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PRIMEDIA Inc. v. Yong Li [2003] GENDND 43 (14 January 2003)


National Arbitration Forum

DECISION

PRIMEDIA Inc. v. Yong Li

Claim Number: FA0212000135613

PARTIES

Complainant is PRIMEDIA Inc., New York, NY, USA (“Complainant”).  Respondent is Yong Li, Beijing, CHINA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <nymagazine.com>, registered with iHoldings.com, Inc. d/b/a DotRegistrar.com.

PANEL

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

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 3, 2002; the Forum received a hard copy of the Complaint on December 4, 2002.

On December 11, 2002, iHoldings.com, Inc. d/b/a DotRegistrar.com confirmed by e-mail to the Forum that the domain name <nymagazine.com> is registered with iHoldings.com, Inc. d/b/a DotRegistrar.com and that Respondent is the current registrant of the name.  iHoldings.com, Inc. d/b/a DotRegistrar.com has verified that Respondent is bound by the iHoldings.com, Inc. d/b/a DotRegistrar.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 11, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 31, 2002 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@nymagazine.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 January 8, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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 Respondent.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant’s submission makes the following contentions:

1. Respondent’s <nymagazine.com> domain name is confusingly similar to Complainant’s NEW YORK registered mark and New York Magazine publication.

2. Respondent does not have any rights or legitimate interests in the subject domain name.

3. Respondent registered and used the subject domain name in bad faith.

A. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, PRIMEDIA Inc., is a “leading targeted content and integrated marketing solutions company in both the consumer and business-to-business sectors.” Complainant represents the number one special interest magazine publisher in the United States, the number one producer and distributor of specialty video, and the number one news and information group on the Internet.

Complainant is the owner and publisher of New York Magazine, a weekly publication and “one of the oldest city magazines in the United States” founded in 1968. Complainant has invested significant resources to market the “New York” brand, including, for example, creating and circulating a periodic companion entitled New York Magazine Shops that sponsors numerous events in the New York City metropolitan area. Complainant’s New York Magazine hosts many of the most popular magazine columns in New York City, including, inter alia: Intelligencer, Gotham, Best Bets, Strictly Personals, The City Politic, and Cue. Complainant’s New York Magazine has an active circulation of approximately 430,000 and reaches individuals throughout the United States and abroad.

Complainant was issued U.S. Patent and Trademark Office (“USPTO”) registrations for the trademarks NEW YORK and NEW YORK (stylized). More specifically, Complainant holds the following registration numbers: 1,136,766 registered on June 10, 1980 for the NEW YORK mark; and, 1,135,730 registered on May 20, 1980 for the NEW YORK (stylized) mark. Complainant has also submitted trademark applications for another NEW YORK trademark and a NEW YORK MAGAZINE SHOPS (stylized) mark. Complainant’s registrations relate to “publications concerning life in the New York City metropolitan area, namely, magazines, books and maps.”

In addition to the print publication, Complainant conducts its operations from the following domain names: <nymag.com>, <newyorkmagazine.com> and <newyorkmetro.com>. In October 2002, the New York Magazine website received approximately 5.53 million page views and over 550,000 unique visitors, making it one of the top destinations on the Internet for New York City related information.

Respondent registered the <nymagazine.com> domain name on June 9, 2002. Complainant’s investigation of Respondent’s use of the subject domain name indicates that when entering <nymagazine.com> as a domain name, Internet users are automatically redirected to a website located at <gotoo.com/treasure/NewYork.html>. The redirected page is purportedly operated by Usubscribe.com, a magazine subscription service that offers subscriptions to Complainant’s New York Magazine. Complainant has never licensed or provided Respondent with authorization to sell the New York Magazine.

Additionally, Internet users who key Respondent’s domain name into the Internet browser are confronted with pop-up advertisements for “Virtual Reality Casino.” When Internet users attempt to close the redirected page a series of additional pop-up advertisements are launched requiring the user to close additional websites before exiting the redirected page, a technique commonly referred to as mousetrapping.

