Gruner + Jahr Printing & Publishing
Co. v. Internet Billions Domains, Inc.
Claim Number: FA0206000114663
PARTIES
Complainant is Gruner + Jahr Printing and Publishing Co., New York, NY, USA
(“Complainant”) represented by Lisa
Rosenburgh, of Salans. Respondent is Internet Billions Domains, Inc., San Jose, COSTA RICA
(“Respondent”) represented by Anthony J.
DeGidio Esq.
REGISTRAR AND DISPUTED
DOMAIN NAMES
The domain names at issue are: <childmag.com>, <homestylemagazine.com>, <homestylemagazine.net>
registered with Directi.com, and <capitalmagazine.com>
and <capitalmagazine.net>
registered with DomainBank.com.
PANEL
The undersigned certify that they have
acted independently and impartially and to the best of their knowledge have no
known conflict in serving as Panelists in this proceeding.
Hon. Charles A. Kuechenmeister (Ret.)
Hon. Carloyn M. Johnson (Ret.)
G. Gervaise Davis
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum (the “Forum”) electronically on June 21, 2002; the
Forum received a hard copy of the Complaint on June 18, 2002.
On July 9, 2002, Directi.com confirmed by
e-mail to the Forum that the domain names <childmag.com>,
<homestylemagazine.com>, <homestylemagazine.net>, are
registered with Directi.com and on July 15, 2002, DomainBank.com confirmed by
e-mail to the Forum that the domain names <capitalmagazine.com>,
and <capitalmagazine.net> are
registered with DomainBank.com and that the Respondent is the current
registrant of the names. Both registrars
have verified that Respondent is bound by their 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 July
17, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 6,
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@childmag.com>,
<postmaster@homestylemagazine.com>, <postmaster@homestylemagazine.net>,
<postmaster@capitalmagazine.com>, and <postmaster@
capitalmagazine.net> by e-mail.
A timely Response was received and
determined to be complete on August 6, 2002.
Complainant and Respondent’s Additional
Submissions were received after the deadline established for submissions. Therefore, the Forum does not consider
either submission to be in compliance with Supplemental Rule #7.
On August 19, 2002,
pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed the Honorable Charles A. Kuechenmeister
(Ret.), the Honorable Carolyn M. Johnson (Ret.), and G. Gervaise Davis as
Panelists.
RELIEF SOUGHT
Complainant requests that the domain
names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
CHILD Mark
Complainant currently holds eight (8)
United States Patent and Trademark Office registrations for or incorporating
its CHILD Mark under the following registration numbers: 1,708,104*, 2,093,963, 2,008,367, 2,133,182,
2,131,125, 2,310,102, 2,310,103 and 2,453,136.
The first registration noted above with an asterisk is incontestable in
the United States pursuant to Section 15 of the Lanham Act, 15 U.S.C.
§1065. Complainant has also filed at
least eleven (11) new applications for or incorporating the CHILD Mark.
Complainant has continuously used CHILD
as the title of a magazine in the United States since at least as early as
April 26, 1986. The magazine is and has
always been referred to as CHILD or CHILD MAGAZINE.
By reason of Complainant’s extensive use,
sales, advertising and promotion, CHILD is recognized and relied upon by the
trade and the public as identifying Complainant, its publication, and
authorized goods and services, and as distinguishing them from others and the
goods and services of others. CHILD
MAGAZINE is issued ten times a year with a circulation in the United States of
over 1,168,000 annually. Complainant’s
Mark is distinctive and is famous in its industry and is among Complainant’s
most valuable assets.
HOMESTYLE Mark
Complainant currently holds five (5)
United States Patent and Trademark Office registrations for or incorporating
HOMESTYLE for magazines under the following registration numbers: 1,440,321; 1,909,943*; 1,925,379*; 2,021,679
and 2,517,442. The registrations noted
above with an asterisk are incontestable in the United States pursuant to
Section 15 of the Lanham Act, 15 U.S.C. §1065.
Complainant has used HOMESTYLE as or as
part of the title of a magazine in the United States since at least as early as
January 28, 1992. While the magazine
has changed names over the years from AMERICAN HOMESTYLE, to AMERICAN HOMESTYLE
AND GARDENING, to HOMESTYLE, the term HOMESTYLE always remained the prominent
portion of the title of this publication, issued ten times a year.
