CMP Media LLC v. Thomas Manski
Claim Number: FA0112000103469
PARTIES
The
Complainant is CMP Media LLC,
Manhassett, NY (“Complainant”) represented by Paul Fields Esq., of Darby
& Darby. The Respondent is Thomas Manski, Fort Walton Beach, FL (“Respondent”),
represented by Ari Goldberger Esq., of ESQwire.com Law Firm.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <networkcomputing.biz>,
registered with Register.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.
Alan L.
Limbury as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint under the ICANN Uniform Domain Name Dispute Resolution
Policy (the “Policy”) to the National Arbitration Forum (“the Forum”)
electronically on December 26, 2001. The Forum received a hard copy of the Complaint on December 26,
2001.
On
January 11, 2002, Register.com confirmed by e-mail to the Forum that the domain
name <networkcomputing.biz> is
registered with Register.com and that the Respondent is the current registrant
of the name. Register.com has verified
that Respondent is bound by the Register.com registration agreement and has
thereby agreed to resolve domain-name disputes brought by third parties in
accordance with the Policy.
On
January 14, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding under the Policy (the “Commencement Notification”),
setting a deadline of February 4, 2002 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@networkcomputing.biz
by e-mail.
A
Response was received and determined to be complete on February 5, 2002. The
Panel admits the late Response because it was attributable to excusable error
and because the Complainant has not been prejudiced. The Response was stated to
be in accordance with the Start-Up Trademark Opposition Policy (“STOP”).
An
additional submission from Complainant, also stated to be in accordance with
the STOP Policy, was received within time on February 11, 2002.
On February 19, 2002, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Alan L. Limbury
as Panelist.
RELIEF SOUGHT
The
Complainant requests that the domain name be transferred from the Respondent to
the Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Since
1988 Complainant has published a magazine entitled Network Computing. Since
1994 it has operated a website at <networkcomputing.com>. Complainant
owns United States registered trademark NETWORK COMPUTING, No. 2,038, 266 in
class 16 for publications and journals. It has registered that mark in 18 other
countries.
The
disputed domain name is identical to Complainant’s trademark. Respondent has no right to nor legitimate
interest in the disputed domain name, which, on information and belief, was
registered and is being used in bad faith.
B.
Respondent
There
is no dispute that the trademark and the disputed domain name are identical.
“Network computing” is an extremely common descriptive term composed of generic
words and is subject to substantial third party use.
Respondent
has a legitimate interest in the disputed domain name because it incorporates a
common descriptive term and because he registered it for the purpose of
developing a website related to network computing, a proposed alternative
system to the personal computer.
Respondent
did not register and has not used the disputed domain name in bad faith. There
is no evidence of bad faith. Complainant relies solely on information and
belief.
C.
Additional Submissions
Circulation
of Network Computing magazine is 220,000 copies bi-monthly, with $29 million
annual revenues. Weekly website page views are 144,642 domestic and 400,000
foreign. Over the last 3 years, Complainant has spent over $1.1 million to
promote the magazine. Even if descriptive, the mark has, through use, acquired
secondary meaning, such that use by Respondent would be likely to lead to
confusion with Complainant’s mark.
Respondent
has failed to produce any evidence to demonstrate preparations, prior to this
dispute, to use the disputed domain name for a website related to network
computing. Unsupported assertions are insufficient.
Respondent’s
failure to develop a website in the 3 months since registration shows he had no
bona fide intent to use the disputed domain name and amounts to passive bad
faith use.
It
is not plausible that Respondent was unaware of Complainant’s trademark at the
time of registration of the disputed domain name.
Respondent
has over 2500 domain names registered in his name (a rare number for an
individual), several of which are offered for sale at the <afternic.com>
website and some of which incorporate the trademarks of others, such as
<sportspepsi.com> and <stanforduniversity.com>. The disputed domain
name was registered with the domain name broker NameBargain.com, a division of
Register.com, whose sole business is to resell domain names. This contradicts Respondent’s asserted
purpose of registering the disputed domain name for business use. The home page at Respondent’s website
address offers the disputed domain name for sale, with a minimum bid of $200.
It
is clear there will be confusion as to the source, sponsorship, affiliation or
endorsement of Respondent’s website or location if Respondent were to use the
disputed domain name.
FINDINGS
The disputed domain name is identical to
Complainant’s registered trademark. Respondent has no right to nor legitimate
interest in the disputed domain name, which was registered and has been used in
bad faith.
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
clearly has rights in the trademark. There is no dispute that the disputed
domain name and the trademark are identical. The addition of a top-level domain
name does not create a distinct mark capable of overcoming a claim of identical
or confusing similarity: Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) and Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr.
30, 2001).
This element is established.
Rights or Legitimate Interests
Complainant bears the onus of proof on
this, as on all issues.
Respondent is known as Thomas Manski.
There is no evidence that he is known by the disputed domain name. Although
comprising descriptive words, the mark has been used since 1998 and heavily
promoted, such that it is likely to be well-known in the computing industry in
the United States. The Panel finds on the evidence of Sandra L. Grayson Esq.,
Complainant’s Vice-President and General Counsel, that the mark has acquired
secondary meaning and is distinctive of Complainant’s magazine. There is no
evidence Complainant has authorized Respondent to use its mark nor to register
the disputed domain name. These circumstances are sufficient to constitute a prima facie showing by Complainant of
absence of rights or legitimate interest in the disputed domain name on the
part of Respondent. The evidentiary
burden therefore shifts to Respondent to show by concrete evidence that it does
have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web D2000-0624 (WIPO Aug. 21, 2000)
and the cases there cited.
