ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
Complainant is a company with its primary business office in Columbia, Maryland. Respondent is an individual with an unknown address.
The contested domain name is alscans.com.
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on November 29, 2000, and payment was received on the same date. The hardcopy of the Complaint Form was received on December 4.
The date of commencement of the administrative proceeding was December 12, 2000.
Only the emails to the administrative contact were returned 'undeliverable'. All the faxes were successful.
The complaint, official notification and all the annexes were sent via registered mail with proof of service, to the respondent. According to the Canada Post tracking system, all were delivered.
The Respondent did not submit a Response, either via eResolution's website or by a signed version by December 24, 2000, which was his due date to respond. On December 29, 2000, the Respondent submitted a late response, via the eResolution Internet site. The signed version of the response was received on January 9, 2001. On January 5, 2001, Respondent requested by e-mail that the late response be accepted by the Clerk. On January 22, 2001, Complainant requested by e-mail that the late response be rejected by the Clerk.
On January 4, 2001, the Clerk's Office contacted the undersigned panelist, and requested that she act as panelist in this case. On January 11, 2001, she agreed to act as panelist in this case. On January 12, 2001, the parties were notified that she had been appointed and that a decision was to be, save exceptional circumstances, handed down January 26, 2001.
3. Factual Background
Complainant is the owner of a federally registered service mark "ALS SCAN" in connection with CD ROMS featuring adult entertainment. The federal registration was issued on February 17, 1998.
In addition, according to the certificate of registration issued by the U.S. Patent and Trademark Office, Complainant has used the mark "ALS SCAN" in commerce since June 3, 1996, in connection with CD ROMS featuring adult entertainment. There is no evidence of state trademark registration for the "ALS SCAN" mark.
Complainant registered the domain name www.alsscan.com, with Network Solutions, Inc. A search of NSI's whois database indicates that the record was created on April 30, 1996. Complainant states that it also has domain name registrations in "alsscan.org" and "alsscan.cc."
Respondent registered the contested domain "alscans.com" on August 11, 1998, according to the Complaint. An independent search by the Panel of the betterwhois database, as well as the NSI whois database, shows that the contested domain name was registered with Network Solutions, Inc.
According to the Complaint, Complainant and Respondent have been in contact regarding the disputed domain names. Copies of the correspondence are not part of the record. However, Complainant alleges that "Respondent was first sent a cease and desist notice on June 18, 2000." It also alleges that there was a second notice, after which the Respondent put the domain name up for sale. It is not clear from the Complaint whether the Respondent offered the domain name for sale to the Complainant, or for what amount.
4. Parties' Contentions
Complainant alleges in count 4C of its complaint that:
(1) The contested domain name is clearly similar to Complainant's trademark "ALS SCAN;"
(2) Respondent has no legitimate interests in these domain names because his business consists of that "tricking unsuspecting consumers who innocently misspell Complainants URL and then having them go directly to Respondents site;"
(3) Respondent has registered the domain names with "a bad faith intent to profit from Complainant's mark, " evidenced by Respondent's registration of other slightly misspelled marks, to route users to his website.
As stated earlier, a late response was filed to these allegations. In it, the Respondent states:
(1) The contested domain name is not confusingly similar to Complainant's trademark, in part because the term scan is generic.
(2) Respondent has a legitimate interest in the contested domain names as a future "website that is dedicated to all things about scanning. The intend [sic] use is not in violation of a trademark or an infringement of a right held by the Complainants [sic]." In addition, Respondent's Exhibit 1 is a pending application for the mark "ALSSCANS.com," filed with the U.S. Patent and Trademark Office on November 21, 2000, in connection with global network on-line services selling and registering domain on search engines. It also attached evidence of a pending registration for the mark "WWW.ALSSCANS.COM," filed with the U.S. Patent and Trademark Office on June 20, 2000, in connection with "registration of domain names for identification of users on a global computer network;
(3) Respondent has not "intentionally attempted to attract for commercial gain, Internet users to Respondent's web site . . . by creating a likelihood of confusion with the Complainant's mark . . ." because his website is a "general directory." Respondent concedes that he "attempted to sell this domain name to the Complainant for the exact amount he had paid for them, [but] there seems to be no use of coercion or extortion in this price."
Complainant objects to the late filing of the response, based on ICANN Rule 14, and suggests that the late filing violates rule 18 of the eResolution Supplemental Rules, as an improper influence on the Clerk and/or the Panel.
5. Discussion and Findings
The procedural posture of this case is complicated by the fact that the Respondent has filed a late response to the complaint. However, I find that the Respondent should be given a fair opportunity to present its case, and thus I extend the period of time for filing the response to include Respondent's late filing. See ICANN Rule 10(b) and 10(c). In so doing, I note that the relevant notices went out during the December holiday season. Moreover, the Response was filed prior to the appointment of the Panel, so there is no delay or prejudice associated with the late filing. It is also clear that the late filing does not violate eResolution Supplemental Rule 18.
I thus proceed to the determination whether Complainant has met its burden of proof of meeting each of the three required elements of Paragraph 4(a) of the ICANN Uniform Dispute Resolution Policy (hereinafter UDRP):
(1) Identity or Confusing Similarity of Respondent's Domain Name to Complainant's Registered Mark:
a. Rights in a Mark
ICANN UDRP Paragraph 4(a)(i) requires that the Complainant has a right in a trademark or service mark. Based on the federal registration of "ALS SCAN," Complainant has satisfied this sub-element of the UDRP test.
b. Confusing Similarity
The contested domain name is not identical to Complainant's registered mark "ALS SCAN", nor is there is evidence of actual consumer confusion. Nonetheless, several facts support the inference of confusing similarity.
