WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Netscape Communications Corp. v. Stonybrook Investments, Ltd

Case No. D2001-0328

 

1. The Parties

Complainant is Netscape Communications Corp., 501 East Middlefield Rd, Mountain View, California 94043, USA.

Respondent is Stonybrook Investments, Ltd. 18 Mopan Street Belize City, N/A 0000 in Belize.

 

2. The Domain Names and Registrars

The domain names at issue are <homenetscape.com> and <nrtscape.com> (hereinafter referred to as the Domain Names).

The Registrar of the domain name <homenestcape.com> is Tucows.com, Inc., and the Registrar of the domain name <nrtscape.com> is Network Solutions, Inc. (hereinafter referred to as the Registrar).

 

3. Procedural History

On March 6, 2001, Complainant filed a complaint with the WIPO Arbitration and Mediation Center (hereinafter referred to as the Center). The Complaint was received by email on March 6, 2001, and in hardcopy on March 9, 2001.

On March 13, 2001, Acknowledgement of Receipt by the Center was sent to the Complainant.

On March 15, 2001, the Registrar of the domain name <homenetscape.com>, Tucows.com, provided the Center with the full contact details available in its WHOIS database for that domain name registrant and confirmed that:

- a copy of the Complaint was sent to it by the Complainant;

- it is the current Registrar of the domain name registration;

- the Respondent is the current registrant of the Domain Name registration;

- the Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the ICANN Policy) applies to the Domain Name.

On March 19, 2001, the Registrar of the domain name <nrtscape.com>, NSI, provided the Center with the full contact details available in its WHOIS database for that domain name registrant and confirmed that:

- a copy of the Complaint was sent to it by the Complainant;

- it is the current Registrar of the domain names registration;

- the Respondent is the current registrant of the Domain Names registration;

- the Uniform Domain Names Dispute Resolution Policy (hereinafter referred to as the ICANN Policy) applies to the Domain Name.

The Center 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

March 21, 2001.

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.

On March 21, 2001, the Center informed the Respondent of the commencement of the proceedings as of March 21, 2001, and of the necessity of responding to the Complaint within 20 calendar days, the last day for sending a response to the Center being on

April 9, 2001.

In a letter dated April 10, 2001, the Center informed the Respondent that it was in default pursuant to the ICANN Policy and the WIPO Rules and that an administrative panel would be appointed based on the number of panelists designated by the Complainant.

On April 24 2001, the Center issued a Notification of the Appointment of Administrative Panel and of the projected decision date to the parties.

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 May 7, 2001, in the English language.

 

4. Factual Background

The Panel finds that the following facts appear from the Complaint and documents submitted with the Complaint.

The Complainant owns the registered trademark NETSCAPE, U.S. trademark Reg. No. 2,027,552. The registration is dated December 31, 1996.

The Complainant owns the registered trademark NETSCAPE, U.S. trademark Reg. No. 2,082,141. The registration is dated July 22, 1997.

The Complainant filed for the registration of the trademark NETSCAPE.COM. The filing date is October 6, 2000.

On December 16 1999, the Respondent registered the Domain Name <nrtscape.com>.

On August 15, 1997, the Respondent registered the Domain Name <homenetscape.com>.

The Respondent was involved in at least three domain name disputes prior to the current dispute.

 

5. Partiesí Contentions

A. Complainant

i) Contentions of the Complainant with respect to its trademark rights

The Complainant alleges that it is the owner of numerous trademark registrations worldwide for the mark NETSCAPE, including U.S. trademark Reg. No. 2,027,552. To support its contentions, the Complainant provided evidence of trademark registration at Annex B of its Complaint (collectively the "Netscape Marks"). It further alleges that it has used its Netscape Marks since at least as early as 1994 in connection with its Internet services.

The Complainant alleges that it uses the domain name <netscape.com> and the URL <www.home.netscape.com> in connection with the promotion and offering of its online services. The Complainant adds that the Netscape Marks are used extensively at these web sites, which are a significant method of promoting Netscapeís goods and services. To support these contentions, the Complainant included screen shots of its web site as Annex C to its Complaint.

The Complainant alleges that long prior to the Respondentís registration of <homenetscape.com> and <nrtscape.com> (the "Domain Names"), it began using its Netscape Marks in the United States, and numerous other countries around the world, in connection with the advertising and promotion of its products and services. According to the Complainant, the distinctive and famous Netscape Marks have been used continuously and extensively since that time in interstate and international commerce in connection with the advertising and sale of its goods and services.

The Complainant alleges that it has invested substantial sums of money worldwide in developing and marketing its products and services.

