Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Tiger Oak Publications, Inc., Minneapolis, MN, USA ("Complainant") represented by Robert J. McGillivray, of Oppenheimer, Wolff & Donnelly LLP. The Respondent is Fourb Publishing Inc., Winston-Salem, NC, USA ("Respondent") represented by Robert C. Glesener, of Gaeta & Glesener, P.A.

The domain name at issue is "seattlemagazine.com" registered with Network Solutions.

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

Bruce Meyerson as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on March 7, 2001; the Forum received a hard copy of the Complaint on March 8, 2001.

On March 12, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name "seattlemagazine.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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 March 14, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 3, 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@seattlemagazine.com by e-mail.

A timely response was received and determined to be complete on April 11, 2001.

On April 20, 2001, pursuant to Complainant’s request to have the dispute decided by a one member Panel, the Forum appointed Bruce Meyerson as Panelist.

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

Complainant filed an additional submission on April 18, 2001. On April 19, 2001, Respondent filed a "Request to Strike; Request to file Further Statement and Documents." On April 20, 2001 Complainant filed a "Response to Respondent's Requests." Although Complainant's additional submission was timely under the Forum's rules, the undersigned finds it unnecessary to consider it in making this Decision. Accordingly, I find it unnecessary to rule upon the Respondent's Request to Strike and to File Further Statement and Documents.

Complainant, Tiger Oaks Publications, Inc., has common law trademark rights to the mark SEATTLE MAGAZINE, which it uses in connection with its periodically published magazine and corresponding on-line magazine for the greater Seattle metropolitan area. Complainant's mark has established sufficient secondary mean to entitle it to common law trademark protection. The domain name is confusingly similar or identical to the protected mark held by Complainant and would appear likely to cause confusion by attracting users interested in Seattle Magazine thereby diverting consumers to Respondent's site. Respondent has engaged in a pattern of registering approximately 50 domain names, in all cases identical or quite similar to names of city and regional magazine. I infer from these facts that Respondent's purpose is to prevent trademark owners from using those domain names. This practice constitutes bad faith under the Policy.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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."

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 has common law trademark rights to the mark SEATTLE MAGAZINE, which it uses in connection with its periodically published magazine and corresponding on-line magazine for the greater Seattle metropolitan area. Complainant has used the SEATTLE MAGAZINE mark since 1991. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that ICANN Policy does not require a showing of rights in a registered trademark and that it is sufficient to show common law rights).

Even a geographically descriptive mark is entitled to protection if it can be demonstrated that the mark holds a secondary meaning. Lowestfare.com LLA v. US Tours & Travel, Inc. AF 0284 (eResolution Sept. 9, 2000); Cf. Nintendo Of America Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding "game-boy.com" identical and confusingly similar the Complainant’s GAME BOY mark, even though the domain name is a combination of two descriptive words).

The following facts support Complainant's position that its mark has acquired sufficient secondary meaning:

1) The common law trademark rights in SEATTLE MAGAZINE along with the goodwill in the business were assigned to Complainant by the former publisher of the magazine;

(2) The publication is widely distributed as approximately 45,000 copies of each issue are produced;

(3) Between 15,000 and 17,000 hits are made on the magazine’s website each month;

(4) The Seattle Magazine periodical is a substantial business, which requires the work of 15 employees, and around $1.1 million to operate each year;

(5) The periodical generates $1.3 million each year in advertising and circulation revenue; and

(6) Between 60 and 70 corporations place advertising in each issue.

Based on the foregoing I find that Complainant's mark has established sufficient secondary meaning to entitle it to common law trademark protection. See Echo Travel, Inc. v. Travel Associates, Inc., [1989] USCA7 211; 10 U.S.P.Q.2d 1368, 1371 (7^th Cir. 1989); see also Passion Group Inc. v. Usearch, Inc., AF-0250 (eResolution Aug. 10, 2000) (finding sufficient rights by virtue of distribution and advertising to enable complaining party, at common law, to prevent another magazine from using protected mark).

Accordingly, I conclude that the disputed domain name is confusingly similar or identical to the protected mark held by Complainant. See Down East Enter. Inc. v. Countywide Communications, FA 96613 (Nat. Arb. Forum Apr. 12, 2001) (finding the domain name "downeastmagazine.com" confusingly similar to Complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE).

I am persuaded by Complainant's contention that Respondent could have chosen any number of domain names to promote its activities. Instead, it chose a name with particular significance--the name of a well-established magazine with substantial readership. Based upon my review of the site, Complainant is correct that the site has very little original content and would appear likely to cause confusion by attracting users interested in Seattle Magazine thereby diverting consumers to Respondent's site. Thus, I conclude that Respondent is not making a legitimate noncommercial or fair use of the site within the meaning of Policy 4(c)(iii). See Broadcom Corp. v Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); Kosmea Pty Ltd. v. Carmel Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where respondent has an intention to divert consumers of complainant’s products to respondent’s site by using complainant’s mark); see also North Coast Medical, Inc. v Allegro Medical, FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where respondent used the domain name to divert Internet users to its competing web site).

Complainant has demonstrated that Respondent has engaged in a pattern of registering approximately 50 domain names, in all cases identical or quite similar to names of city and regional magazines. I infer from these facts that Respondent's purpose is to prevent trademark owners from using those domain names. This practice constitutes bad faith under the Policy. See Armstrong Holdings, Inc. v. JAZ Associates, FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent has registered numerous domain names that infringe upon the complainant’s marks and in addition, the respondent has registered domain names that infringe upon other entities’ marks); see also Encyclopaedia Britannica Inc. v Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where the respondent engaged in the practice of registering domain names containing the trademarks of others).

Moreover, the record supports Complainant's assertion that Respondent registered the disputed domain name to intentionally attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant’s well-established mark. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent had engaged in bad faith use and registration by linking the domain name to a web site that offers services similar to complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the complainant’s marks); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well known marks, thus creating a likelihood of confusion strictly for commercial gain).

Pursuant to the foregoing, the domain name "seattlemagazine.com" is hereby transferred to Complainant.