Roanoke Technology Corporation v. AAA Website, Inc.

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE PANEL DECISION

Roanoke Technology Corporation v. AAA Website, Inc.

Case No. D2001-0453

1. The Parties

The Complainant is Roanoke Technology Corporation, 539 Becker Drive, Roanoke

Rapids, NC 27870, United States of America.

The Respondent is AAA Website, Inc., James Bennett, 471 Ives Dairy Rd. C-203,

North Miami Beach, FL 33179, United States of America.

2. The Domain Names and Registrar

The domain names at issue are <top-10promotions.com>, <top-10promotion.com>,

<top10promotions.com>, <top10websitepromotion.com>, and <toptenpromotions.com>

. The registrar is Register.com of New York, NY, USA.

3. Procedural History

The Complaint was received by the WIPO Arbitration and Mediation Center (the

"Center") by email on March 28, 2001 and in hardcopy form on March

30, 2001. WIPO has verified that the Complaint satisfies the formal requirements

of the Policy, the Rules and the Supplemental Rules and that payment was properly

made. The Administrative Panel (the "Panel") is satisfied that this

is the case.

On April 2, 2001, the Center sent an Acknowledgement of Receipt of the Complaint

to the Complainant. On April 4, 2001, the Center sent to the registrar, Register.com,

a request for verification of registration data. On the same date, the registrar

confirmed that it is the registrar of the five domain names in dispute (the

"Domain Names") and that they are registered in the Respondent’s name.

(Footnote 1)

Having verified that the Complaint satisfies the formal requirements of the

ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"),

the Rules, and the Supplemental Rules for Uniform Domain Name Dispute Resolution

Policy (the "Supplemental Rules"), the Center on April 17, 2001 sent

to the Respondent, with a copy to the Complainant, the Complaint, a notification

of the Commencement of Administrative Proceeding, and the withdrawal of the

disputed domain name <top10promotion.com>. This notification was sent

by the methods required under Paragraph 2(a) of the Rules. The formal date of

the commencement of this administrative proceeding is April 17, 2001.

The Center notified Respondent that the last day for submitting a response

to the Complaint was May 6, 2001. The Center never received a Response. On May

17, 2001, the Center notified the Parties of the Respondent’s default.

On May 30, 2001, WIPO appointed the administrative panel (the "Panel").

The Panel was properly constituted. The undersigned Panelist submitted a Statement

of Acceptance and Declaration of Impartiality and Independence.

No further submissions were received by WIPO or the Panel, as a consequence

of which the original date scheduled for the issuance of the Panel’s decision

was June 13, 2001.

4. Factual Background

Complainant, Roanoke Technology Corporation, is a publicly traded corporation

(NASD BB: RAKE) that has been operating and doing business under the name Top-10

Promotions since 1997. Complainant is engaged in the business of advertising

and promoting websites on the Internet by improving the websites’ visibility

on the major Internet search engines.

Complainant’s official website is connected to the domain name <top-10.com>.

On April 2, 1999, Complainant filed for a registration of its TOP-10 logo with

the United States Patent and Trademark Office, for the services of designing

web pages for others. On May 21, 2001, the final review of the service mark

was completed and the application was approved for publication. Complainant’s

service mark will be published for opposition in the Official Gazette on July

3, 2001.

Respondent, AAA Website, Inc., registered the Domain Names <top10promotions.com

> and <toptenpromotions.com> on February 8, 2000, <top10websitepromotion.com>

and <top-10promotions.com> on March 28, 2000, and <top-10promotion.com>

on May 24, 2000.

5. Parties’ Contentions

A. Complainant

Complainant contends as follows:

Complainant has used both its TOP-10 logo mark and its TOP-10 PROMOTIONS mark

in commerce, continuously, since at least August 1997. Complainant advertises

its services using both marks nationwide on the Internet and in print publications.

Complainant’s website, which bears both marks, averages 500,000 hits and 8,300

unique users per month. Since 1997, over one million visibility reports, each

bearing Complainant’s marks, have been distributed in response to potential

customer requests.

Complainant services customers nationally and internationally including well-known

companies such as Forbes, Zany Brainy, Moving.com, and the American Plastics

Council. Top-10 Promotions was listed in The Industry Standard as one

of the "A-List" companies providing website promotional services.