The Complainant alleges that the netscape.com web site is one of the most visited sites on the Internet during daytime hours with over 32 million registrants. Each year millions of Netscape customers worldwide obtain products and services offered under the Netscape Marks; millions more are exposed to said marks through advertising and promotion. The Complainant also alleges that it provides numerous services under its NETSCAPE mark, including online search and communications tools, as well as a comprehensive suite of software and services targeted to small business owners. To support these contentions, the Complainant included related information as Annex D to its Complaint.

The Complainant alleges that the Netscape Marks have been and continue to be widely publicized through substantial advertising throughout the United States and the world. The Complainant further alleges that many millions of dollars have been spent in connection with such advertising, which has been disseminated through network and cable television programs, radio broadcasts, and in print media including newspapers and periodicals.

The Complainant alleges that because of these substantial advertising expenditures and sales, the distinctive Netscape Marks have become well-known and famous worldwide among members of the purchasing public.

The Complainant alleges that sales of products and services under the Netscape Marks have amounted to many millions of dollars. The Complainant submits that, as a result, the general public has come to associate these names and marks with products and services of a high and uniform quality.

The Complainant alleges that many years after Netscape's adoption and first use of the Netscape Marks, and long after the distinctive Netscape Marks became well-known and famous, the Respondent registered the Domain Names and began using them in connection with a casino web site named Casino44.

ii) Contentions of the Complainant with respect to the Identity or Confusing Similarity between the Domain Name and its Trade-marks

The Complainant alleges that the Domain Names are nearly identical to the Netscape Marks, particularly the Domain Name <homenetscape.com>. The Complainant further alleges that the domain name <nrtscape.com> was registered by Respondent in an attempt to steal Internet traffic from consumers that accidentally mistype the first "e" in "Netscape." The Complainant submits that consumer confusion is especially likely given the fact that the "home" prefix is likely to lead consumers to believe that the Domain Name is the Internet homepage of the official Netscape web site. The Complainant contends that, therefore, Respondent registered the Domain Names to confuse consumers into believing erroneously that Respondentís casino web site is somehow affiliated with or endorsed by Netscape Communications.

iii) Contentions of the Complainant with respect to the Absence of Rights or Legitimate Interests of the Respondent

The Complainant alleges that the Respondent has no rights or legitimate interests in respect to the Domain Names.

The web site at <homenetscape.com> and <nrtscape.com> promotes Respondentís commercial web site, which has no affiliation with Netscape, and is not licensed to use the NETSCAPE mark. The Complainant included screen shots of the web site at <homenetscape.com> and <nrtscape.com> as Annex F to its Complaint.

Furthermore, the Complainant alleges that the Respondent cannot claim, in good faith, that it made a legitimate noncommercial or fair use of the domain names, or that it is commonly known by the name Netscape.

iv) Contentions of the Complainant with respect to the Registration and Use of the Domain Name in Bad Faith

The Complainant alleges that Respondent registered and uses the Domain Names in bad faith in connection with a commercial casino web site in order to profit from the goodwill in the Complainant's NETSCAPE mark.

According to the Complainant, the following is evidence of Respondentís bad faith registration and use of the Domain Names:

(a) Respondentís bad faith registration of the Domain Names is evidenced by the fact that Respondent registered the domain names many years after Netscape's adoption and first use of its Netscape Marks (a copy of the Whois records for the Domain Name is included as Annex E).

(b) Respondentís bad faith registration and use of the domain names is demonstrated by prior ICANN proceedings involving the Respondent where arbitrators have held that the Respondent registers and uses Domain Names for the bad faith purpose of profiting from the goodwill trademark owners have created in their famous marks. To support this contention, the Complainant included prior domain name dispute decisions rendered against the Respondent as Annex H to the Complaint. The Complainant contends that these cases show a significant bad faith pattern by Respondent.

(c) The Complainant alleges, for example, that the Respondent registered the following domain names:

Domain Name Mark Infringed

<wwwnorthwestairlines.com> NorthWest Airlines

<wwwnissan.com> Nissan

<wwwlexus.com> Lexus

<wwwsubaru.com> Subaru

<wwwnewyorktimes.com> The New York Times

<budweisser.com> Budweiser

The Complainant alleges that this significant pattern of registering domain names that incorporate famous marks demonstrates Respondentís attempt to prevent legitimate trademark owners from reflecting their marks in corresponding domain names, in violation of Rule 4(b)(ii) of ICANNís Uniform Domain Name Dispute Resolution Policy. To support these contentions, the Complainant included a copy of WHOIS Records as Annex G to its Complaint.

(d) Based upon the fame of the Netscape Marks and the significant pattern of similar bad faith domain name registrations, Respondent cannot, in good faith, claim that it had no knowledge of Netscapeís rights in the mark NETSCAPE.

B. Respondent

As previously stated, Respondent has not filed a response to the current proceedings, and is in default to do so. Pursuant to s.5(e) and 14 of ICANN Rules, the Panel shall decide the dispute based upon the complaint.