Complainant is the licensor of
HOMESTYLES, which has continuously been used by Complainant’s licensee and
predecessors in title since January 13, 1986.
Among the domain names held by
Complainant that incorporate Complainant’s HOMESTYLE Mark are <homestyle-mag.com>,
<.net> and <.org>; <homestylemag.com>, <.net> and
<.org>; <americanhomestyle.com>, <.net> and <.org>, and
<americanhomestyleandgardening.com>, <.net> and <.org>.
By reason of Complainant’s extensive use,
sales, advertising and promotion, HOMESTYLE is recognized and relied upon by
the trade and the public as identifying Complainant, its publication, and
authorized goods and services, and as distinguishing them from others and the
goods and services of others. HOMESTYLE
is distinctive and is famous in its industry and is among Complainant’s most
valuable assets.
CAPITAL Mark
Complainant currently holds one (1)
United States Patent and Trademark Office registration for CAPITAL for
magazines under registration number 2,437,784.
Complainant’s related company currently
holds multiple registrations for or incorporating the CAPITAL Mark for
magazines in Germany. Of these
registrations, four (4) contain solely the mark CAPITAL and are registered
under the following registration numbers:
853019, 958176*, 958177* and 39533429.
The registrations indicated with an asterisk are registered as
well-known marks in Germany.
Complainant and its related company,
Gruner + Jahr AG & Co., have long used the trademark CAPITAL as the title
of a magazine in the U.S., Germany and internationally. Complainant’s use in the United States
commenced at least as early as December 22, 1986, while use in Germany
commenced at least as early as 1968.
By reason of the extensive use, sales,
advertising and promotion, CAPITAL is recognized and relied upon by the trade
and the public as identifying Complainant, its publication, and authorized
goods and services, and as distinguishing them from others and the goods and
services of others. CAPITAL magazine is
issued twelve times per year. CAPITAL
is distinctive and is famous in its industry, and is among Complainant’s most
valuable assets.
Currently, all five domain names redirect
the user to <lasvegascasino.com>, a web site that links to various
Internet Casinos, Internet Gambling sites and Internet magazines.
Each of Complainant’s trademarks were
both famous and distinctive at the time that Respondent registered the domain
names, and Respondent was familiar with these famous marks. Moreover, federal registration of
Complainant’s trademarks confers constructive notice thereof.
Respondent has no rights or legitimate
interests with respect to any of the domain names at issue in this
proceeding. Respondent has not used the
domain names in connection with any bona fide offering of goods or services, is
not commonly known by the domain names, and has not made any legitimate
noncommercial or fair use of the domain names, without intent for commercial
gain to misleadingly divert consumers or to tarnish the Complainant’s
trademarks. Further, Complainant has
not licensed or otherwise authorized Respondent’s use of its trademarks in any
manner, including use in Respondent’s domain names.
Respondent’s diversion of Internet users
to an unrelated business indicates that Respondent does not have rights or
legitimate interests in the disputed domain names
Respondent registered the confusingly
similar domain names with the sole purpose to attract, for commercial gain,
Internet users to its web site or other on-line location, by creating a
likelihood of confusion with Complainant’s Marks as to the source, sponsorship,
affiliation, or endorsement of the web site or location or of a product or service
on the web site or location.
Respondent has registered the domain
names in order to prevent Complainant from reflecting the marks in
corresponding domain names, and Respondent has engaged in a pattern of such
conduct, having registered and offered for sale other “infringing” domain
names, including the various domain names that are the subject of this
proceeding. As such, Respondent’s
activities correspond to those listed in paragraph 4(b)(ii) of the Rules as
evidence of bad faith registration and use of a domain name.
B. Respondent
Complainant has presented no evidence to
support its claims of extensive use, fame, sales, advertising or promotion, and
Respondent disputes the same as it has never heard of the Complainant or its
magazines before receiving letters from the Complainant.
Even if Complainant has rights in the
U.S. it has presented no evidence that its marks are famous around the world or
that it has superior right in the rest of the world to Respondent. Specifically it has no rights in Costa Rica
and has claimed no use in Costa Rica, which is Respondent's domicile. Respondent’s prior use there creates common
law rights in Respondent’s favor within the territory of that country.
The Respondent and its affiliated
worldwide companies (hereinafter “Respondent”) are New Media developers which
own over 5,000 domain names and have begun implementation of their business
plans to develop each and every one of them.
