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Generic Top Level Domain Name (gTLD) Decisions |
Reed Elsevier Inc. and Reed Elsevier
Properties Inc. v. Domain Administrator
Claim Number: FA0411000360975
Complainant is Reed Elsevier Inc. and Reed Elsevier Properties Inc. (“Complainant”),
represented by Tara M. Vold, of Fulbright & Jaworski L.L.P., 801
Pennsylvania Avenue, N.W., Washington, DC 20004. Respondent is Domain Administrator (“Respondent”), Theaterstr 19, Hannover
30159, Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <varietyweekly.com>,
registered with Enom, Inc..
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
4, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on November 5, 2004.
On
November 5, 2004, Enom, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <varietyweekly.com>
is registered with Enom, Inc. and that Respondent is the current registrant of
the name. Enom, Inc. has verified that Respondent
is bound by the Enom, 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
November 8, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of November 29, 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@varietyweekly.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
December 9, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration
Forum appointed Judge Harold
Kalina (Ret.) as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without
the benefit of any
Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A.
Complainant makes the following assertions:
1. Respondent’s <varietyweekly.com> domain name is confusingly similar to
Complainant’s VARIETY mark.
2. Respondent does not have any rights or legitimate
interests in the <varietyweekly.com>
domain name.
3. Respondent registered and used the <varietyweekly.com> domain name
in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
Complainant,
through its licensee, Reed Business Information, a division of Reed Elsevier
Inc., is in the business of publishing magazines,
newsletters, and online
materials relating to the entertainment industry. Complainant has published the
weekly entertainment newsletter
VARIETY since 1905. Complainant is the owner of
numerous trademark registrations for the VARIETY mark, including Reg. No.
1,350,618
(registered on July 23, 1985). Complainant has advertised and
marketed its publications under the VARIETY mark throughout the United
States
and the world. Complainant has made extensive and continuous use of the mark in
commerce since 1905. Third parties brokering
subscriptions to VARIETY magazine
frequently refer to Complainant’s publication as “Variety Weekly.” Complainant
also operates a
website at the <variety.com> domain name.
Respondent
registered the <varietyweekly.com>
domain name on September 27, 2004. The disputed domain name resolves to a
website that provides links to adult-oriented and pornographic
websites.
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.
Complainant has
established that it has rights in the VARIETY mark through registration with
the United States Patent and Trademark
Office and through the use of the mark
in commerce. 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.”); see
also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002)
(finding that Panel decisions have held that registration of a mark is prima
facie evidence of validity,
which creates a rebuttable presumption that the
mark is inherently distinctive. Respondent has the burden of refuting this
assumption).
Respondent’s
<varietyweekly.com> domain
name is confusingly similar to Complainant’s VARIETY mark because Respondent
merely added to the VARIETY mark the generic
term “weekly.” The term is also
descriptive of Complainant’s well-known VARIETY entertainment newsletter
because “weekly” describes
the frequency of its publication. The only other
difference between the disputed domain name and Complainant’s VARIETY mark is
the
“.com” generic top-level domain. As a required element of all domain names,
a top-level domain does not distinguish a domain name
from an otherwise
confusingly similar trademark. The addition of an ordinary descriptive word and
a top-level domain does not make
the disputed domain name sufficiently
distinguishable from Complainant’s VARIETY mark under Policy ¶ 4(a)(i). See Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (“[n]either the addition of an ordinary
descriptive word . . . nor the suffix ‘.com’ detract from
the overall
impression of the dominant part of the name in each case, namely the trademark
SONY”); see also Space
Imaging LLC v. Brownell, 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); see
also Parfums Christian Dior v.
1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain
names that added the descriptive words "fashion" or
"cosmetics"
after the trademark were confusingly similar to the
trademark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant is
able to establish a prima facie case by showing that Respondent does not
qualify for the three “safe harbors” provided
under Policy ¶¶ 4(c)(i)-(iii).
Such a showing shifts Complainant’s burden to Respondent, who must come forward
with evidence rebutting
Complainant’s allegations in order to prevail on this
element. In this case, Complainant has made a prima facie showing that
Respondent
does not have any rights or legitimate interests in the <varietyweekly.com> domain name. See Compagnie Generale des Matieres
Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“[p]roving
that the Respondent has no rights or legitimate interests in respect of the [d]omain
[n]ame requires the Complainant to prove a negative. For the purposes of this
sub paragraph, however, it is sufficient for the Complainant
to show a prima
facie case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for [R]espondents to
seek to bring themselves within one of the examples of paragraph 4(c) or put
forward some
other reason why they can fairly be said to have a relevant right
or legitimate interests in respect of the domain name in question”);
see also 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”).