 

6. Discussion and Findings

Pursuant to the ICANN Policy, the Complainant must convince the Panel of three elements if it wishes to have the domain names transferred. It is incumbent on the Complainant to show:

i) that the Domain Names are identical or confusingly similar to a trademark in which it holds rights;

ii) that the Respondent has no rights or legitimate interests in the Domain Names;

iii) that the Domain Names were registered and used in bad faith.

These three elements are considered below.

Identity or Confusing Similarity between the Domain Names and Complainant's trademark

With respect to the first of the two domain names in dispute, namely <homenetscape.com>, the panel finds that it is confusingly similar to Complainant's NETSCAPE and NETSCAPE.COM trademarks, specially given that the Complainant uses such mark in association with a web portal for which the domain name is <home.netscape.com>. The prefix "home" in the Domain Name <homenetscape.com> cannot be used to distinguish the Domain Name from the trademark so as to make the former not confusingly similar to the latter, mainly because the word "home" is used to indicate that this domain name leads to the "home page" of the <netscape.com> web site.

With respect to the second domain name, <nrtscape.com>, even if it does not sound confusingly similar to the Complainant's trademark because the first three letters have to be spelled in order to pronounce the word as a whole, the panel, nonetheless, is of the opinion that the domain name <nrtscape.com> is similar to trademarks NETSCAPE and NETSCAPE.COM. The proximity of the letter "r" to the letter "e" on a computer keyboard is a fact to consider to evaluate the degree of confusion between the domain name and Complainant's trademarks.

Previous decisions extensively discussed this subcategory of cybersquatters who are sometimes called "typosquatters". One of these decisions is The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571, where the appointed panel held: "In determining whether a domain name is confusingly similar to a trade mark, the intention of the domain name registrant is irrelevant. It is the objective likelihood of confusion that must be assessed. The panel finds that the disputed domain names are likely to attract customers of the broker seeking to access the brokerís website who misspell or err in typing the domain address they seek. The close misspellings at issue here are confusingly similar to the Complainantís mark."

Therefore, the Panel finds that the Domain Names are similar to trademarks in which the Complainant has rights.

Rights or Legitimate Interests in the Domain Names by Respondent

In the present dispute, the Complainant has introduced unchallenged evidence that it owns rights in the trademarks NETSCAPE and NETSCAPE.COM (see Annex B to the Complaint) and that the domain names are used to redirect consumers to an on-line casino (see Annex E and F to the Complaint).

Futhermore, there is no evidence that would allow the Panel to conclude that some circumstances enumerated at paragraph 4(c) of the ICANN Policy apply to Respondent's situation.

By demonstrating its rights in its trademarks, by asserting that Respondent is not licensed by the Complainant to use those marks and by stating that Respondent's web site has no affiliation with the Complainant, and taking into account Respondent's failure to respond to the Complaint, the Complainant has established prima facie that the Respondent has no rights or legitimate interests in the Domain Names.

For those reasons, the Panel concludes that, on balance of probabilities, the Respondent has no rights or legitimate interests in the Domain Names.

C. Bad faith in Registration and Use of the Domain Names by the Respondent

Paragraph 2 of the ICANN Policy provides that, when someone registers a domain name, he represents and warrants to the registrar, notably, that, to his knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party. The same paragraph also provides that it is incumbent on the person who registers the domain name to determine whether the domain name registration infringes or violates someone else's rights.

In the present case, the Panel finds that, since Complainant's trademark is well-known throughout the world, it is very unlikely, if not nearly impossible, that, when Respondent registered the Domain Name, it wasn't aware that it was infringing on Complainant's trademark rights, specially given that the Complainant provides one of the only two main web-browsing software that are usually needed to register a domain name.

In addition, the Panel is of the opinion that the way in which the domain names were chosen, i.e. the addition of common spelling errors in well-know domain names and corresponding trademarks, clearly shows that the sole possible purpose for which Respondent has registered or acquired the Domain Names is to intentionally attempt to attract, for commercial gain, Internet users to its web site.

This finding is supported by the allegation made by the Complainant purporting to establish that these domains names are leading to an online casino, a fact that the Panel has been able to corroborate on its own, and by the evidence that numerous other domain names that are confusingly similar to trademarks of others were also registered by the Respondent for the same purpose. (See Annexes F and G to the Complaint.)

The Panel therefore concludes that the Respondent has registered the Domain Names in bad faith.

