JES Publishing Corp. v. Brand Wellard
Claim Number: FA0707001036201
Complainant is JES Publishing Corp. (“Complainant”), represented by Nicole
M. Deforge, of Van Cott, Bagley, Cornwall & McCarthy,
50 South Main, Suite 1600, Salt Lake City, UT 84144. Respondent is Brand Wellard (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <utahbrideandgroom.com>, registered with Godaddy.com, Inc.
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.
Jeffrey M. Samuels as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
On July 23, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 13, 2007 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant has used the term UTAH BRIDE & GROOM since at least as early as 1997 on or in connection with its wedding-related magazine and publications. Complainant asserts that, from 1997 to the present, it has spent approximately $45,000 annually in advertising and promotional expenses for the UTAH BRIDE & GROOM magazine. Additionally, from 2003 to the present, Complainant has spent approximately $11,000 per year on radio and TV advertising for its UTAH BRIDE & GROOM magazine. Complainant’s total advertising expenses for its UTAH BRIDE & GROOM magazine exceeds $500,000. From 1997 to the present time, Complainant has received advertising revenue in excess of $2 million for UTAH BRIDE & GROOM magazine from about 70 different advertisers per issue. Complainant has sold about 100,000 copies of its magazine since 1997.
Complainant maintains that the disputed domain name <utahbrideandgroom.com> is identical to Complainant’s mark UTAH BRIDE & GROOM in sound, connotation, and commercial impression. It notes that the only difference between the mark and the domain name is that Complainant’s mark uses the “&” symbol (the universally accepted abbreviation for the word “and”) while the domain name uses the word “and.” Complainant points out that domain names cannot include the “&” symbol.
Complainant notes that the goods and services identified by the mark
and the domain name are strongly related and the activities surrounding their
marketing are such that confusion as to origin is likely. Complainant’s mark identifies a magazine
publication for the wedding industry in
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant indicates that, prior to registration of the disputed domain name, Respondent never used the name “Utah Bride and Groom” in connection with any goods or services. In fact, Complainant asserts, Respondent was one of Complainant’s advertisers and knew that Complainant was using UTAH BRIDE & GROOM for many years. Complainant alleges that, upon registering the domain name, Respondent approached Complainant and demanded $20,000 in cash or in kind to sell the domain name to Complainant.
Complainant further maintains that Respondent is not, and has never been, commonly known by the domain name and is not making a legitimate noncommercial or fair use of the name. According to Complainant, Respondent registered the domain name with the intent to profit by selling the domain name to Complainant or by misleadingly diverting Complainant’s consumers and advertisers to Respondent’s website.
With respect to the issue of “bad faith” registration and use, Complainant contends that Respondent registered the domain name primarily for the purpose of selling the registration to Complainant. Complainant indicates that Respondent registered the domain name on May 3, 2004, and in the summer of 2005 notified Complainant of such fact and demanded $20,000.
Complainant also alleges that, by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, internet users to its web site, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such site or of the products and/or services on such site.
Respondent asserts that the term “Utah Bride and Groom” is descriptive and not subject to trademark protection. In response to Complainant’s contention that such term has acquired secondary meaning through substantially exclusive and continuous use, Respondent notes that there are many local wedding related services with the same generic, descriptive terms in their names, including “Utah Bride & Groom Gala,” “Utah Brides,” “Utah Valley Bride,” and “Utah Bride Guide.” In fact, Respondent indicates, advertisers catering to the wedding industry associate <utahbrideandgroom.com> exclusively with Respondent and his website.
Respondent further points out that <utahbrideandgroom.com> is a wedding planning site – its slogan being “Your Online Wedding Planner” - while UTAH BRIDE & GROOM is a wedding magazine. Respondent indicates that, as part of a larger business strategy, it owns and operates over 100 domain names relating to the wedding industry, including <californiabrideandgroom.com>, <nevadabrideandgroom.com>, <coloradobrideandgroom.com>, and <texasbrideandgroom.com>.
Respondent contends that it purchased the disputed domain name in good faith for the sole purpose of developing a wedding planning website. He explains that he and his wife are owners of a wedding videography business. Realizing the trends towards electronic advertising and the need for an online wedding resource, they determined to develop a wedding planning website. They sought a name that was specific to the location and demographics they were targeting and the people that would visit the site. The disputed domain name <utahbrideandgroom.com> was available and purchased on May 3, 2004, exclusively for developing a website for brides and grooms to plan their weddings and for vendors to advertise their services. Initial designs for the site were developed in January 2005 and, after financing was secured and a business plan in place, major site development took place beginning in January 2006. Respondent alleges that he has spent over $100,000 in site development and advertising.
