WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Netscape Communications Corp. v. Baltic Consultants Limited
Case No. D2001-0519
1. The Parties
1.1 The Complainant is Netscape Communications Corp. ("Netscape"). Netscape is a Delaware corporation with its principal place of business in Virginia, United States of America.
1.2 The Respondent is Baltic Consultants Limited of the Virgin Islands.
2. The Domain Name and Registrar
2.1 The domain name upon which this Complaint is based is <nstscape.com> . The registrar of the domain names as at the date of the Complaint is TuCows.com, Inc ("TuCows").
3. Procedural History
3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999, (the "Policy"), in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999, (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999, (the "Supplemental Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email on April 6, 2001, and in hard copy on April 9, 2001. The fees prescribed under the Supplemental Rules have been paid by the Complainant. The Complaint states that a copy of the Complaint has been sent to the Respondent in accordance with paragraph 2(b) of the Rules and that a copy of the Complaint has been sent to the Registrar of the domain names in dispute, TuCows.
3.3 The Center sent a Request for Registrar Verification to TuCows on April 11, 2001, by email. TuCows responded to the Centerís request by email on April 11, 2001, stating:
(a) that TuCows was the registrar for the domain names in dispute;
(b) that the Respondent was the current registrant of the domain names in dispute;
(c) that the domain name <nstscape.com> was on hold, preventing any change of ownership; and
(d) the Respondentís contact details.
3.4 The Panel notes that TuCowsí response to the Centerís Request for Registrar Verification stated that TuCows was not in receipt of a copy of the Complaint. The Complaint states, at paragraph 18: "A copy of this Complaint, has been sent or transmitted to TuCows.com via email".
3.5 The Panel has no reason to doubt the Complainantís assertion in paragraph 18 of the Complaint that a copy of the Complaint was sent to TuCows. In any event, the Panel is satisfied that no unfairness has resulted to the Respondent by the fact that TuCows had not received of a copy of the Complaint at the time it received the Centerís Request for Registrar Verification.
3.6 The Center sent the Notification of Complaint and Commencement of Administrative Proceeding on April 12, 2001, to the Respondent by post/courier (with enclosures) and by email (without attachments), and to the Complainantís representative by email (without attachments).
3.7 A Notification of Respondent Default was sent by the Center to the Respondent and the Complainantís representative by email on May 2, 2001. This notified the Respondent that it had failed to comply with the relevant deadline for the submission of its Response in the domain name dispute. Although the Notification of Complaint and Commencement of Administrative Proceeding made specific reference to the 20 calendar day period within which the Respondent was entitled to submit a Response to the Complaint, no Response has been received from the Respondent at any time prior to the Panel commencing its deliberations.
3.8 The Center sent a Transmission of Case File to Administrative Panel by email on May 18, 2001. The documentation was received in hard copy by the Panel on May 25, 2001, in Sydney, Australia.
3.9 All other procedural requirements appear to have been satisfied.
4. Factual Background
4.1 Activities of the Complainant
The following information in this section 4 is asserted as fact in the Complaint and remains uncontested.
Netscape provides numerous services including online search, directory and communications tools, as well as a comprehensive suite of software and services targeted to small business owners.
4.2 The Complainantís trademarks
The Complainant is the owner of numerous trademark registrations worldwide for the mark NETSCAPE, including U.S. trademark Reg. No. 2,027,552 (collectively the "Netscape Marks"). Netscape has used its Netscape Marks since at least as early as 1994, in connection with its Internet services.
Netscape uses the domain name <netscape.com> in connection with the promotion and offering of its online services. The NETSCAPE mark is used extensively at this Web site, which is a significant method of promoting Netscapeís goods and services.
In 1994, Netscape began using its NETSCAPE mark in the United States, and numerous other countries around the world, in connection with the advertising and promotion of its products and services. The NETSCAPE mark has been used continuously and extensively since that time in interstate and international commerce in connection with the advertising and sale of Netscapeís goods and services.