Development began in 1997 and has continued to date. As a result of this effort the Respondent
currently has Two Hundred Eighty Nine (289) live and fully operational websites
which provide information, entertainment, news and fully licensed gaming
operations. None of Respondent’s domain
names are for sale. A complete list of
currently operational websites includes among numerous others 15 online
magazines and 74 news sites. These
operating magazine websites include <GossipMagazine.com>,
<PlayerMagazine.com>, <CreditCardsMagazine.com>,
<MobMagazine.com>, <DomainsMagazine.com>, <InvestmentsMagazine.com>,
<JokesMagazine.com>, <HighTechMaga-zine.com> and others.
Respondent knew that development of its
properties would take years but needed to secure domain names as the raw
materials for its business. Consistent
with part of its business plan the Respondent registered numerous domain names
suitable for developing news and magazine websites. Respondent’s intent was to register generic words with the word
NEWS, MAG or MAGAZINE added. To this
end Respondent registered 96 domain names containing a generic word with the
word NEWS added to it, and 1,252 domain names containing a generic word with
the word MAGAZINE or MAG added to it.
These domain names are descriptive or generic and thus capable of being
used in a descriptive, non-trademark sense to refer to the contents of the
proposed websites. There was no
targeting of famous or distinctive trademarks.
The Respondent continues to develop its
domain names into operational websites as quickly as its resources allow. As evidence of this continuing development,
the Respondent provided the index page graphics to a number of informational
sites currently under construction. One
of these exhibits shows the graphics made in preparation for some other
websites based upon <CyberDomainNews.com>, <CorporateMagazine.com>,
<CelebritiesMagazine.com>, <50Best.com>, <25HotMovies.com>,
<25Best Printers.com>, <25BestCruises.com>, <25BestCars.com>,
<10BestComputers.com>, <MafiaMagazine.com>, <WomenMagazine.com>,
<UltimateBoats.com>, <LotteryMagazine.com>,
<GloriousHouses.com>, <GloriousCars.com>, <50HotCruises.com>,
<50GreatVacations.com>, <50BestBooks.com>,
<25BestVacations.com>, <25BestAirlines.com>, and
<25BestPrinters.com> domain names.
The Respondent has
shown a plan to develop the domain names it purchased which include the word
MAGAZINE. Respondent cannot be expected
to develop every name it owns immediately upon registration thereof, as no
company on the planet has the resources to develop thousands of websites all at
once. The evidence of Respondent's
other magazine sites is directly on point and shows a pattern and preparation
for developing the magazine sites well before any notice from Complainant.
Complainant has not presented a single
piece of real evidence relating to bad faith but has offered only unsupported
claims which are false.
There is no evidence that Respondent
registered the domain names at issue primarily for the purpose of selling,
renting or otherwise transferring the registration to Complainant. There is no evidence or even suggestion that
the names were ever offered for sale.
There is no evidence indicating that the
names were registered in order to prevent the Complainant from reflecting its
marks in corresponding domain names. To
the contrary, Complainant admits to owning numerous quality names and
apparently has no need for the names at issue.
There is no evidence
indicating that the domain names were registered primarily for the purpose of
disrupting the business of a competitor or anyone for that matter.
There is no evidence indicating that
through the use of the domain names, this Respondent has intentionally
attempted to attract, for commercial gain, Internet users to a web site or
other on-line location, by creating a likelihood of confusion with the
Complainant's mark. There is no
evidence or argument presented on likelihood of confusion as there could be
none.
The scope of an ICANN UDRP proceeding is
extremely narrow as it only targets abusive cybersquatting, and nothing
else. It does not exist to make rulings
on infringement, unfair competition or other civil wrongs which might exist in
the country of one or both of the parties.
This narrow grant of jurisdiction applies where the registration was “abusive”
and not merely infringing. It applies
where there are no factual disputes with regard to the relevant issues, no
novel legal issues and only where the law of two countries do not come into
conflict.
C. Additional Submissions
Complainant tendered an additional submittal dated August
12, 2002 on or about August 14, 2002.
Respondent thereafter filed an undated additional submittal objecting to
the Panel's receipt or consideration of Complainant's additional submittal, and
responding on the merits as well.