Preparations for developing a business
that could logically be marketed under a certain domain name can constitute
legitimate preparations for use, even if the proposed business has no need to
use the exact name at issue: Goldline
International, Inc. v. Gold Line D2000-1151 (WIPO Jan. 4, 2001), citing PRIMEDIA Special Interest
Publications Inc. v. Treadway D2000-0752 (WIPO Aug. 21, 2000). Even perfunctory preparations have been held
to suffice for this purpose: Shirmax
Retail Ltd. v. CES Marketing Group, Inc., AF-0104 (eResolution Mar. 20,
2000); Lumena s-ka so.o. v. Express Ventures Ltd., FA94375 (Nat. Arb.
Forum May 11, 2000) and Royal Bank of Canada v. Xross, AF-0133
(eResolution May 19, 2000).
Respondent has proffered a plausible
explanation as to why he might have registered the disputed domain name but has
not produced even the slightest evidence to support this explanation. Inconsistently
with that explanation, Respondent’s home page address for the disputed domain
name offers the disputed domain name for sale.
In asserting an intent to use the
disputed domain name for a website related to network computing, Respondent
must be taken to have some familiarity with computing in general and network
computing in particular. If
Respondent’s assertion were to be accepted, it is improbable, to say the least,
that he was unaware of Complainant’s magazine. Respondent took the trouble to make
a formal declaration, under penalty of law, for the purposes of his Response,
in which he denied registering the disputed domain name for sale but did not
declare that he was unaware of Complainant’s trademark when he registered the
disputed domain name. The Panel infers that Respondent was aware of
Complainant’s mark when he registered the disputed domain name.
The Panel is not satisfied that
Respondent registered the disputed domain name for the purpose of establishing
a website relating to network computing.
The Respondent has produced no concrete evidence to demonstrate any
right to or legitimate interest in the disputed domain name. The Complainant
has established this element.
Registration and Use in Bad Faith
The Panel has found that Respondent was
aware of Complainant’s mark when he registered the disputed domain name. In SportSoft
Golf, Inc. v. Hale Irwin’s Golfers’ Passport FA94956 (Nat. Arb. Forum July
11, 2001) a finding of bad faith was made where the respondent “knew or should
have known” of the registration and use of the trademark prior to registering
the domain name. Likewise Marriott International, Inc. v. John Marriot
FA94737 (Nat. Arb. Forum June 15, 2000); Canada Inc. v. Ursino AF-0211
(eResolution July 3, 2000) and Centeon L.L.C./Aventis Behring L.L.C. v.
Ebiotech.com FA95037 (Nat. Arb. Forum July 20, 2000).
In Goldline
International, Inc. v. Gold Line, D2000-1151 (WIPO Jan. 4, 2001) prior knowledge of the mark was found not to be
evidence of bad faith because the respondent reasonably believed that his
proposed services were unlikely to cause confusion with or trade on the mark,
which was used for other, unrelated products and services. Here Respondent’s
asserted intention is to use the disputed domain name in the very same field in
which Complainant uses its mark.
There is evidence that Respondent is the
registrant of over 2500 domain names, many of which he has put up for sale on
the <afternic.com> website [Lopez declaration]. In registering the disputed domain name, Respondent chose as
registrar NameBargain.com, a division of Register.com [Complainant’s
Supplementary Submission, Annex 5].
NameBargain.com is “a wholesale domain name registration site for
individuals or organizations interested in registering large volumes of domain
names at wholesale prices” [ibid]. The home page address of the disputed domain
name, for which Respondent must accept responsibility, invites anonymous bids
(minimum $200) to purchase the domain name. The Panel infers that $200 exceeds
Respondent’s out-of-pocket costs directly referable to the domain name.
In Globosat Programadora Ltda v. Artmidia Comunicacao Visual Criacao E
Arte Ltda, D2000-0605 (WIPO Sept. 13, 2000) the Panel found:
“the fact that almost all the domain
names registered by the Respondent or the Administrative Contact for these
domains are inactive and redirected to a site apparently dedicated to the
commerce of domain names, force this Panelist to consider that….Respondent has
registered the domain names primarily for
the purpose of selling, renting or otherwise transferring the domain names
registration to the Complainant or to a Complainant's competitor for valuable
consideration".
Having regard to Respondent’s awareness
of Complainant’s mark prior to registration, the Panel finds that Respondent
registered the disputed domain name primarily for the purpose of selling,
renting, or otherwise transferring it to Complainant for more than his
out-of-pocket costs. This is evidence of both bad faith registration and bad
faith use: Policy, paragraph 4(b)(i).
In all the circumstances, the Panel finds
that Respondent registered and has used the disputed domain name in bad faith.
Complainant has established this element.
DECISION
In
accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the relief
sought by the Complainant is hereby granted.
The
disputed domain name, namely <networkcomputing.biz>, is ordered transferred
to the Complainant.
Alan L. Limbury, Panelist
Dated: February 28, 2002
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