WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AltaVista Company v. Geoffrey Fairbairn
Case No. D2000-0849
1. The Parties
Complainant is AltaVista Company, a Delaware corporation with its principal place of business 529 Bryant Street, Palo Alto, California 94301, U.S.A. ("AltaVista"). Respondent is Geoffrey Fairbairn whose address is 15 Salisbury Ave., Mont Albert, Goodwill, ND 3127, Australia.
2. Domain Name and Registrar
The domain name in issue is "altakista.com".
The registrant, the date of registration, and status of the domain name according to Network Solutions, Inc. is:
Geoffrey Fairbairn 23 May 2000 Active
Network Solutions, Inc. (NSI), 505 Huntmar Park Drive, Herndon, VA 20170, U.S.A. is the registrar for the domain name "altakista.com".
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received AltaVistaís complaint on July 21, 2000, via email, and on July 24, 2000, in hard copy form. The Center has verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). AltaVista has made the required payment to the Center. The formal date of the commencement of this administrative proceeding is August 8, 2000.
On July 31, 2000, the Center transmitted via email to Network Solutions a request for registrar verification in connection with this case. On August 3, 2000, Network Solutions transmitted via email to the Center, Network Solutionsí Verification Response, (1) confirming that the registrant of the domain name is as stated above, (2) identifying the administrative contact, (3) confirming that Network Solutionsí 4.0 Service Agreement is in effect with respect to the domain name, and (4) stating that the domain name is in ĎActiveí status.
On August 8, 2000, the Center transmitted Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint, to the Respondent via facsimile and email to the address identified in the NSI verification response, and also via post/courier to the postal address identified in the NSI verification response. The Center advised that (1) the Response was due by August 27, 2000, (2) in the event of default the Center would still appoint a Panel to review the facts and to decide the case, (3) the Panel may draw such inferences from Respondentsí default as it considers appropriate, (4) AltaVista had elected for the matter to be decided by a single panelist who would be appointed within five days of the date the response is due, (5) the fees for the administrative proceeding will be paid in their entirety by AltaVista unless the Respondent chooses to have the case decided by a three-person Panel, (6) the Panel will decide the case within 14 days of its appointment, and (7) the Center can be contacted at stated postal and email addresses, a stated telephone number, and a stated fax number.
On August 22, 2000, the Center received a letter dated August 16, 2000, from Gavin I. Newitt, Investigator with Cardlink Services Ltd. who advised that the Respondent had provided him with a copy of the Complaint. Gavin I. Newitt advised that Cardlink Services Ltd. was investigating the fraudulent use of the Respondentís credit card in Australia and also for fraud on the Internet. In his letter to the Center Mr. Newitt advised that the Respondent has no knowledge of the use of the domain name and does not intend to breach any domain name. A copy of the letter of August 16, 2000, was also sent to the solicitors for AltaVista.
On August 30, 2000, the solicitors for AltaVista sent a letter to the Respondent by Federal Express concerning the content of the letter of August 16, 2000. The solicitors for AltaVista proposed that the Respondent voluntarily transfer the domain name "altakista.com" to AltaVista and enclosed a transfer form for completion and return by the Respondent. The solicitors for AltaVista advised that once the transfer of the domain name was complete they would request that the administrative proceeding be terminated.
On September 15, 2000, the solicitors for AltaVista sent a letter by e-mail to the Center advising that they had sent a letter on August 30, 2000, to the Respondent requesting him to transfer the "altakista.com" domain name. The courier had returned the August 30, 2000, letter unopened because delivery was refused by the Respondent. The Complainant requested that the Center proceed as scheduled.
On September 19, 2000, the Center transmitted to the parties via email a Notification of Respondent Default advising the Respondent that the Center would proceed to appoint a single-member Administrative Panel which would decide whether to consider a Response, if submitted later, in deciding the case.
On October 2, 2000, the Center transmitted to the parties via email Notification of Appointment of Administrative Panel and Projected Decision Date. The notification advised that Mr. Ross Carson had been appointed as the single panelist, and the decision was due October 15, 2000.
On October 2, 2000 , the Center transmitted the file in the case via e-mail and courier to Mr. Carson.
4. Factual Background
The Complaint (paragraph 13) is based on the trademark and service mark ALTAVISTA. The Complainant owns registrations or has applied for registration of the trademark ALTAVISTA in over one hundred countries in the world. The Complainant owns four United States trademark registrations for ALTAVISTA; one registration in Australia and seven registrations in New Zealand, copies of which appear at Annex D.
