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duPont Publishing, Inc. v. Simon S.McNally [2003] GENDND 123 (3 February 2003)


National Arbitration Forum

DECISION

duPont Publishing, Inc. v. Simon S. McNally

Claim Number: FA0212000137169

PARTIES

Complainant is duPont Publishing, Inc., St. Petersburg, FL (“Complainant”) represented by J. Douglas Baldridge, of Howrey Simon Arnold & White.  Respondent is Simon S. McNally, Lancashire (“Respondent”) represented by Simon S. McNally.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dupontregistry.biz>, registered with CSL COMPUTER SERVICE (D.B.A. JOKER.COM).

PANEL

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

Edward C. Chiasson, Q.C. as Panelist.

PROCEDURAL HISTORY

The Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 18, 2002; the Forum received a hard copy of the Complaint on December 19, 2002.

On December 20, 2002, CSL COMPUTER SERVICE (D.B.A. JOKER.COM) confirmed by e-mail to the Forum that the domain name <dupontregistry.biz> is registered with CSL COMPUTER SERVICE (D.B.A. JOKER.COM) and that the Respondent is the current registrant of the name.  CSL COMPUTER SERVICE (D.B.A. JOKER.COM) has verified that Respondent is bound by the CSL COMPUTER SERVICE (D.B.A. JOKER.COM) 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 December 20, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of, 2002 by which the Respondent could file a Response to the Complaint, was transmitted to the 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@dupontregistry.biz by e-mail.

A timely Response was received and determined to be complete on January 9, 2003.

On January 13, and 20, 2003, the Complainant and the Respondent respectivley filed timely additional material.

On January 22, 2003, pursuant to the Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Edward C. Chiasson, Q.C. as Panelist.

RELIEF SOUGHT

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

BACKGROUND INFORMATION

A. Complainant

The following information derives from the Complaint.

The Complainant publishes magazines devoted to luxury items, including without limitation, automobiles, yachts and homes.  These publications target the international high-end luxury market and attract advertisers that promote collectible, customized and luxury goods to affluent customers.

The Complainant first published the duPont REGISTRY magazine in 1985 as an international forum for owners or dealers in exotic, collectible and luxury automobiles.

Since then the Complainant has expanded to separate magazines devoted to luxury yachts and homes.  The magazines include: A BUYERS GALERY OF FINE BOATS; A BUYERS GALLERY OF FINE AUTOMOBILES; A BUYERS GALLERY OF FINE HOMES (“the duPont REGISTRY publications.")  On each of these publications the duPont REGISTRY mark is prominently displayed to identify the source of the magazine. 

The Complainant's magazines are distributed in a number of international jurisdictions, including the United States and the United Kingdom.

The Complainant also has developed a significant presence on the Internet, including its website accessible through the address <dupontregistry.com>.  Four to five million persons each month obtain access to the Complainant’s web site connected with this domain name.  The Complainant’s website includes the duPont REGISTRY publications, as well as commentary and opinions from affluent celebrities.

In connection with the duPont REGISTRY publications, the Complainant owns the following United States trademark applications, among others (the “duPont REGISTRY marks”):

Trademark

Country

Serial No.  Registration No.

Filing
Date

Exhibit Number

DUPONTREGISTRY.COM

U.S.

2,616,090

7/2/96

4

DR DUPONT REGISTRY (Stylized)

U.S.

75/635,068

1/28/99

5

DUPONT REGISTRY A BUYERS GALLERY OF FINE AUTOMOBILES (Stylized)

U.S.

76/424,835

6/18/02

6

DUPONT REGISTRY A BUYERS GALLERY OF FINE BOATS (Stylized)

U.S.

76/424,836

6/18/02

7

DUPONT REGISTRY A BUYERS GALLERY OF FINE HOMES (Stylized)

U.S.

76/424,837

6/18/02

8

For over fifteen years, the Complainant has prominently and extensively used, promoted, and advertised its duPont REGISTRY mark and more recently its <dupontregistry.com> domain name.  The Complainant has spent millions of dollars promoting its magazines through varied promotional and advertising media.

By virtue of the Complainant’s extensive marketing of its duPont REGISTRY magazines, the duPont REGISTRY marks and domain name have become recognized by high-end luxury consumers throughout the world as designating the Complainant as the source of the publications so marked.

A recent newscast referred to the Complainant as the “world famous duPont REGISTRY” and a feature story about the Complainant on “Lifestyles of the Rich and Famous”, which was run dozens of times throughout the United States and internationally, focused on the fame of duPont REGISTRY among the “rich and famous.” 

