WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AltaVista Company v. S.M.A., Inc.
Case No. D2000-0927
1. The Parties
The Complainant in this administrative proceeding is AltaVista Company, whose principal place of business is at 529 Bryant Street, Palo Alto, California 94301, U.S.A. The Respondent is S.M.A., Inc., of Beverly Hills, California, U.S.A.
2. The Domain Name and Registrar
The domain name in dispute is as follows: . The domain name was registered by Respondent with Network Solutions, Inc. (NSI) December 30, 1999.
3. Procedural Background
On August 3, 2000, the WIPO Arbitration and Mediation Center received from Complainant via e-mail a complaint for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on August 26, 1999, ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules). On August 9, 2000, Complainant sent to WIPO a letter bringing to the panel's attention the decision in WIPO Case No. D2000-0533.
The complaint was filed in compliance with the requirements of the Rules and the Supplemental Rules, payment was properly made, the administrative panel was properly constituted, and the panelist submitted the required Statement of Acceptance and Declaration of Impartiality and Independence.
The instant Administrative Proceeding was commenced on August 16, 2000.
Respondent filed a Response, which was received by WIPO on August 29, 2000.
The decision of the Panel was due to WIPO on or before October 4, 2000.
4. Factual Background
As set forth in the Complaint, Complainant AltaVista Company is a world-renowned provider of Internet search, information, e-commerce, and portal services. It has one of the World Wide Web's largest search indexes (350 million pages) and directories (2 million pages) and performs more than 40 million search queries each day. Complainant has been using the name and mark ALTAVISTA to identify its company and Internet services since December 1995.
Complainant owns a number of U.S. trademark registrations (Nos. 2,047,808; 2,052,345; 2,112,885; 2,181,100) for the mark ALTAVISTA, as used on or in connection with computer services and software. See Complaint, Annex E. Complainant also owns a U.S. trademark registration (No. 2,130,077) for a mark consisting of the term ALTAVISTA and a mountain range design for use on and in connection with computer software and computer services. See Complaint, Annex F.
Complainant also owns the registration for the domain name and has operated a website at that address since December 1995. See Complaint, Annex G.
As noted above, Respondent registered the domain name in dispute with NSI on December 30, 1999. Respondent�s website has varied between being fully functional, completely unavailable, partially available, and, most recently, completely unavailable again. For example, on July 26 and August 1, 2000, Complainant�s attempts to visit Respondent�s website at generated error messages indicating that the domain name site was "currently unavailable." See Complaint, Annex H.
As recently as June 13, 2000, Respondent�s website offered a free e-mail service and sold advertising space. One button advertisement on the site was for America Online, one of Complainant�s major competitors. See Complaint, Annex J. On that date as well, Respondent�s website displayed the ALTAVISTA name set off in a different color from USA against a graphic of a mountain range. See Complaint, Annex J.
On July 28, 2000, Respondent�s website displayed only a small color picture filled almost entirely by the ALTAVISTA mark. See Complaint, Annex I.
On March 6, 2000, Complainant�s counsel sent a letter to Respondent demanding that it cease and desist its use of the domain name in dispute. See Complaint, Annex L. During telephone conversations on June 6 and June 13, 2000, Respondent�s representative indicated that Respondent would not transfer the domain name and, instead, invited Complainant�s attorney to make an offer to purchase the domain name.
5. Parties' Contentions
Complainant contends that the domain name in issue is confusingly similar to its ALTAVISTA mark; that there is no evidence that Respondent has any rights or legitimate interests in the domain name; and that Respondent registered and used the domain name in "bad faith." With respect to the latter contention, Complainant asserts that Respondent knew of Complainant's mark when it registered the domain name and that Respondent's registration and use of the domain name was undoubtedly an attempt to lure Internet users to the Respondent's site by creating confusion as to the identity, sponsorship or affiliation of Respondent's site. Further, according to Complainant, Respondent's use of the domain name to provide free e-mail service causes confusion as to the identity, sponsorship or affiliation of the uncontrolled activities of Respondent's customers. Complainant further argues that the requisite "bad faith" is demonstrated through Respondent's use of Complainant's "mountain range" mark and through Respondent's invitation to Complainant to make an offer for the purchase of the domain name.
