The Complainant is AlterVista s.r.l of Torino, Italy, represented by Hunton & Williams, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Stoneybrook of Belize City, Belize.
The disputed domain name <altervista.com> is registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2009. On July 27, 2009, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On July 28, 2009, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on August 6, 2009. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 11, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2009. The Respondent did not submit any substantive response. Accordingly, the Center notified the Respondent's default on September 1, 2009.
The Center appointed John Swinson as the sole panelist in this matter on September 7, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant is an Italian company, formed in 2000.
The Complainant operates a website at “www.altervista.org”, which provides a platform for creating free websites. This website has been in existence and managed by the Complainant since December 2000.
According to the “www.alexa.com” website, the Complainant's Altervista website is ranked as one of the top 20 Italian Internet sites, having nearly 4 million visitors per month.
The Complainant is the owner of several registered trade marks, including a Community Trade Mark for the word mark ALTERVISTA (Community Trade Mark number 005642905).
A search of “Whois” records reveals that the disputed domain name <altervista.com> was first registered (by an entity that may or may not have been the Respondent) in September 1997. The website operating from the disputed domain name has been suspended by Tucows, Inc following the Respondent's failure to comply with a request from Tucows, Inc for updated contact details.
The Complainant makes the following contentions:
The Complainant is the owner of several national (Italian) and international registered trade marks, namely a Community Trade Mark for the word mark ALTERVISTA (Community Trade Mark number 005642905) which is registered in all European Community jurisdictions, and an internationally registered trade mark for the word mark ALTERVISTA (trade mark number 879722), registered for use in Italy and France.
The disputed domain name is identical or confusingly similar to the trade marks in which the Complainant has rights on the basis of the disputed domain name containing the word “altervista”. The Complainant uses “altervista” in connection with a number of top-level domains, such as “.org”, “.eu” and “.it”. The Respondent has incorporated the Complainant's distinctive ALTERVISTA mark in its entirety into the disputed domain name, with the only difference being the suffix “.com”.
There is no indication of the Respondent's use of or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
The Respondent is not commonly known by nor uses the name “Altervista” in the course of business. Any usage of the ALTERVISTA trade mark by the Respondent would violate the Complainant's intellectual property rights in that term. The Respondent does not hold any trade mark rights in the name “Altervista”. A Google search for the term “Altervista” produces 7,230,000 results of which approximately the first twenty relate to the Complainant and its website.
The disputed domain name has been registered and used by the Respondent in bad faith. The Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the website. Internet users will reasonably expect the disputed domain name to be associated with the Complainant.
The Respondent intentionally uses the disputed domain name to divert Internet users attempting to find the Complainant's official Altervista website to its own website and advertisements.
The Respondent has engaged in a practice of registering domain names comprised of typographical errors of other companies' well-known trademarks. The Respondent's history of cyber-squatting and typo-squatting is evidenced in previous UDRP cases such as:
- AlterVista Company v. Stoneybrook aka Stonybrook Investments, WIPO Case No. D2000-0886;
- British Broadcasting Corporation v. Data Art Corporation/Stoneybrook Investments, WIPO Case No. D2000-0683;
- Microsoft Corporation v. Stoneybrook, WIPO Case No. D2000-1274;
- Xerox Corp v. Stonybrook Investments Ltd, WIPO Case No. D2001-0380.
In all the above decisions an order was made for the transfer of the relevant domain names(s) from the Respondent to the relevant complainants.
Further evidence of the Respondent's use of the disputed domain name in bad faith is its failure to respond to the Complainant's correspondence during the period commencing November 2008 through to March 2009. The Complainant attempted to contact the Respondent on several occasions during this time with no success. The Respondent failed to respond to subsequent requests made by the registrar (Tucows Inc) to update its contact details, leading to the suspension of the disputed domain name.
The Complainant contends that the Respondent's failure to respond to pre-Complaint dealings, together with its failure to respond to prior UDRP proceedings commenced against it in the above decisions, suggests that the disputed domain name is being used in bad faith.
The Respondent did not submit a formal response. However on August 3, 2009, the Respondent submitted two emails (sent by William Lane) to the Center which contained the following information:
“I do not own domain.” and “I do not own these”
On August 11, 2009, the Respondent submitted a further email (sent by William Lane) to the Centre which stated:
“I will sign it over immediately for $5000.00. Please advise.”
The Respondent submitted no formal response to the Complainant's contentions.
According to paragraph 15(a) of the Rules: “A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy provides that a complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or a service in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith
Paragraph 4(a) of the Policy states that the burden of proof lies with the complainant to establish that all these three elements are satisfied.
The Complainant has produced sufficient evidence (including copies of trade mark certificates) to show that it has registered trade mark rights in the ALTERVISTA trade mark (for example, Community Trade Mark registration number 005642905, registered on November 20, 2007). The Complainant also uses its ALTERVISTA trade mark in connection with a number of top-level domains, such as “.org”, “.eu” and “.it”.
The only difference between the disputed domain name and the Complainant's trade mark is the addition of the top-level domain “.com”. The disputed domain name contains the Complainant's registered trade mark in its entirety, which in many cases is enough to create sufficient similarity between the domain name and the trade mark, leading to a likelihood of confusion (VoiceStream Wireless Corporation v. Salem Zeto, d/b/a Pacific Wireless Communications, d/b/a prepaidcellularwide.com, WIPO Case No. D2002-0313). The addition of the suffix “.com” is an irrelevant distinction that does not alter the likelihood of confusion (Turkcell Iletisim Hizmetleri A. S. v Tolga Murtezaoglu, WIPO Case No. D2008-1589; Rolls-Royce PLC v. Hallofpain, WIPO Case No. D2000-1709; Microsoft Corporation v. Amit Mehrotra, WIPO Case No. D2000-0053 and InfoSpace.com, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075).