The Respondent registered the subject domain name on November 14, 2001, which was after the duPont REGISTRY marks achieved consumer recognition.

duPont REGISTRY is a distinctive term which, in composite form, has no meaning outside its use as a means to identify the Complainant as a source of certain products and services.

The Respondent is not a licensee of the Complainant and is not otherwise authorized to use the Complainant’s marks for any purpose.

The Respondent is not known commonly by the subject domain name.

The Respondent has made no efforts to develop an active web site in connection with the subject domain name before or since registering the name as is evidenced by The Administrative and Technical Contact's "Domain Under Construction" page to which the subject domain name resolves, that is, the Respondent currently is making no use of the subject domain name.

The Respondent registered the subject domain name with Joker.com after the Complainant’s adoption, use and applications for its duPont REGISTRY marks, but it has held the subject domain name for over a year without making any apparent steps to activate it. 

B. Respondent

     The following information derives from the Response.

The Respondent has no interest in <dupontregistry.com> in the United States and does not wish to sell, promote or manufacture goods in the United States.

The Respondent is the Managing Director of Dupont Registry Limited, a limited company incorporated in England.

The Respondent denies that he has committed any deliberate wrong-doing and says that he owns the British trademark for dupont registry.  He asserts that the Complainant has infringed his trademark rights by using the words “dupont registry” on its magazines.

The Respondent states that it does not wish to sell the subject domain name.

Any delay developing the site to which the subject domain resolves was due to a very serious injury to the Respondent which left him in a coma and in hospital for a long time.

C. Additional Submissions

     The following information derives from the Complainant’s additional submission.

The date of incorporation of the Respondent’s company was January 6, 2003 and on the basis of various searches, there is no indication that the company is active.  There is no telephone listing for the company.

The Respondent does not have a trademark registration for the words “dupont registry”.  It merely has applied for one.  The application has not been published for opposition and when it is, the Complainant will oppose.

Notwithstanding the Respondent’s “illness” he has had “…a significant amount of time to develop his web site”. He was healthy enough to file a trademark application in August 2002 and to register his company in January 2003.

The Respondent’s trademark application covers essentially the same goods and services as the Complainant’s marks.

The following information derives from the Respondent’s addition submission.

Neither the Respondent not his company is listed in any telephone directories to avoid “…many pointless calls and junkmail from either sales people or non lead enquiries”.

The corporate search appended to the Complainant’s additional submission describes the Respondent’s company as active.

The Respondent has been very busy and had no reason to incorporate until 2003.  He states that it “…does take time if your learning website construction with good security from scratch”.

The Respondent states that he has “…no reason to divert customers in bad faith”.

The Respondent’s “…coma was not due to illness, it was caused by bodily injury, which takes a long time for recovery”.

In answer to the Complainant’s contention that the he was well enough to apply to register his trademark and company, but did not develop his web site, the Respondent states that “[t]his is because I have trouble understanding design and running of a website but have the knowledge of running a company”.  He asserts that: “I do not want to design a cheap website as this rubs off [sic] on my company…I’m [sic] not in a rush at the moment due to been very busy.  I am setting everything up slowly but surely as I do not want to cause customer complaints due to domain crashing or un-answered emails”.

PARTIES’ CONTENTIONS

        Complainant

The Complainant relies on its registration and use of the words “dupont registry”.  It asserts that the subject domain name is either identical or confusingly similar to the Complainant’s marks and states: “[a]ny difference between [the Complainant’s] duPont REGISTRY marks and [the subject] domain name is an irrelevant distinction which does not change the confusing similarity between the terms.

A lack of legitimate interest is said to be evidenced by the Respondent’s lack of use of the subject domain name and the fact that the Respondent has not been authorized by the Complainant to use its mark.  Registration of the Respondent’s company was after this proceeding was initiated.  The Respondent must have known about the Complainant and his trademark application is for essentially the same products marketed by the Complainant.  The Respondent is not known commonly by the words “dupont registry”.

Similar facts are relied in support of the contention that the subject domain name has been registered and is being used in bad faith. The Respondent’s lack of preparation of a web site is said to constitute passive use. 

   Respondent

The Respondent does not dispute the existence of the Complainant’s mark or its relationship to the subject domain name.

The Respondent asserts that he has no interest in the Complainant and does not want to “sell/promote or manufacturer goods within the USA”.  He asserts that he owns the trademark “dupont registry” for the United Kingdom.

Any delay was caused by an injury and the need to understand the required technology.

DISCUSSION

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.

The Complainant relies on a number of decisions in previous domain name disputes.  While these are neither controlling nor binding on this administrative panel, reference to them often is of assistance.  This case must be decided within the context of the Policy and the facts presented by the parties.