Since
Complainant has made a prima facie showing that Respondent does not have any rights
or legitimate interests in the <varietyweekly.com>
domain name, the burden is shifted to Respondent to demonstrate that it has
rights or legitimate interests in the disputed domain
name. In this proceeding,
Respondent has not submitted a Response. Thus, Respondent has failed to present
any circumstances under
which it could substantiate rights or legitimate
interests in the <varietyweekly.com>
domain name. Furthermore, because Respondent has failed to submit a Response in
this proceeding, the Panel may accept as true all
reasonable allegations
submitted by Complainant in the Complaint. 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 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).
Respondent is
using the <varietyweekly.com>
domain name to direct Internet users to a website providing links to
adult-oriented and pornographic material. The Panel infers that
Respondent
commercially benefits from its use of the disputed domain name through
click-through fees generated from the sponsored
links on its website.
Respondent’s use of a domain name that is confusingly similar to Complainant’s
VARIETY mark dilutes Complainant’s
mark by diverting Internet users to a
website unrelated to that mark and is not a use in connection with a bona fide
offering of
goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See Toronto-Dominion
Bank v. Karpachev, 188
F.Supp.2d 110, 114 (D. Mass. 2002) (finding that,
because Respondent's sole purpose in selecting the domain names was to cause
confusion with Complainant's
website and marks, its use of the names was not in
connection with the offering of goods or services or any other fair use); see also 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
Pfizer, Inc. v. Internet Gambiano Prods., D2002-0325 (WIPO June 20, 2002)
(finding that because the VIAGRA mark was clearly well-known at the time of
Respondent’s registration
of the domain name it can be inferred that Respondent
is attempting to capitalize on the confusion created by the domain name’s
similarity
to the mark).
No evidence in
the record suggests that Respondent is commonly known by the <varietyweekly.com> domain name.
Thus, Respondent has not established rights or legitimate interests in the
disputed domain name pursuant to 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 interests where Respondent was not
commonly known by the mark
and never applied for a license or permission from
Complainant to use the trademarked name); see
also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding no rights or legitimate interests where (1) Respondent is not a
licensee of Complainant;
(2) Complainant’s prior rights in the domain name
precede Respondent’s registration; (3) Respondent is not commonly known by the
domain name in question).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s
domain name diverts Internet users wishing to search under Complainant’s
well-known mark to a website providing links
to adult-oriented and pornographic
material, which results in Internet user confusion. The Panel infers that
Respondent commercially
benefits from its use of the disputed domain name by
receiving click-through fees from its diversion of Internet users to
pornographic
websites. Respondent’s practice of diversion, motivated by commercial
gain, through the use of a confusingly similar domain name
evidences bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Entrepreneur Media, Inc. v. Smith[2002] USCA9 115; , 279 F.3d 1135, 1148 (9th Cir. 2002) (“[w]hile an intent to confuse
consumers is not required for a finding of trademark infringement, intent to
deceive
is strong evidence of a likelihood of confusion”); see also 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).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration
of a domain name, additional factors
can also be used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb.
Forum May 18, 2000) (finding that in determining if a domain name has been
registered in bad faith, the Panel
must look at the “totality of
circumstances”); see also Do the Hustle,
LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a
respondent to come forward to [contest complainant’s allegations] is tantamount
to
admitting the truth of complainant’s assertion in this regard”).
Respondent’s
registration of the disputed domain name, a domain name that incorporates
Complainant’s well-known mark in its entirety
and simply adds a term
descriptive of Complainant’s business, suggests that Respondent knew of
Complainant’s rights in the VARIETY
mark and of the tendency of third parties
to refer to Complainant’s magazine as “Variety Weekly.” Additionally,
Complainant’s trademark
registration on file at the United States Patent and
Trademark Office gave Respondent constructive notice of Complainant’s mark.
Thus, the Panel finds that Respondent chose the <varietyweekly.com> domain name based on the distinctive and
well-known qualities of Complainant’s mark, which evidences bad faith registration
and use
pursuant to Policy ¶ 4(a)(iii). See
Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4,
2000) (finding that the “domain names are so obviously connected with the
Complainants that the use or
registration by anyone other than Complainants
suggests ‘opportunistic bad faith’”); see
also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding bad faith registration and use where it is “inconceivable that the
respondent could make
any active use of the disputed domain names without
creating a false impression of association with the Complainant”); see also Reuters Ltd. v. Teletrust IPR Ltd.,
D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith
where Respondent was aware of Complainant’s famous
mark when registering the
domain name as well as aware of the deception and confusion that would
inevitably follow if he used the
domain names); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct.
24, 2002) (determining that Policy paragraph 4(b) sets forth certain
circumstances, without limitation,
that shall be evidence of registration and
use of a domain name in bad faith); see
also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17,
2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly
known mark at the time of registration); see also Orange Glo Int’l v. Jeff Blume,
FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is
listed on the Principal Register of the USPTO, a status
that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <varietyweekly.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
December 21, 2004
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URL: http://www.worldlii.org/int/other/GENDND/2004/1543.html