DECISION

Newbury Ventures v. WMW Web Inc.

Claim Number:  FA0406000290686

PARTIES

Complainant is Newbury Ventures (“Complainant”), represented by Andree Merchant, 4 Orinda Way Suite 200B, Orinda, CA 94563.  Respondent is WMW Web Inc. (“Respondent”), 3422 Old Capitol Trail, #1228, Wilmington, DE 19808.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <newburyventures.com>, registered with Computer Services Langenbach Gmbh d/b/a Joker.com.

PANEL

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

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically June 28, 2004; the Forum received a hard copy of the Complaint September 10, 2004.

On September 13, 2004, Computer Services Langenbach Gmbh d/b/a Joker.com confirmed by e-mail to the Forum that the domain name <newburyventures.com> is registered with Computer Services Langenbach Gmbh d/b/a Joker.com and that Respondent is the current registrant of the name. Computer Services Langenbach Gmbh d/b/a Joker.com verified that Respondent is bound by the Computer Services Langenbach Gmbh d/b/a Joker.com registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On September 15, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 15, 2004, 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@newburyventures.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 October 13, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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. The domain name that Respondent registered, <newburyventures.com>, is identical similar to Complainant’s NEWBURY VENTURES mark.

2. Respondent has no rights to or legitimate interests in the <newburyventures.com> domain name.

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

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

FINDINGS

Complainant is the owner of common law trademark rights stemming from long and exclusive use of the NEWBURY VENTURES mark in commerce.  Complainant’s business is a venture capital firm, established and incorporated in California in 1992, with offices in California, Ontario, Canada, and Paris, France.  Complainant actively and widely has used and promoted financial services under its NEWBURY VENTURES mark, financing more than 100 companies.  Complainant currently holds a pending trademark application for the NEWBURY VENTURES mark with the United States Patent and Trademark Office.  Complainant also owned registration rights to the <newburyventures.com> domain name, but inadvertently allowed the registration for the domain name to lapse.

Respondent registered the <newburyventures.com> domain name August 1, 2003.  Respondent has used the domain name to post links to pornographic and other sexually explicit, adult-related content.  Respondent has also offered the <newburyventures.com> domain name registration for sale, along with some 60 other domain name registrations.

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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires Complainant to 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 to and/or Confusingly Similar

Complainant established with extrinsic proof in this proceeding that it has rights in the NEWBURY VENTURES mark through continuous use of the mark in commerce since 1992, along with allegations of pending trademark application for the mark with the United States Patent and Trademark Office. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).

The domain name registered by Respondent, <newburyventures.com>, is identical to Complainant’s NEWBURY VENTURES mark because the only difference between the two is the addition of the top-level domain “.com.”  The addition of the top-level domain is insufficient to distinguish the domain name from the mark under Policy ¶ 4(a)(i).  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); see also Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to Complainant's registered trademark GAY GAMES); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding the <bodybyvictoria.com> domain name identical to Complainant’s BODY BY VICTORIA mark).

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

Rights to or Legitimate Interests

Complainant established its rights to the NEWBURY VENTURES mark and alleges that Respondent lacks such rights and legitimate interests in the <newburyventures.com> domain name containing in its entirety Complainant’s mark.  Once Complainant makes a prima facie case supporting its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  This Panel will assume that Respondent lacks rights and legitimate interests in the disputed name, because Respondent has not responded to the Complaint.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent wholly appropriated Complainant’s mark to advertise pornography along the sale of domain name registrations.  The Panel finds that use of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to 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 using Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”).

Furthermore, nothing in the record or the WHOIS database suggests that Respondent is commonly known by the <newburyventures.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Nokia Corp. v. Nokiagirls.com, D2000-0102 (WIPO Apr. 18, 2000) (finding that Respondent has no rights or legitimate interests in the <nokiagirls.com> domain name because there was no element on the website that would justify use of the word NOKIA within the domain name).

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

Registration and Use in Bad Faith

Complainant alleges that Respondent acted in bad faith by intentionally registering a domain name that contains in its entirety Complainant’s NEWBURY VENTURES mark and in doing so for Respondent’s own commercial gain.  Respondent’s domain name diverts Internet users who seek Complainant’s NEWBURY VENTURES mark to Respondent’s commercial website through the use of a domain name that is identical to Complainant’s mark.  Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See 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 Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Bank of America Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)); see also 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).

Additionally, Respondent’s use of a domain name that is identical to Complainant’s mark to advertise pornography is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii).  See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s use of Complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name); see also National Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan. 23, 2002) (stating that “it is now well known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques”); see also Land O’ Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding that use of a domain name to attract/redirect to another pornographic site is not a legitimate use).

Moreover, Respondent’s attempt to sell the <newburyventures.com> domain name registration is further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(i).  See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding bad faith where Respondent offered the domain name for sale for $150,000 the day after registration of the domain name); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding bad faith based on the apparent willingness of Respondent to sell the domain name in issue from the outset, albeit not at a price reflecting only the costs of registering and maintaining the name); see also Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding bad faith where that Respondent registered the domain name for the purpose of selling it, as revealed by the name Respondent chose for the registrant, “If you want this domain name, please contact me”).

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

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 <newburyventures.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: October 27, 2004

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