DISCUSSION

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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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.

Identical and/or Confusingly Similar

Complainant has established rights in the NEW YORK mark regarding “publications concerning life in the New York City metropolitan area, namely, magazines, books and maps” through successfully registering the mark with the USPTO. Complainant has established rights in the aforementioned mark through continuous use of the mark to denote its magazine product since 1968.

Respondent’s <nymagazine.com> domain name is confusingly similar to Complainant’s NEW YORK mark because Complainant’s mark specifically denotes “publications. . .namely, magazines, books and maps.” Respondent’s domain name incorporates a common geographical abbreviation for Complainant’s NEW YORK mark, namely, “NY.” Precedent has determined that common abbreviations of established marks and geographical locations fail to create distinguishing characteristics for the purpose of a Policy ¶ 4(a)(i) analysis. See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated); see also Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name is confusingly similar to Complainant’s MINNESOTA STATE LOTTERY registered mark).

Respondent’s <nymagazine.com> domain name incorporates the word “magazine,” which, as stated, holds particular relevance to Complainant and the NEW YORK mark. Complainant’s NEW YORK mark and registration specifically denote Complainant’s established magazine product and corresponding service. Therefore, Respondent’s addition of a word that has an obvious relationship to Complainant’s business and NEW YORK mark fails to distinguish the domain name; thus, Respondent’s domain name is rendered confusingly similar. See Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business).

Additionally, because top-level domains (such as “.com”) represent a required feature in domain names, their presence is inconsequential. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to respond, thereby leaving Complainant’s evidence and assertions uncontested. Because Complainant has submitted a prima facie case to the Panel and fulfilled its initial burden presented by Policy ¶¶ 4(a)(i) – (iii), the responsibility of demonstrating rights and legitimate interests shifts to Respondent. By failing to submit a Response, Respondent has failed to present circumstances that would demonstrate that it has a legitimate interest in the <nymagazine.com> domain name. Therefore, all reasonable inferences enunciated in the Complaint will be accepted as true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain name, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Uncontested evidence indicates that Respondent utilizes the infringing domain name to ensnare unsuspecting Internet users, and subsequently redirects the Internet users to a commercial website. Additionally, Internet users who attempt to exit the redirected location are barraged with pop-up advertisements, some of which offer gambling and casino services. Respondent’s diversionary use of Complainant’s mark in its domain name fails to constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i). Further, because Respondent presumably benefits from its use of pop-up advertisements through commissions or other typical forms of compensation, its commercial use of Complainant’s mark does not qualify for protection under Policy ¶ 4(c)(iii). See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using Complainant’s mark by redirecting Internet traffic to its own website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”).

No evidence before the Panel indicates that Respondent, Yong Li, is commonly known by the <nymagazine.com> domain name or the “NYMAGAZINE” second-level domain. Complainant’s investigation of Respondent indicates that the redirected page is purportedly operated by Usubscribe.com, a magazine subscription service. Complainant maintains that Respondent is making unauthorized use of the NEW YORK mark in selling Complainant’s product on the infringing website. Therefore, Respondent fails to establish rights or legitimate interests under Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Complainant’s submission indicates that Respondent registered and used the subject domain name in bad faith under Policy ¶ 4(b)(iv). The aforementioned circumstances illustrate Respondent’s intentions to opportunistically benefit from Complainant’s NEW YORK mark and New York Magazine product. Respondent not only uses Complainant’s mark in a confusingly similar domain name for diversionary purposes, but also utilizes the technique of mousetrapping in forcing Internet users to address numerous pop-up advertisements. Such use warrants a finding of bad faith under the Policy because Respondent has intentionally attempted to attract, presumably for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s mark. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.

Accordingly, it is Ordered that the <nymagazine.com> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated: January 14, 2003


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