The United States, Australian and New Zealand trademark registrations are as follows:
Registration Number (s)
Date(s) of Registration
2, 5, 9, 21, 22, 23, 26, 29, 36, 37, 38, 42, 50, 100, 101, 107
2,047,808; 2,052,345; 2,112,885; 2,181,100
3/25/97; 4/15/97; 11/11/97; 8/11/98
9, 16, 35, 37, 38, 41, 42
9, 16, 35, 37, 38, 41, 42
261972, 261973, 261974, 261975, 261976, 261977, 261978
The foregoing trademark and service mark registrations have been registered in several classes including International Class 9 which is defined, in part as: computer software for use with local area, wide area, and/or global computer communications networks, namely, searching for, compiling, indexing, and organizing information ... computer software for searching for, compiling, indexing, and organizing information within individual work stations or personal computers.
The trademarks have also been registered in International Class 42 which is defined, in part, as "computer services, namely providing a directory on computer communications networks that organizes and indexes widespread websites, news groups and other resources into easy-to-find topic areas permitting customers to access them".
The Complainant has listed in paragraph 15 of the Complaint over seventy other countries in which it has registered the trademark and states that pending trademark applications for ALTAVISTA have been filed in approximately twenty other countries.
AltaVista asserts (paragraph 16) that it owns the domain name "ALTAVISTA.COM" and has used the website operated under the domain name "ALTAVISTA.COM" since 1995.
AltaVista asserts that it has invested many millions in dollars over the years to publicize the mark ALTAVISTA and has used this mark widely in a manner to ensure its automatic identification in the minds of Web users with excellence in Internet search, information, e-commerce, and portal services (paragraph 17 of the Complaint).
5. Partiesí Contentions
(i) The Complainant submits that the domain name "altakista.com" is confusingly similar to the Complainantís registered trademark ALTAVISTA.
(ii) The Complainant submits that the Respondent has no rights or legitimate interest in respect of the domain name "altakista.com".
(iii) The Complainant further submits that the Respondent being aware that ALTAVISTA is a registered trademark of the Complainant has registered the domain name "altakista.com" in bad faith. The Complainant further submits that the Respondentís registration and use of a confusingly similar variation of the Complainantís trademark is inherently deceptive and clearly intended to (1) confuse Internet users as to the source of sponsorship, affiliation or endorsement of Respondentís site; (2) misleadingly divert potential users of the Complainantís site to the Respondentís site; and (3) tarnish the Complainantís goodwill by using a confusingly similar name to furnish pornography.
The Complainant asserts that the Respondent registered the domain name "altakista.com" on or about May 23, 2000, with NSI. Under this domain name, the Respondent operates a website located at the Internet address "http://www.altakista.com" The Complainant has attached a copy of the printout made on July 21, 2000, of the current home page of "altakista.com" as Annex F to the Complaint.
The Complainant asserts that the website at "www.altakista.com" automatically redirects Internet users to the website at "NICEMATUREGALL.COM", a website promoting and displaying sexually explicit and pornographic material which provides links to other pornographic sites. (See Annex F to the Complaint).
The Complainant asserts that, according to NSI, the Respondent Geoffrey Fairbairn has registered over 50 domain names. A copy of the printout of the NSI Whois database search is attached as Annex G to the Complaint.
Complainant asserts that most of the domain names are sex-related and direct Internet users to the "NICEMATUREGALL.COM" site which displays a page with a hypertext link that reads "I AM OVER 21". Complainant has attached a copy of the "I AM OVER 21" page as Annex H to the Complaint.
Complainant asserts that when Internet users click on the "I AM OVER 21" hypertext link or attempt to exit the website, they are "hijacked" to a series of other pornographic sites. A copy of the homepages of several of these websites is attached as Annex I to the Complaint.
Complainant asserts that in addition to registering "altakista.com" Respondent has registered many other domain names which are simply topographical variations or misspellings of famous trademarks. Examples provided are UNFOSEEK (misspelling of INFOSEEK); "HO6MAIL.COM" (misspelling of HOTMAIL); SEBCRAWLER (misspelling of WEBCRAWLER). The websites at the Internet addresses corresponding to these domain names also direct users to the same pornographic website displayed at "http://www.altakista.com".
Communications between the Parties
On June 28, 2000, Complainant sent a letter to the Respondent demanding that he cease and desist from using the "altakista.com" domain name and copying Complainantís registered trademark. No response was received as of the date of the submission of the Complaint. A copy of the letter is attached as Annex K to the Complaint.
