DECISION

MCC Magazines, LLC v. Gilinda G. Rogers

Claim Number: FA0307000170517

PARTIES

Complainant is MCC Magazines, LLC, Augusta, GA (“Complainant”) represented by Timothy E. Moses of Hull, Towill, Norman, Barrett & Salley, P.C. Respondent is Gilinda G. Rogers, Williamsburg, VA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bestofaugusta.com> registered with Network Solutions, Inc.

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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 18, 2003; the Forum received a hard copy of the Complaint on July 18, 2003.

On July 28, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <bestofaugusta.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 July 28, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 18, 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@bestofaugusta.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 August 21, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 makes the following assertions:

1. Respondent’s <bestofaugusta.com> domain name is identical to Complainant’s BEST OF AUGUSTA mark.

2. Respondent does not have any rights or legitimate interests in the <bestofaugusta.com> domain name.

3. Respondent registered and used the <bestofaugusta.com> domain name in bad faith.

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

FINDINGS

Complainant holds a federal trademark registration with the United States Patent and Trademark Office (“USPTO”) for the BEST OF AUGUSTA mark related to a magazine section featuring restaurants, shopping, entertainment, events, culture, news, products and services of interest in Augusta, and educational services, namely, providing incentives to people and organizations to demonstrate excellence in the fields of restaurants, businesses, arts, music, media and entertainment through the issuance of awards. Complainant has used the trademark in print since October 1984 and on-line since 1994 in relation to an annual BEST OF AUGUSTA promotion in a magazine entitled Augusta Magazine.

Respondent registered the <bestofaugusta.com> domain name on May 16, 2000. Respondent is using the disputed domain name to promote its website, which features on-line voting for Internet users’ favorite shops, restaurants, attractions and personalities in the Augusta, Georgia area in competition with Complainant’s annual promotion.

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 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 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 its rights in the BEST OF AUGUSTA mark through registration with the USPTO. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”).

Complainant argues that Respondent’s <bestofaugusta.com> domain name is identical to Complainant’s mark because the disputed domain name appropriates Complainant’s entire mark and merely omits the spaces between the words and adds the generic top-level domain (“gTLD”) “.com” to the end of the mark. Neither the omission of the spaces nor the addition of the gTLD significanty differentiates the <bestofaugusta.com> domain name from the BEST OF AUGUSTA mark for purposes of Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has neglected to respond to Complainant’s allegations. Therefore, the Panel accepts all reasonable allegations and inferences in the Complaint to be true. See Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Furthermore, by neglecting to respond, Respondent has failed to invoke any circumstances that could demonstrate rights to or legitimate interests in the <bestofaugusta.com> domain name. After Complainant has asserted a prima facie case against Respondent, the burden shifts to Respondent to show that it has rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a response or provided the Panel with evidence to suggest otherwise); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).

Respondent is using the <bestofaugusta.com> domain name to redirect Internet traffic to a website that offers Internet users the opportunity to vote for their favorite shops, restaurants, attractions and personalities in the Augusta, Georgia area. Respondent’s use of a domain name identical to Complainant’s BEST OF AUGUSTA mark to offer similar goods and services as those offered by Complainant is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Avery Dennison Corp. v. Ray Steele d/b/a Mercian Labels Ltd. & selfadhesivelabels.com, FA 133626 (Nat. Arb. Forum Jan. 10, 2003) (finding that Respondent had no rights or legitimate interests in the disputed domain name where it used Complainant’s mark, without authorization, to attract Internet users to its business, which competed with Complainant); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no rights or legitimate interests in a domain name that diverted Internet users to Respondent’s competing website through the use of Complainant’s mark).

Moreover, Respondent has produced no evidence and there is no indication in the record that Respondent is commonly known by BEST OF AUGUSTA or <bestofaugusta.com>. Therefore, the Panel finds that Respondent has failed to establish any rights to or legitimate interests in the disputed domain name in accord with 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 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").

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

Registration and Use in Bad Faith

Respondent’s commercial use of a domain name identical to Complainant’s BEST OF AUGUSTA mark to offer goods and services in competition with those offered by Complainant suggests an intent to confuse Internet users. Respondent’s use of the disputed domain name to attract Internet traffic to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s mark demonstrates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same chat services via his website as Complainant); see also 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).

Moreover, Respondent’s registration of a domain name identical to Complainant’s mark to offer similar goods and services as those offered by Complainant implies that the <bestofaugusta.com> domain name was registered primarily for the purpose of disrupting the business of a competitor, which evidences bad faith registration and use under Policy ¶ 4(b)(iii). See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area); see also Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion).

The Panel finds that Complainant has established Policy ¶ 4(a)(iii).

DECISION

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

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

John J. Upchurch , Panelist

Dated:  August 25, 2003

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