WIPO Arbitration and Mediation Center

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.

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.

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.

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.

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.

Respondent failed to submit a Response to the Complaint.

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.

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)