Complainant submits that the domain name "altakista.com" is confusingly similar to the Complainantís trademark ALTAVISTA. Complainant submits that the substitution of one letter in the middle of Complainantís mark ("k" for "v") creates an imitation of the mark which will cause confusion among Internet users. Complainant cites WIPO Case D2000-0003 finding Respondentís domain names "BRTANNICA.COM", "BRITANNCA.COM" and "BITANNICA.COM" virtually identical and confusingly similar to Complainantís BRITANNICA and "BRITANNICA.COM" marks. Complainant also cites the finding in "Geocities v. Geocities.com", WIPO Case No. D2000-0326 and several other cases providing precedents for findings of confusing similarity. (See paragraph. 23 of Complaint).
Lack of Rights or Legitimate Interest in Domain Name
At paragraphs 24 and 25 Complainant asserts that the Respondent has no rights or legitimate interests in respect of the domain name "altakista.com" as required under paragraph 4(a)(ii) of the Policy. Respondent is not a licensee of the Complainant, nor is he otherwise authorized to use the Complainantís mark.
At paragraph 26 Complainant asserts that there is no evidence that Respondent uses or has used "altakista.com" as his business name.
At paragraph 27 Complainant asserts that Respondentís offering of a pornography-related website and marketing of pornographic images, services, and websites does not constitute a bona fide offering of goods or services where such use is calculated to mislead consumers and tarnish the trademarks of the Complainant.
At paragraph 28 Complainant asserts that Respondentís rights and interests in "altakista.com" are undermined further by his use of the website to direct Internet users to the pornographic site, "NICEMATUREGALL.COM" and to hijack Internet users to other pornographic websites. Such an attempt to attract users to other sites is not a legitimate use of a domain name. Complainant cites ICANN CASE No. NAF-FA0093668, America Online Inc. v Tencent Communications Corp. Ė use of a website "as a portal to suck surfers into a site sponsored by Tencent seems hardly legitimate".
At paragraph 29 Complainant submits that there is nothing on Respondentís website that would justify the use of the term ALTAKISTA within the domain name.
At paragraph 30 Complainant submits that Respondentís choice of a confusingly similar variation of Complainantís famous mark ALTAVISTA in order to create a pornography-related website and links to other pornographic websites supports a finding of lack of rights or legitimate interests.
Bad Faith Registration And Use
At paragraph 32 Complainant submits that Respondentís registration and use of confusingly similar variations of the Complainantís mark are inherently deceptive and intended to confuse Internet users as to the source, sponsorship, affiliation or endorsement of the Respondentís site; misleadingly divert potential users of the Complainantís site to the Respondentís site; and tarnish Complainantís goodwill by using a confusingly similar name to furnish pornography.
At paragraph 33 Complainant avers that Respondent knew of Complainantís internationally known mark when he registered "altakista.com" and created the associated website.
At paragraph 34 Complainant avers that Respondentís registration and use of "altakista.com" in order to divert Internet traffic to the pornographic website located at "NICEMATUREGALL.COM" and to other pornographic websites are use of bad faith under the Policy. Complainant cites MatchNet, ICANN Case No. D2000-0205 (bad faith evident where a confusingly similar domain name is used to furnish a pornographic website), as well as other decisions.
At paragraph 35 Complainant submits that Respondentís registration of many domain names that are simple typographical errors and misspellings of other famous marks owned by others is itself evidence of bad faith. Complainant cites several cases where there were findings of bad faith where Respondent registered and used domain names based on common misspellings of Complainantsí marks.
At paragraph 36 Complainant avers that Respondent initially provided false telephone and fax numbers (see first page of Annex A, July 20/2000, to the Complaint) and then deleted all contact information (see second page of Annex A, July 21, 2000). Complainant avers that this demonstrates bad faith.
At paragraph 37 Complainant submits that Respondent has not ceased his "wrongful behaviour" despite the Complainantís written notice and request that he cease and desist from using the "altakista.com" domain name.
Respondent has not filed a Response, or any other formal document, with the Center.
6. Discussion and Findings
Paragraph 4.a of the Policy directs that AltaVista must prove, with respect to the domain name in issue, each of the following:
(i) The domain name in issue is identical or confusingly similar to the ALTAVISTA trademark, and
(ii) 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.
Paragraph 4.c of the Policy sets out three illustrative circumstances which, if proved by respondent, shall demonstrate respondentís rights or legitimate interest to the domain name for purposes of Paragraph 4(a)(ii) above.