Respondent further contends that he never purchased the domain name with the intent to sell. “The domain was strictly purchased to develop a wedding planning website,” Respondent asserts. According to Respondent, he was approached by Courtney Carver, a sales representative from Complainant’s magazine, in the summer of 2005 to advertise his videography business. At the conclusion of the meeting, he indicated he was in the process of developing a wedding planning website under the domain name <utahbrideandgroom.com>. He suggested that it might be beneficial to get together to develop a partnership or to collaborate. Ms. Carver stated that Complainant was a magazine, not a website, and would probably not be interested in a joint venture.
Respondent further argues that Diana Towsley, marketing director for
Complainant, initiated contact with Respondent at the end of July 2005,
regarding whether Respondent was open to selling the domain name. Respondent indicates that he never made any
financial demands on Complainant. He
did, however, indicate to Complainant that if it were interested in purchasing
the domain, they could submit a proposal.
Ms. Towsley submitted a proposal via email on
Respondent also maintains that he never attempted to attract internet users to his site with the intent of creating confusion. He notes that all marketing to advertisers and to brides has been that <utahbrideandgroom.com> is a wedding planning site, as evidenced by the tagline “Your Online Wedding Planner.”
C. Additional Submissions
In its “Additional Submission,” Complainant notes that it also has a wedding planning website identified by its UTAH BRIDE & GROOM mark and that there are many instances of actual confusion in the marketplace.
According to Complainant, “[i]t is undisputed that in June 2005, Respondent notified Complainant that he had acquired the domain name and said that if Complainant wished to acquire the domain name they should make an offer.” Ms. Towsley then proposed to trade the domain name for advertising space in Complainant’s magazine. Respondent later rejected this offer and instead demanded $20,000 in cash or in kind to sell the domain name to Complainant. Complainant further argues that “[i]t is undisputed that Respondent, and not Complainant, initiated contact concerning the domain name and that Complainant simply responded to Respondent’s offer.”
Complainant further maintains that, prior to registration of the disputed domain name, Respondent had never used the name “Utah Bride and Groom” in connection with any goods or services. At the time Respondent registered the domain name, he was well aware of Complainant’s use of the UTAH BRIDE & GROOM mark, as evidenced by his admission that he checked on the availability of the domain name utahbrideandgroom magazine.com but decided against registering it. Complainant also points out that Respondent did not register his other “brideandgroom.com” names until nearly two years after he registered the disputed domain name <utahbrideandgroom.com>.
The Panel finds that: (1) the disputed domain name <utahbrideandgroom.com> is identical or confusingly similar to UTAH BRIDE & GROOM; (2) Complainant has common law rights in the mark UTAH BRIDE & GROOM; (3) Respondent has no rights or legitimate interests in the disputed domain name; and (4) the domain name was registered and is being 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.
The Panel readily concludes that the disputed domain name <utahbrideandgroom.com> is, for intents and purposes, identical to the term “Utah Bride & Groom.” As noted by Complainant, the only differences are that the domain name uses the ampersand symbol, as opposed to the word “and,” and includes the top level domain “.com.” These are distinctions without legal significance. See, e.g. Pomellato S.p.A. v. Tonetti, D2000-0493 (WIPO July 12, 2000) (finding <pomellato.com> identical to complainant’s mark because the generic top-level domain “com” is not relevant); Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 9, 2000) (finding that the <wrightandlado.com> domain name is identical to complainant’s WRIGHT & LADO mark because the ampersand symbol is not reproducible in a URL).
The more difficult question is whether
Complainant has trademark rights in the term UTAH BRIDE & GROOM, as used
for its magazine. The Panel notes that
The Panel agrees with this assessment by the USPTO. Thus, the term UTAH BRIDE & GROOM, as used by Complainant, may be held a protectable mark only if it has acquired secondary meaning. While the USPTO has not yet had the opportunity to rule on whether UTAH BRIDE & GROOM has obtained the required secondary meaning to be protectable, the Panel concludes that, based on the evidence presented in the instant proceeding, UTAH BRIDE & GROOM has acquired secondary meaning. As related above, such evidence includes use since 1997, total advertising expenses in excess of $500,000, and the sale of approximately 100,000 copies. The evidence also includes affidavits from advertisers catering to the wedding industry testifying that they associate UTAH BRIDE & GROOM with Complainant and its magazine.