In its Response, Respondent alleges that none of the requirements set forth in �4.a. of the Policy has been satisfied. According to Respondent, the domain names are not confusingly similar since A is predominantly a search engine business and is only a free e-mail nonprofit business.
Respondent further contends that it has demonstrated its rights and legitimate interests in the domain name insofar as: (1) before Respondent had any notice of the dispute, it had used the domain name in connection with a bona fide offering of services (i.e., free e-mail); and (2) Respondent is making a legitimate noncommercial use of the domain name, without intent for commercial gain, because is a nonprofit charitable organization.
Finally, Respondent argues that there is no bad faith in its registration of the domain name. In support of such assertion, Respondent argues that: (1) there is no evidence of Respondent engaging in a pattern of disrupting Complainant's business; (2) Respondent did not acquire the domain name for sale or rental to Complainant; and (3) the domain name was not registered for the purpose of disrupting the business of Complainant since: (a) Respondent did not know of the existence of Complainant's free e-mail service, since Complainant is known only for its search engine business; and (b) the domain name was not registered for commercial gain since Respondent is a non-profit charitable organization which channels all its income to AIDS and cancer research.
6. Discussion and Findings
The Panel has carefully weighed the evidence presented and determines that Complainant has met the requirements set forth in �4.a. of the Policy.
There is no question that the domain name in dispute is confusingly similar to marks in which Complainant has rights. The domain name incorporates, in full, the ALTAVISTA mark and the addition of the geographic term "usa" has little, if any, legal significance.
The fact, as alleged by Respondent, that the parties may be engaged in dissimilar businesses does not support, let alone compel, a contrary finding on the "confusingly similar " issue. The determination of whether the requirement of �4.a.(1) of the Policy is satisfied is based solely on a comparison of Complainant's mark(s) and the domain name(s) in dispute. This is not a trademark infringement or unfair competition lawsuit in which liability in predicated upon a finding of likelihood of confusion, which, in turn, is based, in part, on a comparison of the parties' goods and/or services.
Based on the existence of Complainant's U.S. trademark registrations and its use of the ALTAVISTA marks, the Panel also holds that Complainant has rights in such marks 1.
Respondent asserts that its activities constitute a legitimate noncommercial use of the domain name, without intent for commercial gain to misleadingly divert consumers, within the meaning �4.c.(iii) of the Policy, because all its income goes to medical research. However, the evidence indicates that Respondent is engaged in a commercial activity, i.e., the selling of advertising space on its Web site. The fact that Respondent "donates" all its income to activities associated with medical research does not convert its "commercial" activity into a "noncommercial" activity.
The Panel further determines that Respondent is not engaged in a bona fide offering of services, within the meaning of �4.c.(iii) of the Policy. Complainant's unrebutted assertion that Respondent's website was not fully functional over the past few months and, most recently, was completely unavailable, leads the Panel to the conclusion that Respondent is not engaged in a "bona fide" offering of services.
There is also sufficient evidence to support a determination of "bad faith" registration and use. The Panel finds that Respondent adopted its domain name with full knowledge of the existence of Complainant and its marks and, by using the domain name, intentionally attempted to attract, for commercial gain, Internet users to its site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website, within the meaning of �4.b.(iv) of the Policy.
7. Decision
In view of the above, the Panel GRANTS Complainant's request for transfer to it of the domain name .
Jeffrey M. Samuels
Presiding Panelist
Dated: October 4, 2000
Footnotes:
1. The Panel notes that the copies of the registration certificates annexed to the Complaint indicate that the marks and registrations in issue are owned by Digital Equipment Corp. Based on its own investigation, the Panel determines that the marks and registrations have been assigned to Complainant.
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