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 mark; millions more are exposed to the mark through advertising and promotion.
The NETSCAPE mark has been and continues to be widely publicized through substantial advertising throughout the world. 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. Sales of products and services under the NETSCAPE mark have amounted to many millions of dollars. As a result, the general public has come to associate the NETSCAPE name and mark with products and services of a high and uniform quality.
Because of these substantial advertising expenditures and sales, the distinctive NETSCAPE mark has become well known and famous worldwide among members of the purchasing public.
4.3 Activities of the Respondent
As stated above, no Response to the Complaint has been filed and no information has been made available by the Respondent to the Panel concerning the activities of the Respondent. The Complainant states, however, at paragraph 9 of the Complaint, that the Respondent registered the domain name <nstscape.com> and began using it in connection with a graphic pornographic Web site named Massive Pink, which is registered and operated by the Respondent according to the WHOIS database.
5. The Complainantís contentions in the Complaint
5.1 The Complaint asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
5.2 In reference to the element in paragraph 4(a)(i) of the Policy, the Complaint asserts that the domain names in dispute are nearly identical to the Complainantís NETSCAPE trade mark. The Complainant asserts that the only difference between the Respondentís chosen domain names and the Complainantís trade marks is the substitution of "S" for "E" as the second letter of the mark. Given the proximity of "S" and "E" on computer keypads, the Complainant asserts that an Internet user seeking to visit the official NETSCAPE site may erroneously type the "s" key, instead of the "e" key, and be routed to the Respondentís pornographic Massive Pink Web site.
5.3 In reference to the element in paragraph 4(a)(ii) of the Policy, the Complaint asserts that the Respondent cannot demonstrate any legitimate interests in the disputed domain name. The Complainant has tended to merge its submissions on this point with those regarding the Respondentís alleged registration and use of the domain name in bad faith. However, the complainant has submitted:
(a) The Respondent registered the domain name many years after Netscape's adoption and first use of its NETSCAPE mark and domain name.
(b) The Respondentís bad faith registration and use of the domain name is demonstrated by a prior Uniform Domain Name Dispute Resolution Policy decision that found the Respondent registered and used the infringing domain name <bloombergl.com> for the bad faith purpose of profiting from the goodwill the legitimate trademark owner has created in its famous BLOOMBERG mark. In that case, the Respondent used the infringing domain name to route to the same Massive Pink pornographic site that is the subject of this proceeding.
(c) The Respondentís bad faith registration and use of <nstscape.com> is shown by the fact that the domain name is being used to route to a commercial pornographic Web site (Massive Pink) that is owned and operated by the Respondent. Moreover, the site makes no reference whatsoever to the name "NSTSCAPE," therefore the Respondent registered and used the domain name <nstscape.com> solely for the bad faith purpose of attracting, for commercial gain, Internet users to the Massive Pink site by creating a likelihood of confusion.
(d) On March 27, 2001, counsel for Netscape sent the Respondent a letter, explaining Netscapeís ownership rights in its famous NETSCAPE mark, and objecting to the Respondentís unauthorized use of a nearly identical domain name to route to a pornographic Web site. The Respondentís bad faith use of the domain name is evidenced by its failure to respond to the letter and its continued use of <nstscape.com>.
(e) The Respondentís bad faith registration and use of <nstscape.com> is further shown by its failure to provide a telephone number or fax number when it registered the domain name. By using the telephone number 000-000-0000, the Respondent has attempted to limit the manner in which legitimate trademark owners can investigate and/or contact the Respondent to express objections as to the improper and unauthorized manner in which famous trademarks are used.
(f) Based upon the fame of the NETSCAPE mark, the pattern of similar bad faith domain name registrations, and the correspondence sent by Netscapeís counsel, the Respondent cannot, in good faith, claim that it had no knowledge of Netscapeís rights in the mark NETSCAPE. Furthermore, Respondent cannot claim, in good faith, that it made a legitimate noncommercial or fair use of the domain name, or that it is commonly known by the name Netscape.
