in light of the evidence presented, uncalled for.
For the foregoing reasons, the Panel decides:
- that the Domain Names registered by the Respondent are confusingly similar to the trademark to which the Complainant has rights;
- that the Respondent has no rights or legitimate interests in respect of the Domain Names; and
- the Domain Names have been registered and are being used by the Respondent in bad faith.
Accordingly, pursuant to paragraph 4(i) of the ICANN Policy, the Panel orders that the registration of the domain names:
"actavista.com"; "aliavista.com"; "alkavista.com"; "alsavista.com"; altaaista.com"; "altadista.com"; "altaeista.com"; "altamista.com"; "altanista.com"; "altarista.com"; "altasista.com"; "altatista.com"; "altauista.com"; "altavifta.com"; "altavilta.com"; "altavisca.com"; "altavisia.com"; "altaviska.com"; "altavispa.com"; "altavisti.com"; "altavistq.com"; "altavistr.com"; "altavisty.com"; "altavistz.com"; "altavixta.com"; "altavlsta.com"; "altaxista.com"; "altayista.com"; "altazista.com"; "altlvista.com"; "altqvista.com"; "altrvista.com"; "altvvista.com"; "altzvista.com"; "alvavista.com"; "amtavista.com"; "antavista.com"; "aptavista.com"; "autavista.com"; "eltavista.com"; "lltavista.com"; "vltavista.com"; and "wltavista.com".
be transferred to the Complainant.
Jacques A. Lťger, Q.C.
Dated: October 17, 2000