The Panel finds that Complainant has
established that Respondent has no rights or legitimate interests in the
disputed domain name. Given the near
identity of the mark and the domain name and the use of the domain name in
connection with services related to those provided by Complainant, the Panel
concludes that Respondent is not using the domain name in connection with a bona fide offering of goods or
services. See, e.g. Computerized Sec. Sys., Inc. v Hu, FA 157321 (Nat. Arb.
The Panel further concludes that Respondent is not making a legitimate fair use of the domain name, “without intent for commercial gain to misleadingly divert consumers,” within the meaning of paragraph 4(c)(iii) of the Policy. It is uncontroverted that, prior to his registration of the disputed domain name, Respondent advertised in Complainant’s magazine. From this and other evidence it is clear that Respondent was aware of Complainant’s use of UTAH BRIDE & GROOM for a wedding-related magazine prior to registration of the disputed domain name. Further, by the time Respondent registered the disputed domain name in May 2004, Complainant’s publication was about seven years old and had been the subject of much advertising and promotion. All of which is to say that this is not a case where a respondent is using merely descriptive words to describe his business without taking advantage of a complainant’s rights.
The Panel concludes that the disputed domain name was registered and is being used in bad faith. The evidence indicates that by using the domain name <utahbrideandgroom.com>, Respondent intentionally attempted to attract, for commercial gain, internet users to his website by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of such site or of the products and/or services offered at such site, within the meaning of paragraph 4(b)(iv) of the Policy. The evidence includes a number of reported instances of actual confusion. This is not surprising given the similarities between UTAH BRIDE & GROOM and <utahbrideandgroom.com> as well as the relatedness of the parties’ goods and services.
While Respondent emphasizes that he provides an online resource, the fact remains that his site is an online wedding planner and Complainant’s magazine is a wedding planner and resource directory. The evidence also indicates that magazine publishers own related online sites. Under the facts of this case, it would be reasonable for the relevant consuming public to conclude that Respondent’s site and the services offered therein are sponsored by or affiliated with Complainant.
The Panel notes that Respondent has presented affidavits from several of his advertisers attesting to the lack of a likelihood of confusion and to the fact that Respondent never led them to believe he was affiliated with Complainant. However, the relevant purchasing public in this case also includes the less sophisticated general wedding-age public. Given the similarities between Complainant’s mark and the disputed domain name, as well as the relatedness of the goods and/or services, the Panel finds that such individuals would likely be confused. The fact that Respondent never led advertisers to believe he was affiliated with Complainant, by itself, does not compel a determination that there is no likelihood of confusion.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <utahbrideandgroom.com> domain name be TRANSFERRED from Respondent to Complainant.
Jeffrey M. Samuels, Panelist
Dated: September 11, 2007
 While both parties spend time arguing whether the goods and/or services they provide are similar or related, most ICANN panels have ruled that the test for confusing similarity under element one of the Policy should be based solely on a comparison between the alleged mark and the domain name. See, e.g., Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 21, 2000).
 Of course, whether the PTO has an opportunity to rule on the issue of secondary meaning depends on whether Complainant chooses to file a response to the Office action. A response is not due until November 21, 2007.
 See, e.g. Allocation Network GmbH v. Gregory, D2000-0016 (WIPO Mar. 27, 2007) (“Complainant has not provided any evidence of facts which might indicate that Respondent knew or should have known of its trade name use or trademark registrations, such as a direct relationship or a wide reputation or extensive publicity in connection with Complainant’s trade name or trademark.”); Gorstew Ltd. v. Worldwidewebsales.com, D2002-0744 (WIPO Oct. 23, 2000) (“In this case, the Panel is not satisfied that the Respondent had in mind the Complainant … when it registered the domain names.”)
 In view of this determination, the Panel declines to rule on whether the evidence establishes that Respondent registered the domain name primarily for the purpose of selling the registration to Complainant. The evidence on this issue is equivocal at best.
 The evidence establishes, for example, that Complainant has registered the domain names <utahbrideandgroom.net> and <utbrideandgroom.com>.
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