DECISION

Reed Elsevier Properties Inc. and Reed Elsevier Inc. v. Weekly Publishers

Claim Number: FA0303000151536

PARTIES

Complainant is Reed Elsevier Properties Inc. and Reed Elsevier Inc., Wilmington, DE (“Complainant”) represented by David Kelly, of Finnegan Henderson Farabow Garrett & Dunner LLP.  Respondent is Weekly Publishers, Garden City, GA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <weeklypublishers.com>, registered with Tucows.

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 25, 2003; the Forum received a hard copy of the Complaint on March 26, 2003.

On March 25, 2003, Tucows confirmed by e-mail to the Forum that the domain name <weeklypublishers.com > is registered with Tucows and that the Respondent is the current registrant of the name.  Tucows has verified that Respondent is bound by the Tucows 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 26, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 15, 2003 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@weeklypublishers.com by e-mail.

A timely Response was received and determined to be complete on April 15, 2003.

On April 21, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

The domain name <weeklypublishers.com > fully incorporates and is confusingly similar to Complainant’s federally registered PUBLISHERS WEEKLY mark.  Respondent does not have any rights or a legitimate interest in the domain name because Respondent contains and trades on the goodwill of Complainant’s PUBLISHERS WEEKLY mark, and Respondent’s use of that mark and name are unauthorized.  Respondent is not and has never been a licensee of Complainant.  Respondent is not authorized by Complainant to use the PUBLISHERS WEEKLY mark.  Respondent’s registration and use of the domain name meet the bad faith requirement described in Paragraph 4(a) of the UDRP.

B. Respondent

There is no similarity between the market, design, or mission of Weekly Publisher's Syndicate and Complainant.  Respondent argues that the name “weekly publishers” is a descriptive term that describes Respondent’s market.  Respondent contends that Complainant has failed to offer any evidence of actual confusion resulting from Respondent’s use of the <weeklypublishers.com> domain name. 

Respondent asserts that its business is a forum for cartoonists to bring their features to weekly publications across North America.  Respondent notes that its website is the only means it uses to disseminate its purchased cartoons to its customers.  Customers access a web page at <weeklypublishers.com> where they can download the cartoons they purchase from Respondent.  Respondent currently has over 100 subscribers to its services, equating a combined readership of half a million people.  Respondent argues that this group is known to the newspaper industry as “weekly publishers.”  Respondent says that it is not a competitor of Complainant. 

FINDINGS

1. Complainant Reed Elsevier Properties Inc. is a Delaware corporation with its principal place of business located in Wilmington, Delaware.  Complainant Reed Elsevier Inc. is a Massachusetts corporation with its principal place of business in New York, New York.  Reed Elsevier Properties Inc. is an intellectual property holding company that owns the trademark PUBLISHERS WEEKLY, among others, and Reed Elsevier Inc. is the licensee of that mark. 

2. Reed Elsevier is a worldwide publisher and information provider whose principal operations are located in North America. 

3. Reed Elsevier owns the PUBLISHERS WEEKLY magazine, a 129-year-old international news magazine.  PUBLISHERS WEEKLY is a leading publication of the $23 billion book industry, and focuses on the acquisition, sale, distribution, and rights of intellectual and cultural properties. PUBLISHERS WEEKLY provides news and information about publishing in many different categories, such as comics, children’s books, and religion, to name a few.

4. Subscribers and advertisers to the PUBLISHERS WEEKLY magazine include newspapers, syndication services, bookstores, libraries, movie studios and agencies, as well as comics publishers, authors and others in the publishing industry.  PUBLISHERS WEEKLY reaches more than 100,000 subscribers every week.  PUBLISHERS WEEKLY provides unique industry data, including bestseller information by multiple categories, book industry statistics, and news.  PUBLISHERS WEEKLY also publishes and syndicates more than 7,500 critical reviews of books, audio books, and e-books annually. 

5. Reed Elsevier’s official web site for its PUBLISHERS WEEKLY magazine is located at the domain name <publishersweekly.com>, which was registered on April 1, 1996.

6. Having been widely promoted among members of the general consuming public for more than 125 years and having exclusively identified Reed Elsevier’s PUBLISHERS WEEKLY magazine, the PUBLISHERS WEEKLY mark symbolizes the tremendous goodwill associated with Reed Elsevier and its PUBLISHERS WEEKLY magazine.  Furthermore, due to widespread and substantial national use, the PUBLISHERS WEEKLY mark has become famous throughout the United States, particularly in the publishing industry.

7. Reed Elsevier Properties owns United States Registration No. 393,903 for the mark PUBLISHERS WEEKLY, first used January 5, 1878, issued March 10, 1942, covering periodicals published weekly in International Class 16.

8. Reed Elsevier’s trademark rights in the PUBLISHERS WEEKLY mark, based on its federal trademark registration and on its more than 125 years of use of the PUBLISHERS WEEKLY mark, predate, by well over a century, Respondent’s registration of the disputed domain name <weeklypublishers.com>.