There is no doubt that the disputed domain name is identical to the Complainant's registered trade mark. Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice of the dispute to the Respondent, the Respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Complainant is required to make out an initial prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent does not appear to have any trade mark rights or reputation in the term “altervista”, or any similar term. Nor is there any evidence that the Respondent has been known by the disputed domain name.
According to the Complainant, until recently the Respondent used the disputed domain name for a website to display advertisements. At present, the website is not operational when the disputed domain name is typed into a browser, there is an error message of “Cannot find server” and “The page cannot be displayed”. According to the Complainant, the disputed domain name has been suspended by the registrar, following the Respondent's failure to comply with the registrar's request for contact details.
In light of these circumstances, there is no evidence that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name. Nor is there any indication of the Respondent using, or undertaking demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.
By failing to submit a substantive Response, the Respondent has not provided any explanation as to why it selected or registered the disputed domain name. The Respondent has failed to submit any evidence of a business plan or idea which is related to the disputed domain name. All the evidence available to the Panel suggests that the Respondent is using the disputed domain name because it is similar to the Complainant's popular website address, and which will generate a significant amount of Internet traffic by mistake due to user confusion. This is not bona fide, or legitimate or fair use within the meaning of paragraph 4(c) of the Policy.
Moreover, the Panel is able to presume that the Respondent has no rights to or legitimate interests in the disputed domain name, based on the Respondent's failure to respond to the Complainant's allegations. See for example, GEOCITIES V. GEOCIITES.COM, WIPO Case No. D2000-0326, where the respondent had no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the Panel with evidence to suggest otherwise, and, Pavillion Agency, Inc., Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221, where the respondents' failure to respond was construed as an admission that they had no legitimate interest in the domain names.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
Paragraph 4(b) of the Policy enumerates four, non-inclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. One of those circumstances (subparagraph (iv)) is that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website.
As mentioned above, the domain name in dispute, <altervista.com> is very likely to be confused with the Complainant's trade mark and the Complainant's popular website. The Panel considers the Respondent (that may or may not have been the original registrant of the disputed domain name) most likely chose the disputed domain name with an intention of confusing Internet users, and to trade on the Complainant's valuable goodwill established in its ALTERVISTA trade mark.
The Respondent's practice of using the domain names for the purpose of diverting users to an unrelated Internet site can be considered as “classic bad faith” (Backstreet Production, Inc. v. John Zuccarini, CupcakeParty, cupcake Real Video, Cupcake-show and Cupcake-First Patrol, WIPO Case No. D2001-0654). Given the significant reputation of the Complainant, the redirection of Internet traffic is likely to deliver, or have previously delivered, a commercial benefit to the Respondent (even though that may not currently be the case due to the suspension on the website). By redirecting Internet users looking for the website of “www.altervista.org” to its own website, the Respondent is attempting to attract users for commercial gain.
A further example of bad faith (as set out in subparagraph 4(b)(ii) of the Policy), is where a respondent engages in a pattern of registering domain names in order to prevent the owner of a trade mark from reflecting that mark in a corresponding domain name. There are several previous UDRP decisions involving “Stoneybrook” or “Stonybrook Investments” as a respondent, including:
- AltaVista Company v. Stoneybrook aka Stonybrook Investments, WIPO Case No. D2000-0886 (where 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> were transferred to the complainant);
- Delta Air Lines, Inc. v. Stonybrook Investments, Ltd, WIPO Case No. D2000-1686 (where the domain name <deltaairline.com> was transferred to the complainant);
- Microsoft Corporation v. Stoneybrook, WIPO Case No. D2000-1274 (where the domain name <wwwmicrosoft.com> was transferred to the complainant);
- Netscape Communications Corp. v. Stonybrook Investments, Ltd, WIPO Case No. D2001-0328 (where the domain names <homenetscape.com> and <nrtscape.com> were transferred to the complainant);
- Xerox Corp. v. Stonybrook Investments, Ltd, WIPO Case No. D2001-0380 (where the domain name <zerox.com> was transferred to the complainant).
These decisions clearly show a pattern of the Respondent registering domain names which are confusingly similar to well known trade marks or brands, which in the Panel's view, is further evidence of bad faith.
The Respondent has also demonstrated bad faith by attempting to sell the disputed domain name to the Complainant for USD 5,000. While this offer was only made after receipt of the Complaint, it suggests that the Respondent's purpose in registering the disputed domain name could have been to sell the disputed domain name to the Complainant (or Altervista Company) for valuable consideration in excess of reasonable out-of-pocket expenses (see sub-paragraph 4(b)(i)). The suspension of the website operating from the disputed domain name due to the Respondent's failure to update proper contact details also suggests that the Respondent is acting in bad faith in relation to the disputed domain name.
The disputed domain name was first created in 1997, prior to the date of the Complainant's ALTERVISTA trade mark registrations. The Respondent has failed to provide a Response and it is unclear for how long the Respondent has owned the disputed domain name. On balance, it seems more likely than not that the Respondent registered the disputed domain name to attract Internet users to a website by creating a likelihood of confusion with AltaVista Company's trade mark. As stated above, AltaVista Company brought proceedings against the Respondent in 2000, but not in relation to the disputed domain name. Due to the findings above in relation to sub-paragraphs 4(b)(i) and (ii), the Panel does not believe this circumstance is sufficient to displace the findings of bad faith discussed above.
Accordingly, the third element has been met based on the information of this case.
The Complainant has successfully made out all three of the above grounds and is entitled to appropriate relief.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <altervista.com > be transferred to the Complainant.
Dated: September 22, 2009