Identical or confusingly similar

The Complainant’s position on the first issue is somewhat ambiguous.  It contends that the subject domain name is identical or confusingly similar to the Complainant’s marks. The two are not synonymous and require different considerations.  The Complainant argues that the subject domain name is confusingly similar, because if differs with the Complainant’s marks only by the addition of .biz.

The addition of .biz is of no consequence.

In any event, the Respondent contests neither the Complainant’s rights in the words “dupont registry” nor their relationship to the subject domain name.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).

Legitimate interest

The Complainant points to many of the usual indicia: a lack of legitimate interest; no         authorization; a lack of use; not known by the words “dupont registry”.  The Respondent offers an explanation for the latter, but the Complainant reviewed the available time and questions the Respondent’s explanation.

The Complainant does not state when it first learned of the Respondent’s registration of the subject domain name and provides no information that it contacted or attempted to contact the Respondent, but it contends that the Respondent knew of the Complainant’s marks at the time it registered the subject domain name.  The Respondent does not deny this contention.

Although the Respondent incorporated a company, his timing is suspect. This proceeding was initiated on December 18, 2002.  The Respondent was notified on December 20, 2002.  He asserts that he had no prior need to incorporate and that neither he nor his company are in any telephone directories in order to avoid “…many pointless calls and junkmail form either sales people or non lead enquiries”.

The Respondent notes that the corporate search material supplied by the Complainant shows his company as “active”.  Nothing turns on this fact. The company was incorporated only recently and would be shown as such.  The Respondent gives no indication of what activity is planned for the company or when it will undertake business.  There is no explanation why he felt it necessary to incorporate in January 2003.

The delay in developing a web site is said by the Respondent to have been caused, in part, by his injury, but also by a lack of understanding of technology and a desire not to offend potential customers by poor technological service.

The only information concerning the Respondent’s intended commercial interests is provided by the scope of activity described in his trademark application.  It was made some time after the registration of the subject domain name.

The facts alluded to by the Complainant support an inference that the Respondent does not have a legitimate interest in the subject domain name.  It is apparent that the Complainant has been active in the United Kingdom.  The Complainant asserts that the Respondent must have known of that activity when it registered the subject domain name and the Respondent does not deny the assertion.  The fact coupled with no information concerning the proposed business activity of the Respondent further supports the Complainant’s position.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).

Bad faith

A finding that a respondent does not have a legitimate interest in a domain name that is identical or confusingly similar to a mark does not lead automatically to a conclusion of bad faith, but the facts that support the finding may be relevant.

In this case, the Complainant relies on the alleged notoriety of its mark and its use of its mark and asserts that the Respondent must have known of the Complainant and its use prior to registering the subject domain name.  The Respondent’s subsequent trademark application covers the products that the Complainant sells.

The timing of the Respondent’s registration of his company tells against him.  His explanations for delay are somewhat contradictory or, at least, inconsistent. 

The Respondent denies that he intends to sell the subject domain name and the Complainant offers no information that it has made any effort to acquire the subject domain name from the Respondent.  It is usual for respondents to do so.  In addition, it is helpful for an administrative panel to know when a complainant first learned of the domain name in issue.  The matters weaken the Complainant’s case.

A domain name dispute is not usually a forum in which to resolve disputes concerning the ownership of trademarks.  It also has a limited capacity to consider contested issues of fact.  This case raises both matters, albeit somewhat indirectly.

The Administrative Panel does not opine on the legitimacy of the Respondent’s United Kingdom trademark application save to note that the Respondent’s assertion that “I own the trademark” was not accurate.

The factual contest in this case is contextual.  There are few facts that are controverted directly.  It is the inferences from the facts that engage the issues.  The Administrative Panel must decide this case based on its overall assessment of the facts and context of the dispute.

In summary: the Respondent knew of the Complainant and its mark at the time the subject domain name was registered; there has been no use of the subject domain name and the Respondent’s explanations for his inactivity are unsatisfactory; there is no apparent business plan; passive use of the subject domain name blocks the Complainant from acquiring it.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).

FINDINGS

Identical or confusingly similar

The subject domain name is identical to the Complainant’s marks.

Rights or legitimate interests

The Respondent does not have a legitimate interest in the subject domain name.

Registration and use in bad faith

The subject domain name has been registered and is being used in bad faith.

DECISION

Based on the information provided to it and on its findings of fact, the Administrative Panel concludes that the Complainant has established its case. 

The Complainant requests that the subject domain name be transferred to it.  The Administrative Panel so orders.

Edward C. Chiasson, Q.C., Panelist
Dated:  February 3, 2003


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