Paragraph 4.b of the Policy sets out four illustrative circumstances, which for purposes of Paragraph 4(a)(iii) above shall be evidence of the registration and use of a domain name in bad faith.
a. Identical or Confusing Similarity
AltaVista has the burden of proving that the domain name in dispute is either identical to, or confusingly similar to, the AltaVista trademarks. Respondentís failure to respond does not relieve AltaVista of its burden of proof on this element or on either of the other two elements of Paragraph 4(a) of the Policy. However, Respondentís failure to deny any of AltaVistaís allegations and evidence permits this panel to take AltaVistaís allegations and evidence as true and to draw appropriate inferences.
On its face, the domain name in issue "altakista.com" incorporates the term "AltaVista" with a minor variation.
Confusing similarity turns on the inherent distinctiveness of the trademark, the extent of use of the trademark, the extent of time the trademark has been in use, the nature of the wares, services and business, the similarity in sound, appearance and idea suggested by the trademark and the domain name among other factors.
It is clear that the "ALTAVISTA" trademarks are widely and favorably known among millions of Internet users, in connection with the services and goods for which the trademarks ALTAVISTA are registered and used in many countries. AltaVista owns the domain name "altavista.com". The website denoted by AltaVistaís domain name is visited by millions of users daily.
The "altakista.com" website has been used to direct users to pornographic sites.
Also to be considered are the webforwarding arrangements adopted by Respondent which lead Internet users typing in the words "altakista.com" to the website "MATUREGALL.com" and the promotion of "MATUREGALLS.COM" website to which visitors to the website at "altkista.com" are directed. Plainly, confusion is or would be likely in the minds of ordinary Internet users between the ALTAVISTA trademarks and service marks and the domain name in issue here.
This conclusion is reinforced by Respondentís pattern of conduct in registering over forty other trademark-related domain names (misspellings of well known trademarks). Respondentís only purpose in registering so many trademark-related domain names must have been to trade on the good will and fame associated with those marks. Specifically, in light of the global fame and good will associated with AltaVistaís marks and domain name, Respondent must necessarily have expected to attract visitors to his website. Confusing similarity is what Respondent has been counting on.
I find that the Respondentís domain name "altakista.com" is confusingly similar to the Complainantís trademark ALTAVISTA.
b. Rights or Legitimate Interests
No formal Response has been filed by the Respondent with respect to the Complaint as to (1) the pattern of Respondentís conduct in registering as domain names misspelling of well-known trademarks, (2) the fact that Respondent is not and has not been commonly known by the domain name in issue, and (3) Respondent is not making legitimate use of the domain name in issue without intending to mislead and divert consumers from the Complainant or tarnish AltaVistaís marks for commercial gain.
This record demonstrates that Respondent has no rights or legitimate interests in respect of the domain name "altakista.com".
c. Registration and Use in Bad Faith
Registration and use of the domain names in issue in bad faith are matters of the appropriate inferences to draw from circumstantial evidence. Each is to be proved by the Complainant.
The Complainant submits that Respondentís registration and use were in bad faith, based on:
(1) Respondentís pattern of conduct of registering many domain names based on misspelling of trademarks owned by others, (2) the confusing similarity between the domain name in issue and the Complainantís ALTAVISTA trademark registrations in over seventy countries, (3) Respondentís programming of his website to direct users to pornographic sites, (4) Respondentís continued use of the phonetically similar "altakista.com" domain name to direct users to Respondentís website.
The foregoing demonstrates that Respondents has registered and has used the domain name "altakista.com" in bad faith.
d. Paragraph 4.c Factors
With respect to the domain name in issue, by failing to file a Response to the Complaint, Respondent has failed to demonstrate Respondentís rights or legitimate interest to the domain name as set out in Paragraph 4.c of the Policy, namely:
(i) before any notice to Respondents of the dispute, Respondentís use of or preparations to use the domain name were in connection with a bona fide offering of goods or services,
(ii) Respondents or a related entity have been commonly known by the domain name, and
(iii) Respondents are making legitimate noncommercial or fair use of the domain names in issue, "without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
As submitted by AltaVista and properly inferred from the undisputed facts as to Respondentsí conduct, each of these three factors must be resolved in favor of AltaVista.
The panel has jurisdiction of this dispute. Respondent has received notice of the commencement of this proceeding, the Policy, the Complaint, and the consequences of Respondentís default. Respondent has been afforded due process.
With respect to the request for transfer of the domain name "altakista.com" the Panel decides that Complainant has proved: (a) the domain name in issue here is confusingly similar to the Complainantís registered trademarks, (b) Respondent has no rights and no legitimate interests in respect of the domain name in issue, and (c) the domain name in issue has been registered and is being used in bad faith by Respondent.
Accordingly, the Panel requires that the registration of the domain name "altakista.com" be transferred to the Complainant.
Dated: October 13, 2000