First, the contested domain name is extremely similar to the registered mark, varying only by two letters (the addition of an "S" at the end and the elimination of an "S" in the middle of the name). Common sense consideration of the two terms leads to the conclusion that the contested domain name is a highly likely misspelling of the registered mark.
Respondent claims that trademark rights should not extend to generic terms. Although trademark rights should not give rise to associated rights in any and all generic words, the Complainant's registered mark could also be considered a coined term, consisting of the term "ALS" and the English word "Scan." Even if the term "scan" is generic, a fair number of decisions under the ICANN UDRP have found that the combination of a generic word with a protected mark can lead to confusing similarity. See, e.g., Nokia Corporation v. Nokiagirls.com aka IBCC (WIPO Case No. D2000-0102 ("nokiagirls"); Eauto, L.L.C. v. Triple S. AutoParts d/b/a/ Kung Fu Yea Enterprises (eautolamps.com). Similarly, a generic word that is part of an overall protected mark can be protected from confusingly similar uses of that word.
Most importantly, although Complainant's mark "ALS SCAN" could be considered to be partly generic, the Patent and Trademark Office has seen fit to issue a registration for this mark in connection with Complainant's business. The purpose of a domain name panel is not to arbitrate the legitimacy of a registered mark, and a registered mark is primae facie evidence of that mark's validity.15 U.S.C. § 1057(b).
Thus, I find confusing similarity between Respondent's domain name and Complainant's mark.
(2) No Rights or Legitimate Interests of the Respondent in Respect of the Domain Name:
As pointed out in the Complaint, there are at least four factual bases for inferring no rights or legitimate interests in the domain names:
Taken together, these facts lead to the strong inference that Respondent's right or interest in the domain names is minimal to non-existent.
On the other hand, an independent search by the Panel reveals that the site www.alscans.com resolves to a directory of websites, organized by broad categories, such as "Gaming," "Finance," "Health," etc. While it is not a sophisticated portal to the Internet, it does appear to be one that is legitimate on its face. Thus, independent of the allegations in the late response, there is some evidence of business use by the Respondent. Moreover, as Respondent points out, it appears that Respondent has filed two federal trademark applications, in addition to the domain name registration in the mark. Respondent claims that its current use is a legitimate, albeit temporary, use of the domain names. He plans to develop these web sites consistent with the use claimed in the pending trademark registrations.
In conclusion, while this is a close case, I find that Complainant has not met its burden of proof regarding this second UDRP element. The Respondent's website appears to be used for some legitimate business purpose, albeit not a clearly defined one.
(3) Respondent's Bad Faith Registration and Use: This third element can be demonstrated by
"circumstances indicating that [Respondent has] 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 . . . for valuable consideration in excess of . . . documented out-of-pocket costs directly related to the domain name. ICANN UDRP Paragraph 4(b)(i) (emphasis added).
Alternatively, the third element can be satisfied by showing that the Respondent "intentionally attempted to attract, for commercial gain, Internet users to [its] website . . . by creating a likelihood of confusion." ICANN UDRP Paragraph 4(b)(iv) (emphasis added).
Here, Complainant alleges that Respondent offered the name for sale, but does not state the amount or provide any corroborating evidence. Respondent concedes that he offered the domain name for sale, but states it was for the exact amount purchased. Complainant does not allege that the domain name was offered for consideration in excess of the Respondent's documented out of pocket costs. Thus, even if Respondent registered the domain names with the purpose of transferring them to an owner of a trademark or service mark, I conclude that Complainant has not proven the third element via UDRP Paragraph 4(b)(i).
Paragraph 4(b)(iv) requires a showing that the Respondent intentionally attempted to attract Internet users for commercial gain, by creating a likelihood of confusion with the complainant's mark. To buttress this claim, Complainant relies on evidence of Respondent's registration of other slightly misspelled marks (such as www.mistype.com and www.madonnas.com), to route users to the same website that is found when typing in the contested domain name. Complainant claims that Respondent is intentionally trying to lure Internet users who misspell words to his website.
Complainant's trademark, while federally registered, is not so famous as to compel the inference that Respondent is intentionally using it (in the form of misspellings) to bring users to his website. Moreover, whatever Respondent's business may be, it is not directly competing with Complainant, which runs an adult entertainment site. Thus, once users get to Respondent's site, they will know immediately that they have typed in the wrong domain name. There is no passing off. Respondent's pending trademark applications (of the contested domain name) provide some support for the genuine-ness of Respondent's Internet-based business, although the nature of that business is somewhat murky. Of course, it is conceivable that Respondent's business is a sophisticated form of cybersquating, and that Respondent is skating on the edge of proper conduct with regard to domain names. Nonetheless, on this record, there is not enough evidence to compel the conclusion of intentional attraction for commercial gain.
In conclusion, I find that Complainant has not met its burden of showing that the third element of the UDRP has been satisfied.
6. Conclusions and Relief
In conclusion, Complainant has not met its burden of proof regarding two of the three required elements of Paragraph 4(a), as supplemented by Paragraph 4(b), of the ICANN UDRP. I order that the request for transfer of domain name be denied.
Seattle, WA USA
(s) Margaret Chon