CMP Media LLC v. Thomas Manski
Claim Number: FA0112000103469
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.
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.
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 email@example.com 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.
The Complainant requests that the domain name be transferred from the Respondent to the 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.
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.
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.
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.
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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