DECISION

Gruner + Jahr Printing & Publishing Co. v. DRP Services

Claim Number:  FA0404000257771

PARTIES

Complainant is Gruner + Jahr Printing & Publishing Co. (“Complainant”), represented by Lisa Rosenburgh, of Sullivan & Worcester LLP, 1290 Avenue of the Americas, New York, NY 10104.  Respondent is DRP Services (“Respondent”), POB 71117, Jerusalem 91710, Israel.

REGISTRAR AND DISPUTED DOMAIN NAME

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

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 April 20, 2004; the Forum received a hard copy of the Complaint on April 21, 2004.

On April 26, 2004, iHoldings.com, Inc. d/b/a DotRegistrar.com confirmed by e-mail to the Forum that the domain name <wwwchild.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 April 26, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 17, 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@wwwchild.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 May 27, 2004, 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.

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 <wwwchild.com> domain name is confusingly similar to Complainant’s CHILD mark.

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

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

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

FINDINGS

Complainant, Gruner + Jahr Printing & Publishing Company, is a magazine publisher.  Complainant holds two registrations with the U.S. Patent and Trademark Office (“USPTO”) for the CHILD mark, Registration Numbers 1,708,104 (magazine) and  2,453,136 (computer services), registered on May 26, 1992 and Febraury 27, 2001, respectively.

Complainant also holds various USPTO registrations that incorporate the CHILD mark, including Registration Numbers 2,310,102 (CHILD MAGAZINE KIDS’ BOOK CLUB), 2,310,103 (CHILD MAGAZINE MOM’S BOOK CLUB), and 2,769,014 (YOUR CHILD NOW), registered on November 3, 1999, November 3, 1999, and July 8, 2003, respectively.

Complainant has also registered the CHILD.COM mark with the USPTO, Registration Number 2,589,401, on July 2, 2002.

Respondent, DRP Services, registered <wwwchild.com> on October 3, 2002.  The domain name resolves to a search engine that displays results for searches for the term “child,” providing links to child-related sites, as well as links for “bankruptcy” and “debt consolidation.”  Its links resolve to third parties that sell Complainant’s goods.

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 rights in the CHILD mark pursuant to Policy ¶ 4(a)(i) as evidenced by its 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.”); 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 <wwwchild.com> domain name is confusingly similar to Complainant’s CHILD mark.  The only difference is the addition of the letters “www,” which does not significantly distinguish the domain name from the mark.  See Marie Claire Album v. Geoffrey Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters "www" are not distinct in the "Internet world" and thus Respondent 's <wwwmarieclaire.com> domain name is confusingly similar to Complainant's MARIE CLAIRE trademark); see also Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”).

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

Rights or Legitimate Interests

The Panel finds that Complainant has made a prima facie showing that Respondent does not have rights or legitimate interests in the disputed domain name.  In the face of such allegations, the burden of proof shifts to Respondent to demonstrate that it does have rights and legitimate interests in the domain name.  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 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 with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Respondent has not submitted a Response.  Therefore, the Panel may accept all reasonable allegations in the Complaint as true.  See 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); 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 a domain name that takes advantage of a common mistyping of Complainant’s mark to divert Internet users to a search engine website.  Using a domain name that takes advantage of a mistyping of another’s mark to divert Internet users to a search engine is nether a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of a domain name pursuant to Policy ¶ 4(c)(iii).  See Black & Decker Corp. v. Azra Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding no rights or legitimate interests where Respondent used the typosquatted <wwwdewalt.com> domain name to divert Internet users to a search engine webpage, and failed to respond to the Complaint); see also Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site”).

There is nothing in the record, including the WHOIS domain name registration information, which indicates that Respondent is commonly known by the 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 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).

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

Registration and Use in Bad Faith

Respondent is using a domain name that is a common mistyping of Complainant’s mark to attract Internet traffic to a search engine website.  This is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Canadian Tire Corp., Ltd. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (“[The] absence of a dot between the “www” and “canadiantire.com” [in the <wwwcanadiantire.com> domain name is] likely to confuse Internet users, encourage them to access Respondent’s site” and evidences bad faith registration and use of the domain name); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the “www” portion of [a] web-address,” evidence that the domain name was registered and used in bad faith).

Many may legitimately use Complainant’s CHILD mark in the course of trade (i.e. it is generic or descriptive).  However, Respondent’s typosquatting raises the presumption that Respondent is acting in bad faith because typosquatting is, by nature, parasitic.  See Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is inherently parasitic and of itself evidence of bad faith.”); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“[I]n typosquatting cases, such as this one, it would be difficult for Respondent to prove to the Panel that it did not have actual knowledge of Complainant’s distinctive MEDLINE mark when it registered the infringing <wwwmedline.com> domain name.”).

Respondent is also appropriating Complainant’s mark to provide directory information for child-related services as well as information about financial services.  The Panel infers that Respondent is receiving click-through revenues for these links.  Therefore, the Panel finds that Respondent is appropriating Complainant’s mark to create the likelihood of confusion as to the source of its services for commercial gain pursuant to Policy ¶ 4(b)(iv).  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 State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the web site without permission from Complainant).

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

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

Dated:  June 7, 2004

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