With respect to bad faith in the use of the Domain Names, the Complainant cited three domain name administrative panel decisions in which Respondent was found to be involved (see Annex 11 to the Complaint):

In Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc. (WIPO Case No. D2000-0587), the Respondent in the present dispute had registered the domain names <ayhoo.com>, <chatyahoo.com>, <eeeyahoo.com>, <eocities.com>, <foreleven.com>, <gecities.com>, <geocitie.com>, <citiesyahoo.com>, <geocitis.com>, <geocties.com>, <geosities.com>, <gocities.com>, <goecities.com>, <iahoo.com>, <myahoo.com>, <myyahoo.com>, <our11.com>, <wwwchatyahoo.com>, <wwwfour11.com>, <wwwgeocities.com>, <wwwmyyahoo.com>, <yafoo.com>, <yahll.com>, <yahooguide.com>, <yahoonews.com>, <yahoosearch.com>, <ahomail.com>, <yahos.com>, <yahow.com>, <yahu.com>, <yahuu.com>, <yahwho.com>, <yahwoo.com>, <yanoo.com>, <yauoo.com> and <yyahoo.com>.

In its decision, the appointed panel wrote: "Respondent is obviously engaging in "typosquatting," a practice that has been condemned and been found to be confusingly similar to the marks which they mimic. See, e.g., American Media Operations, Inc. v. Erik Simons, ICANN Case No. AF-0134; AOL v. Asian On-Line This Domain For Sale, ICANN Case No. FA 00040000094636. Yahoo! Inc. v. Zviely, et al, ICANN Case No. D2000-0273. (...) Respondent is trading on the value established by Complainant in its marks to attract users who misspell or mistype Complainant's mark when entering the URL, which includes Complainant's, domain name. Clearly, Respondent is deriving economic benefit from this practice, either by attracting users to Respondent's web site, where goods and services are offered, or by the receipt of compensation from the owners of other web sites for delivering users to those sites. This constitutes bad faith registration and use as defined by ∂4(b)(iv) of the Policy." The appointed panel then ordered that the disputed domain names be transferred to the Complainants.

In AltaVista Company v. Stoneybrook aka Stonybrook Investments, (WIPO Case No. D2000-0886), the Respondent in the present dispute had registered the domain names <alfavista.com>, <algavista.com>, <altavisfa.com>, <altavisha.com>, <altavitsa.com>, <altavsta.com>, <altawista.com>, <atavista.com>, <atlavista.com>, <atlavisa.com> and <wwwalavista.com>.

In its decision, the appointed panel wrote: "Respondent has registered a number of domain names that Internet users are likely to employ inadvertently as they misspell Complainantís mark and domain name when attempting to address Complainantís website. Respondentís choice of multiple misspelled versions of Complainantís mark and domain name was deliberate. This is evidenced by the well-known nature of Complainantís mark and Respondentís similar multiple-misspelled registrations of other well-known marks and domain names. Respondent has intentionally sought to use Complainantís mark to confuse consumers as to sponsorship of, or location of a service on, a website or websites that Respondent operates for commercial gain. This constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy." The appointed panel ordered that the disputed domain names be transferred to the Complainant.

Finally, the Respondent has also been involved in National Geographic Society v. Stonybrook Investments, LTD. (Forum Arbitration, case nį FA0012000096263), regarding the domain name <nationalgeographics.com >.

Considering the striking similarities between previous cases involving the Respondent and the present dispute, the Panel finds that those cases constitute "logically probative" evidence of Respondent's bad faith, within the meaning that was given to that notion by Lord Denning in Mood Music Publishing Co. v. De Wolfe Ltd., (1976) 1 All E.R. 763 (C.A.). (The plaintiffs, in an action for infringement of copyright, sought to adduce evidence that in three other cases, the defendants had reproduced musical works which were subject to copyright.) In that decision, Lord Denning stated the test of admissibility of the similar fact evidence in civil cases as follows: "In civil cases the courts will admit evidence of similar facts if it is logically probative, that is, if it is logically relevant in determining the matter which is in issue; provided that it is not oppressive or unfair to the other side; and also that the other side has fair notice of it and is able to deal with it."

The Panel finds that the circumstances surrounding the current dispute are strikingly similar to the circumstances prevailing in the two previous domain names disputes cited by the Complainant in which the Respondent was involved. Those circumstances indicate not only that the Respondent attempts to piggyback on the goodwill vested in Complainant's trademarks in this case, but also that it has engaged in a pattern of such behavior on a fairly large scale. The Panel finds that this behavior, in accordance with paragraph 4(b) of the ICANN Policy, constitutes evidence of bad faith in the registration and use of the Domain Names.

 

7. Decision

For the foregoing reasons, the Panel concludes that:

- the Domain Names registered by the Respondent are confusingly similar to trademarks in which the Complainant has rights;

- the Respondent has no rights or legitimate interests in respect of the Domain Names;

- the Domain Names have been registered and are being used by the Respondent in bad faith.

Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <homenetscape.com> and <nrtscape.com> be transferred to the Complainant.

 


 

Hugues G. Richard
Sole Panelist

Dated May 1, 2001