Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Reed Elsevier Properties Inc., Wilmington, DE, USA ("Complainant") represented by Tara M. Vold, of Howrey Simon Arnold & White. The Respondent is David Allen, Roslyn Heights, NY, USA ("Respondent").

The domain names at issue is "varietymagazine.com" and "variety-magazine.com" registered with Gandi.

The undersigned certifies that he or she has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.

Judge Ralph Yachnin, as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 14, 2001; the Forum received a hard copy of the Complaint on February 15, 2001.

On February 16, 2001, Gandi confirmed by e-mail to the Forum that the domain names "varietymagazine.com" and "variety-magazine.com" are registered with Gandi and that the Respondent is the current registrant of the name. Gandi has verified that Respondent is bound by the Gandi registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On February 19, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 12, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@varietymagazine.com and postmaster@variety-magazine.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On March 20, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Judge Ralph Yachnin as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from the Respondent.

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

Respondent has failed to offer a submission for consideration by the Panel in this dispute.

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Complainant contends that the domain names are identical and/or confusingly similar to its mark. Respondent has not contested this allegation.

Respondent’s domain names are a composite of: (i) a complete and exact reproduction of Complainant’s VARIETY mark, and (ii) the word magazine, the very product promoted by Complainant through the VARIETY mark. Adding a general word to a trademark held by another does not defeat the mark holder’s rights in the mark. See Space Imaging LLC v. Brownwell, AF 0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business); L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word "shop" with the Complainant’s registered mark "llbean" does not circumvent the Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy). Thus, the domain names registered by Respondent, varietymagazine.com and variety-magazine.com, are identical or confusingly similar to the VARIETY marks in which Complainant has rights.

Complainant contends that the Respondent has no rights or legitimate interests in the domain names. Respondent has not contested this allegation.

Respondent is not a licensee of Complainant nor is Respondent otherwise authorized to use Complainant’s marks for any purpose. Respondent has made no attempt to use the website in connection with any bona fide endeavor or enterprise incorporating the terms "variety" or "variety magazine." Policy ¶ 4(c)(i). Instead, prior to Complainant’s "cease and desist" letter, Respondent linked the domain name to a website containing pictures of people in the entertainment industry. Using another’s distinctive mark to redirect Internet consumers to one’s own website is not a bona fide use of a domain name. See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights and legitimate interests where the Respondent diverted Complainant’s customers to his websites). In short, there is no legitimate basis for Respondent’s registration and/or use of the varietymagazine.com and variety-magazine.com domain names, as required by Policy ¶ 4(a)(ii).

Complainant contends that the domain names were registered and used in bad faith. Respondent has not contested this allegation.

Paragraph 4(b)(iv) of the Policy provides that a Complainant may establish that the registration and use of a domain name was in bad faith by showing that in using the domain name, the Respondent attempted to intentionally attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant’s marks as the source of the web site or of a product or service on that website. See Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site).

As evidenced by the website developed by Respondent at 2000magazine.com, Respondent is engaged in publishing photographs of individuals in the entertainment industry. As such, Respondent clearly had knowledge or reasonably should have had knowledge of Complainant’s prior use and registration of the VARIETY marks in connection with publications in the entertainment industry. Respondent registered the domain names varietymagazine.com and variety-magazine.com in an attempt to misleadingly divert consumers to his web site at 2000magazine.com.

Thus, this Panel determines that the domain names were registered and used in bad faith as required by Policy ¶ 4(a)(iii).

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain names "varietymagazine.com" and "variety-magazine.com" be transferred from the Respondent to the Complainant.