Neither of these submittals was filed within the time provided by
National Arbitration Forum Supplemental Rule 7. In the absence of any justification for either late submittal,
and in the absence of material prejudice to either party, the Panel exercises
its discretion not to consider either additional submittal.
FINDINGS AND 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 Policy
¶4(a)(i)
CHILD
Mark
Complainant holds eight U.S. Patent and
Trademark Office (“USPTO”) registrations that incorporate the CHILD mark, more
specifically: Reg. No. 1,708,104 registered August 18, 1992; Reg. No.
2,093,963; Reg. No. 2,133,182 and Reg. No. 2,131,125, among others.
Complainant has continuously used the
CHILD mark as the title of a magazine in the U.S. since at least as early as
April 26, 1986. The magazine has always
been marketed under the CHILD or CHILD MAGAZINE mark. Because of its extensive use, sales and advertising in relation
to the CHILD MAGAZINE mark, it is recognized and relied upon as identifying
Complainant and its products. Complainant’s CHILD magazine is issued ten times
a year with a circulation in the U.S. of over 1,168,000 copies annually.
Complainant has an active presence on the
Internet. Among the domain names that
incorporate Complainant’s mark that are currently registered by Complainant
are: <child.com>, <childmagazine.com>, <childmagazine.net>,
<childmagazine.biz> and <childmagazine.us>, among others.
Respondent’s <childmag.com> domain name is confusingly similar to
Complainant’s CHILD mark. The mere
addition of the generic abbreviation of magazine, “mag,” and the generic
top-level domain, “.com,” fails to alter Respondent’s domain name; thus,
Respondent’s domain name is rendered confusingly similar. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Space
Imaging LLC v. Brownwell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s
domain name combines Complainant’s mark with a generic term that has an obvious
relationship to Complainant’s business).
Complainant currently holds five USPTO
registrations incorporating its HOMESTYLE mark denoting magazine use,
including: Reg. No. 1,440,321 for the HOMESTYLES mark registered on the
Supplemental Register on May 19, 1987; Reg. No. 1,909,943; Reg. No. 1,925,379;
Reg. No. 2,021,679 and Reg. No. 2,517,442, among others.
Complainant has used the HOMESTYLE mark
as part of the title of a magazine in the U.S. since at least as early as
January 28, 1992. Although the magazine
has changed titles over the years from AMERICAN HOMESTYLE, to AMERICAN
HOMESTYLE AND GARDENING, to HOMESTYLE, the HOMESTYLE mark was consistently used
in identifying Complainant’s magazine product.
Complainant has continuously used the HOMESTYLES mark since January 13,
1986. Complainant also operates from
the, inter alia,
<homestyle-mag.com>, <homestyle-mag.net> and
<homestyle-mag.org> websites.
Respondent’s <homestylemagazine.com> and <homestylemagazine.net> domain names are confusingly similar
to Complainant’s registered HOMESTYLE (Reg. No. 2,517,442) mark. The mere addition of a generic word that
describes Complainant and its services fails to alter the fact that the domain
names are confusingly similar to Complainant’s mark. See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29,
2000) (finding that common geographic qualifiers or generic nouns can rarely be
relied upon to differentiate the mark if the other elements of the domain name
comprise a mark or marks in which another party has rights); see also Brown
& Bigelow, Inc. v. Rodela, FA 96466
(Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain
name is confusingly similar to Complainant’s HOYLE mark, and that the addition
of “casino,” a generic word describing the type of business in which
Complainant is engaged, does not take the disputed domain name out of the realm
of confusing similarity).
Complainant holds USPTO Reg. No.
2,437,784 for the CAPITAL mark referencing general interest magazines covering
the economy, markets, companies and executives. Complainant’s CAPITAL mark was
filed as intent-to-use (“ITU”) and registered on March 27, 2001. Complainant
also holds numerous registrations incorporating the CAPITAL mark for magazines
in Germany. Of the aforementioned registrations, four are comprised solely of
the CAPITAL mark, and are registered under the following registration numbers:
853,019; 958,176; 958,177; and, 39,533,429.
Complainant has long-used the CAPITAL
trademark as the title of a magazine in the U.S., Germany, and other countries
worldwide. Complainant contends that its use in the U.S. commenced at least as
early as December 22, 1986, while use in Germany began as early as 1968.