In sum, Complainant’s marks have received wide recognition, especially in the

information technology sector.

Complainant’s TOP-10 logo mark, if not opposed, may soon be a federally registered

service mark in the United States. As stated above, the mark will be published

in the Official Gazette on July 3, 2001. Thus, in addition to Complainant’s

common law rights, Complainant may soon have a federally registered service

mark for its TOP-10 design mark.

As part of Complainant’s business model, Complainant voluntarily partners with

other companies which resell Complainant’s services. These other companies are

called Authorized Resellers. Respondent requested to be an Authorized Reseller

of Complainant’s services. Complainant initially granted this request, but subsequently

denied the request when Complainant perceived problems with Respondent’s business

practices. After it was denied Authorized Reseller status, Respondent registered

the Domain Names, which are confusingly similar to Complainant’s service marks.

Respondent is not a licensee of Complainant, and it was never authorized by

Complainant to use any of Complainant’s marks.

According to third party affidavits submitted by Complainant, Respondent defrauded

these third parties out of thousands of dollars. These parties believed they

were ordering services from the Complainant through the websites operated by

Respondent under the confusingly similar Domain Names. Incredibly, Respondent

falsely assured the third parties that they were paying for Complainant’s services.

The only services rendered by Respondent, however, was the taking of the third

parties’ money. Respondent never performed any services, nor refunded the customers’

money.

Complainant contacted Respondent and informed Respondent that it was unauthorized

to resell Complainant’s services or use Complainant’s service marks. Complainant

further informed Respondent that it must take down its confusingly similar websites.

Respondent promised to comply. Respondent, however, has not complied and has

instead continued to misdirect Complainant’s customers to its website.

Respondent is aware that it has no rights or legitimate interests in the Domain

Names. It is not registered to do business under any name similar to the Domain

Names.

Moreover, Respondent is fully aware that it is intentionally and even maliciously

causing actual confusion among Internet users. In fact, Respondent sent Complainant

an email admitting that a large percentage of the traffic on Respondent’s websites

is actually intended for Complainant’s website.

Respondent sent Complainant a subsequent email offering to sell the Domain

Names to Complainant. In that email message, Respondent stated that it had offered

to sell the Domain Names to Complainant’s competitors. After receiving no response

from Complainant concerning the sale of the Domain Names, Respondent again attempted

to apply to become an Authorized Reseller. Not surprisingly, Complainant once

again denied the request.

In sum, Respondent is using Domain Names that are confusingly similar to Complainant’s

protected marks, and such use is in bad faith. Respondent’s actions have served

to intentionally divert potential customers from Complainant’s website and to

defraud them. Because Respondent has no legitimate interest or rights in these

Domain Names, it is violating Complainant’s service mark rights.

B. Respondent

Respondent failed to submit a Response to the Complaint.

6. Discussion and Findings

General

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the Domain Name is identical or confusingly similar to a trademark or service

mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the

Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

Identical or Confusingly Similar

The evidence presented by the Complainant demonstrates that Complainant’s service

mark TOP-10 and design has been approved by the United States Patent and Trademark

Office. Although it must still be published for opposition, the Panel finds

that such approval is prima facie evidence of federal rights in such mark. Respondent

does not use the TOP-10 service and design mark per se.

Complainant’s second service mark, TOP-10 PROMOTIONS, is not a federally registered

service mark.

The Policy, however, is not limited to registered or federal marks. Therefore,

the fact that the service mark TOP-10 PROMOTIONS has not been federally registered

does not automatically preclude it from being protected. The fact that the mark

is used in connection with the TOP-10 service mark, which may soon be a federally

registered mark, enhances its strength. Its strength is also greatly enhanced

by the considerable evidence of actual confusion on the part of Complainant’s

potential customers. In addition, Respondent’s bad faith has been shown to be

so egregious that it is clearly in the public’s interest to protect Complainant’s

service mark from those who intend to profit from Complainant’s recognition,

created by the use from Complainant’s TOP-10 PROMOTIONS source. As the fundamental

purpose of trademark law is to protect the public by allowing it to associate

products and services with a recognized name, the very serious questions raised

by Respondent’s conduct move the Panel closer to a conclusion of finding consumer

confusion. Therefore, the Panel finds, given the totality of unrebutted evidence,

that the service mark TOP-10 PROMOTIONS is protected by common law.