9. Respondent Weekly Publishers registered the domain name on May 23, 2002.  Respondent currently uses the <weeklypublishers.com> domain name for a commercial website offering syndication services for comics, humor columns, and puzzles to newspapers and possibly other publications.  In addition to selling content, Respondent uses the website to solicit content from artists and writers.  Respondent’s <weeklypublishers.com> website is also used to market a comic strip titled “Gunchello” and editorial cartoons authored by Jerry Seltzer, the administrative contact for the domain name. 

10. Respondent asserts that its business is a forum for cartoonists to bring their features to weekly publications across North America.  Respondent notes that its website is the only means it uses to disseminate its purchased cartoons to its customers.  Customers access a web page at <weeklypublishers.com> where they can download the cartoons they purchase from Respondent.  Respondent claims to have over 100 subscribers to its services, equating a combined readership of half a million people.

11. The client base of Respondent’s company consists entirely of entities that identify themselves as community newspapers, weekly newspapers or alternative weeklies. Respondent claims that, as a whole, this group is widely recognized in the newspaper industry as "weekly publishers."  Since Respondent’s purpose was to serve this group, Respondent adopted the name Weekly Publisher's Syndicate.

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.

Identical and/or Confusingly Similar

Complainant holds a mark for PUBLISHERS WEEKLY registered with the U.S. Patent and Trademark Office (Reg. No. 393,903) on March 10, 1942.  Complainant has used the PUBLISHERS WEEKLY mark since 1878 in relation to its international news magazine for the book industry.

Complainant asserts that Respondent’s <weeklypublishers.com> domain name is confusingly similar to its PUBLISHERS WEEKLY mark because it merely transposes the two words within Complainant’s mark.  Inverting or transposing words in a trademark is not sufficient to avoid confusing similarity because the two words create the same commercial impression and meaning.  See NCRAS Management, LP v. Cupcake City, D2000-1803 (WIPO Feb. 26, 2001) (finding the domain name <nationalrentalcar.com> confusingly similar to the mark NATIONAL CAR RENTAL and holding that “merely inverting the terms of a mark . . . is insufficient to dispel consumer confusion; the mark and the resulting domain name are simply too similar to each other”); see also Playboy Enterprises v. Movie Name Company, D2001-1201 (WIPO Feb. 26, 2002) (finding the domain name <channelplayboy.com> confusingly similar to the mark THE PLAYBOY CHANNEL); see also Toronto Convention & Visitors Ass’n v. This Domain is For Sale, D2001-1463 (WIPO Feb. 25, 2002) (finding that there would be no reason to distinguish between <tourismtoronto.com> and TORONTO TOURISM).

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

Rights or Legitimate Interests

Respondent operates in a similar field as Complainant and therefore Respondent competes with Complainant.  Complainant operates in the book publishing field, whereas Respondent operates in the weekly newspaper publishing field.  Respondent’s use of the domain name for a competing website does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when Respondent is using a domain name identical to Complainant’s mark and is offering similar services); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. Carlos M. Alvarez d/b/a IT Lexis FA 98249 (Nat. Arb. Forum August 20, 2001)(finding respondent’s use of the domain name to offer competing services in the same general field as complainant not to constitute a bona fide offering of goods and services under the UDRP);  see also Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. Ulexis a/k/a Lawfirm FA97684 (Nat. Arb. Forum August 3, 2001) (finding no legitimate interest when respondent used the disputed domain name to offer similar/related services and to divert potential customers to its competing website).

Respondent is not commonly known as WEEKLY PUBLISHERS or <weeklypublishers.com> because Respondent cannot justify its misappropriation of Complainant’s PUBLISHERS WEEKLY trademark in a domain name by the mere use of <weeklypublishers.com> as a trade name.  Thus, Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii) even though the name of Respondent’s business is WEEKLY PUBLISHERS.  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Eurotech, Inc. v. Cosmos European Travels AG, 213 F. Supp.2d 612 (E.D. Va. 2002) (infringer's incorporation of the allegedly infringing domain name did not make it a legal name or commonly used name).

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

Registration and Use in Bad Faith

Respondent registered and is using the <weeklypublishers.com> domain name to create a likelihood of confusion for Respondent’s commercial gain.  By inverting the words of the PUBLISHERS WEEKLY mark, Respondent is creating user confusion to attract potential clients to its website.  See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked <drmath.com>, which contains Complainant’s Dr. Math mark, to a website run by the Respondent, creating confusion for Internet users regarding the endorsement, sponsorship, or affiliation of the website); see also Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. Pacific Coast Studios FA 95747 (Nat. Arb. Forum October 27, 2000) (finding bad faith in respondent’s registration of a domain name incorporating complainant’s mark and use of the domain name to offer similar services).

Respondent acted in bad faith when it registered the domain name because it knew of or should have known of Complainant’s rights in the PUBLISHERS WEEKLY mark, especially given the fact that Respondent and Complainant are in the same industry.  See Reed Elsevier Properties Inc. v. David Allen FA 96667 (Nat. Arb. Forum March 21, 2001) (finding bad faith when respondent registered the disputed domain names with knowledge of complainant’s rights in its mark and used the domain name to offer related services); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").

Thus, 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 GRANTED.

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

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 5, 2003

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