5.4 In reference to the requirements of paragraph 4(a)(iii) of the Policy, the Complaint asserts that the Respondent has registered the domain name in dispute in bad faith.
In support of this assertion, and in addition to the bad faith submissions described above, the Complaint states the following:
The Respondent registered and uses the domain name <nstscape.com> in bad faith in connection with a commercial pornographic Web site in order to profit from and capitalize on the famous NETSCAPE mark. The Web site at <nstscape.com> promotes the Respondentí commercial pornographic Web site, which is not affiliated or licensed with Netscape. Therefore, the Respondent registered and uses <nstscape.com> to profit from the goodwill in the famous NETSCAPE mark.
6. Discussion and Panel Findings
6.1 This section is structured by reference to the elements required by paragraph 4(a) of the Policy. In order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all three elements are present.
6.2 Domain Name identical or confusingly similar to Complainantís trade mark
The domain name in dispute is <nstscape.com>. The Complainant has trade mark registration in both United States and other countries for the word "NETSCAPE".
The domain name in dispute and the Complainantís trademark are not precisely identical, and the issue is therefore whether the domain name and the mark are confusingly similar.
As far as a comparison between the disputed domain name and the Complainantís trade mark is concerned, the substitution of one letter is not sufficient to adequately distinguish the disputed domain name and the likelihood of mistakenly typing "nstscape" instead of "netscape" is high given the manner in which typists reach for the "s" and "e" keys on a standard QWERTY keyboard.
The Panel infers that the disputed domain name was chosen by the Respondent to cause Internet users to mistakenly access any web site to which the domain name might resolve. The Panel in any event finds that the disputed domain name is confusingly similar to the Complainantís "NETSCAPE" trademark and that the Complainant has proven paragraph 4(a)(i) of the Policy.
6.3 The Respondent has no rights or legitimate interests in the Domain Name
The Complaint asserts that the Respondent has no rights or legitimate interests in the disputed domain names and, as stated above, the Respondent has provided no information to the Panel asserting any right or legitimate interest it has in the disputed domain names. It is apparent from the Complaint that there is no connection between the Respondent and the Complainant or its business.
Paragraph 4 (c) of the Policy lists a number of circumstances which, if proven to exist by the Respondent, can be taken to demonstrate a Respondentís rights or legitimate interests in the domain name. However, there is no evidence whatsoever before the Panel that any of the situations described in paragraph 4(c) of the Policy apply in the case of the Respondent.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names. Accordingly, the Complainant has proven paragraph 4(a)(ii) of the Policy.
6.4 Domain Name has been registered and is being used in bad faith
The Panel notes that paragraph 4(a)(iii) of the Policy requires both registration in bad faith and use in bad faith.
Paragraph 4(b) of the Policy states:
"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
The word "NETSCAPE" is obviously a well-known mark used by the Complainant in its day-to-day business. The use of an almost identical word by someone with no connection with the Complainant suggests opportunistic bad faith. In the absence of any explanation from the Respondent, the Panel can conceive of no good faith reason for someone to register the domain name in dispute since it does not form any English word, nor appear to be derived from any English word. Its sole derivation appears to be, as the Complainant asserts, a commonly misspelled form of the Complainantís own domain name. In the Panelís opinion the disputed domain name was registered by the Respondent for the reasons outlined in sub-paragraph 4(b)(iv) of the Policy.
The Panel is of the view that the domain name in dispute was registered and being used in bad faith by the Respondent at least at the time of the Complaint. Accordingly, the Panel finds that the Complainant has proven paragraph 4(a)(iii) of the Policy.
7.1 The Panel has found that all of the requirements of paragraph 4(a) of the Policy have been proven by the Complainant. Accordingly, and for the purposes of paragraph 4(i) of the Policy, the Panel orders that the domain name <nstscape.com> be transferred by TuCows to the Complainant, Netscape Communications Corp.
Philip N. Argy
Dated: June 9, 2001