Because both marks are protectable marks and designs, the Panel next looks

to whether the Domain Names are confusingly similar to the service marks. The

Panel finds that the Domain Names <top-10promotions.com>, <top-10promotion.com>,

<top10promotions.com>, <top10websitepromotion.com>, and <toptenpromotions.com>

are confusingly similar to Complainant’s service marks TOP-10 and TOP-10 PROMOTIONS.

In fact, the service marks and the Domain Names differ only slightly in spelling,

and they are phonetically very similar.

Furthermore, the Complainant has produced evidence which shows that there was

considerable actual confusion. As the affidavits show, customers believed falsely

that they were at the Complainant’s website when in reality they were at Respondent’s

website. Instead of acquiring Complainant’s services as they expected, they

were defrauded by Respondent, who provided no services nor refunded any of the

third party customers’ money. Therefore, the standard of confusingly similar

has been reached and the requirement of Paragraph 4(a)(i) is met.

Rights or Legitimate Interests of the Respondent

Complainant alleges that the Respondent has no rights or legitimate interests

in the Domain Names. Apart from the minor variations, the Domain Names are the

equivalent of the Complainant’s marks and the Complainant did not grant the

Respondent a license to use Complainant’s marks. Thus, a prima facie case has

been made by Complainant.

From Respondent, silence. "It is a general principle of United States

law that the failure of a party to submit evidence on facts in its control may

permit the court to draw an adverse inference regarding those facts."

American Vintage Wine Biscuits, Inc. v. Big Daddy’s Antiques, WIPO

Case No. D2000-0004, February 16, 2000. Respondent’s failure to respond

to the Complaint allows the inference that the evidence would not have been

favorable to Respondent.

Accordingly, the Panel finds that Respondent has no rights or legitimate interest

ins respect of the Domain Names. There is nothing in the record to suggest that

Respondent has any rights or legitimate interests in the Domain Names. Therefore,

the requirement of Paragraph 4(a)(ii) is met.

Bad Faith

Complainant alleges that Respondent registered and used the Domain Names in

bad faith. Complainant has produced evidence showing that Respondent knew that

it was receiving customers intended for Complainant. In fact, Complainant alleges

that Respondent initially chose the Domain Names for the purpose of misleading

Complainant’s customers. Complainant also demonstrated that Respondent defrauded

customers intended for Complainant by accepting payment for services it did

not render. Lastly, there is evidence to suggest that Respondent attempted to

capitalize on Complainant’s marks by offering to sell the Domain Names to Complainant

or to one of its competitors. In sum, the record suggests that Respondent’s

actions were alarmingly egregious and unequivocally contrary to the public’s

interest.

Because Respondent failed to reply to the Complaint, the Panel accepts the

Complainant’s allegations of Respondent’s bad faith as true. Accordingly, the

Panel finds that Respondent’s registration and use of the Domain Names was in

bad faith and thus, the requirement of Paragraph 4(a)(iii) is met.

7. Decision

The Panel, having found that the Domain Names are confusingly similar to Complainant’s

service marks, that Respondent has no rights or legitimate interests in the

Domain Names and that the Domain Names have been registered and are being used

in bad faith, finds in favor of Complainant. Having made this determination,

it is important to mention that it is not intended for the UDRP procedures to

be used as a substitute for a civil action for unfair competition, misappropriation,

or conversion. This case required a close analysis with a sufficient minimum

of support to require a domain name transfer—a simple warning that UDRP is not

a substitute normally for such civil actions.

The Panel directs that the Domain Names <top-10promotions.com>, <top-10promotion.com>,

<top10promotions.com>, <top10websitepromotion.com>, and <toptenpromotions.com>

be transferred to the Complainant.

Maxim H. Waldbaum

Sole Panelist

Dated: June 13, 2001

Footnotes:

1. The registrar also confirmed that it is not the registrar of <top10promotion.com>,

another of the disputed domain names in the original Complaint. Complainant

amended the Complaint on April 13, 2001 by removing the <top10promotion.com>

domain name from the dispute because the domain name registration had already

expired. (back to text)