eGalaxy Multimedia Inc. v. Complete Digital Marketing
Claim Number: FA0203000105975
Complainant is eGalaxy Multimedia Inc., Toronto, Canada (“Complainant”) represented by David Warga, of Warga Law Firm. Respondent is Complete Digital Marketing, Paddington, Australia (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <nakednewsworld.com> and <nakededition.com>, registered with Network Solutions, Inc. and Melbourne IT, respectively.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.
Sandra Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 21, 2002; the Forum received a hard copy of the Complaint on March 21, 2002.
On March 25, 2002 and March 22, 2002, Network Solutions, Inc. and Melbourne IT confirmed by e-mail to the Forum that the domain names <nakednewsworld.com> and <nakededition.com> are registered with Network Solutions, Inc. and Melbourne IT, respectively, and that Respondent is the current registrant of the names. Network Solutions, Inc. and Melbourne IT have verified that Respondent is bound by the Network Solutions, Inc. and Melbourne IT registration agreements 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 March 25, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 15, 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 and firstname.lastname@example.org 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 April 22, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
The disputed domain names <nakednewsworld.com> and <nakededition.com> are confusingly similar to NAKED NEWS and NUDE NEWS, marks in which Complainant holds rights. Both domain names include the word “naked,” which is the dominant element in the NAKED NEWS mark. The words “world” and “edition” do not distinguish the domain names from the mark. The domain names strongly resemble Complainant’s marks in appearance, sound, and idea suggested.
Respondent has no rights or legitimate interests in respect of the disputed domain names. Respondent is not a licensee of Complainant, does not hold registered trademark rights in the domain names, and is not commonly known by NAKED EDITION or NAKED NEWS WORLD, or the respective domain names. Respondent’s use of the confusingly similar domain names to offer services in competition with Complainant is not a bona fide offering of goods or services
Respondent registered and used the disputed domain names in bad faith by attempting to prevent Complainant from registering domain names reflecting its marks, by disrupting Complainant’s business, and by attracting for commercial gain, Internet users to Respondent’s website through likelihood of confusion as to source or affiliation of the site. Additionally, Respondent was aware or should have been aware of Complainant’s rights in its marks, and thus demonstrated bad faith by intentionally registering infringing domain names.
Respondent did not file a Response in this proceeding.
Complainant holds trademarks in NAKED NEWS and NUDE NEWS, registered in Australia on November 19, 2001 as Registration Nos. 855,415 and 855,416, respectively. Complainant uses the marks in association with its daily Internet newscast, its internationally distributed television program “Naked News TV!” and its branded consumer products such as clothing, gift items and pre-recorded media. Complainant also holds registration of the <nakednews.com> domain name.
Respondent registered <nakednewsworld.com> on November 7, 2001, and <nakededition.com> on December 18, 2001, and has used the domain names to provide naked news services similar to or in competition with Complainant. The webpage hosted at <nakededition.com> includes in its hidden “meta-tags” the words “naked” and “news,” which Complainant asserts will cause confusion among Internet users searching for Complainant’s website by keyword. The domain names are also being used to redirect users to commercial 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 the 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 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; and
(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 has established its trademark rights in NAKED NEWS through registration with the Australian trademark registrar and continuous subsequent use.
The <nakednewsworld.com> domain name is confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and merely adds the term “world” and “.com,” a generic top level domain (“gTLD”). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[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 Net2phone Inc, v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the Respondent’s registration of the domain name <net2phone-europe.com> is confusingly similar to complainant’s mark because "the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar."); see also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to Complainant’s famous mark).
As to <nakednewsworld.com>, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has not, however, established that it has enforceable rights with respect to <nakededition.com>. Although Complainant asserts that the word “naked” is the dominant part of its NAKED NEWS mark, this, even if true, does not give Complainant standing to appropriate every domain name that includes the word “naked.” See Trump v. olegevtushenko a/k/a Oleg Evtushenko, FA 101509 (Nat. Arb. Forum Dec. 11, 2001) (finding that <porntrumps.com> does not infringe on Complainant’s famous mark TRUMP, since Complainant does not have the exclusive right to use every form of the word “trump”); see also Capt’n Snooze Mgmt. v. Domains 4 Sale, D2000-0488 (WIPO July 10, 2000) (stating that while “Snooze is an integral part of Complainant’s trademark registrations . . . this does not entitle the Complainant to protection for that word alone”).
Further, Complainant does not assert that it holds any rights in the word “edition,” and outside the context of Complainant’s NAKED NEWS mark, the word “naked” is merely a generic term. See Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding that “seminar” and “success” are generic terms to which Complainant cannot maintain exclusive rights); see also SOCCERPLEX, INC. v. NBA Inc., FA 94361 (Nat. Arb. Forum May 25, 2000) (finding that the Complainant failed to show that it should be granted exclusive use of the domain name <soccerzone.com>, as it contains two generic terms and is not exclusively associated with its business).
Because Complainant has failed to demonstrate enforceable rights in the <nakededition.com> domain name, the Panel finds that Policy ¶ 4(a)(i) has not been satisfied as to this name.
Complainant has no enforceable rights in the <nakededition.com> domain name pursuant to Policy ¶ 4(a)(i); because claimants under the ICANN Policy are required to fulfill all three elements under Policy ¶ 4 in order to obtain relief, the “rights and legitimate interests” and “bad faith” analyses will only be applied to the <nakednewsworld.com> domain name. See CyberImprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding it unnecessary to determine whether Respondent has rights or interests in a domain name or whether it registered and used the name in bad faith when the Complainant fails to establish rights under Policy ¶ 4(a)(i)).
Complainant has demonstrated its rights to and interests in the NAKED NEWS mark. Because Respondent has not submitted a Response in this matter, the Panel may presume it has no such rights or interests in <nakednewsworld.com>. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Respondent’s use of <nakednewsworld.com>, a confusingly similar domain name, to provide services in competition with Complainant demonstrates an attempt to confuse Internet users that were seeking Complainant’s website and to redirect them to Respondent’s site. This is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).
There is no evidence to suggest that Respondent is commonly known by <nakednewsworld.com> pursuant to Policy ¶ 4(c)(ii); Respondent is only known to this Panel as Complete Digital Marketing. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest 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 Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).
The Panel finds that Respondent has no rights or legitimate interests in respect of <nakednewsworld.com>, and that Policy ¶ 4(a)(ii) has thus been satisfied as to that name.
Registration and Use in Bad Faith
Respondent registered and is using the confusingly similar <nakednewsworld.com> domain name in order to trade on Complainant’s reputation and goodwill by attracting Internet users that were seeking Complainant’s website to the website of Respondent. Because Internet users will likely be confused as to the source or affiliation of Respondent’s website, this behavior demonstrates bad faith registration and use under 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 Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users seeking the Complainant’s site to its own website for commercial gain).
Further, because Complainant and Respondent offer competing services, Respondent’s use of the <nakednewsworld.com> domain name to ensnare Complainant’s customers and disrupt Complainant’s business demonstrates bad faith under Policy ¶ 4(b)(iii). See General Media Communications, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of Complainant registered and used a domain name confusingly similar to Complainant’s PENTHOUSE mark to host a pornographic web site); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied as to <nakednewsworld.com>.
Having failed to establish a necessary element under the ICANN Policy, the Panel concludes that the requested relief as to <nakededition.com> should be denied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief as to <nakednewsworld.com> should be hereby granted.
Accordingly, it is Ordered that the <nakednewsworld.com> domain name be transferred from Respondent to Complainant, and that the Complaint be dismissed as to <nakededition.com>.
Sandra Franklin, Panelist
Dated: April 30, 2002
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