Respondent’s <capitalmagazine.com> and
<capitalmagazine.net> domain names are confusingly similar to its
registered CAPITAL mark. Respondent’s
addition of the generic word “magazine,” which relates to Complainant’s
identity and business, increases the chance of confusion among Internet users
and fails to create distinct and separate marks. See supra; see also Marriott
Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding
that the Respondent’s domain name <marriott-hotel.com> is confusingly
similar to Complainant’s MARRIOTT mark); see
also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of the Complainant combined with a generic word or term).
The addition of different gTLDs, such as
“.com” or “.net,” is inconsequential when conducting a confusingly similar or
identical analysis under Policy ¶ 4(a)(i). See
Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that
the top level of the domain name such as “.net” or “.com” does not affect the
domain name for the purpose of determining whether it is identical or
confusingly similar).
Respondent argues that Complainant has
not adequately demonstrated that it has rights in the domain names, in that its
U.S. trademarks do not bind Respondent in Costa Rica. Respondent also disputes Complainant's actual current use of its
HOMESTYLE and CAPITAL marks. The Panel
rejects these arguments. For the
purposes of a UDRP proceeding, current, valid USTPO registrations of the
relevant marks are sufficient in the absence of fraud to confer upon
Complainant the requisite rights in those names to maintain such
proceedings. See, Policy ¶ 4(a)(i). This
is particularly so where, as in this case, two of the three registrations are
incontestable.
Based upon the foregoing, the Panel finds
and determines that <childmag.com>,
<homestylemagazine.com>, homestylemagazine.net>, <capitalmagazine.com> and <capitalmagazine.net> are identical
or confusingly similar to the marks CHILD, CHILD MAGAZINE, HOMESTYLE, HOMESTYLE
MAGAZINE, CAPITAL, and CAPITAL MAGAZINE, in which Complainant has rights.
Rights or Legitimate Interests Policy
¶4(a)(ii)
Respondent has not used any of the
contested domain names in connection with any bona fide offering of goods or
services, nor is it commonly known by any of them. Further, Complainant has not licensed or otherwise authorized
Respondent’s use of its trademarks in any manner, including use in Respondent’s
domain names.
The essence of
Respondent's claim to rights in the contested names is expressed in paragraphs
1-3 of the Response. Respondent has
registered some 5,000 generic or descriptive names with a stated plan to
develop all of them into "websites which
provide information, entertainment, news and fully licensed gaming
operations. None of Respondent’s domain
names are for sale." Response ¶1. Of the
5,000 registered names, some 1,252 have the word "mag" or
"magazine" incorporated into them, along with a generic or
descriptive name, e.g.,
"InvestmentsMagazine.com" and "PokerMag.com." From among these 1,252 names, Respondent has
developed 15 active websites. "Respondent
knew that development of its properties would take years but needed to secure
domain names as the raw materials for its business. Consistent with part of its business plan the Respondent
registered numerous domain names suitable for developing news and magazine
websites." Response ¶2. "The Respondent continues to develop
its domain names into operational websites as quickly as its resources
allow." Response ¶3. As evidence of this continuing development
the Respondent provided index page graphics to a number of informational sites
currently under construction. One of
these exhibits shows the graphics made in preparation for some other websites
based upon <CyberDomainNews.com>, <CorporateMagazine.com>,
<CelebritiesMagazine.com>," and others. Response ¶3.
Respondent's enterprise began in 1997 and to date has produced a total of 289 active
websites. Included within those
numbers, of course, are the 15 active websites from among the 1,252
"mag" or "magazine" names.
In the past five years, therefore, overall Respondent has developed
under 6% of its registered names; among the "mag/magazine" names it
is just over 1%. At these rates, even
giving the benefit of the doubt for an assumed slow initial development rate,
it will take Respondent decades to develop all of them. While it is both equitable and supportive of
Internet innovation as a matter of policy not to be overly strict or demanding
about requiring prompt site development, Respondent's mere registration of some
5,000 names but actual development of only a miniscule percentage of the names
is not sufficient to support a claim of "rights or legitimate
interests" for the purposes of Policy ¶4(a)(ii). Having a plan and
supporting it with the development of some sites is to Respondent's credit, but
having developed only 15 or so of the "mag/magazine" names into sites
does not confer upon it rights or legitimate interests in the other 1,237 of
them.
Respondent asserts that it cannot be
expected to develop every domain name registration it owns immediately upon
registration thereof. Respondent
maintains that it has “clearly shown a plan to develop the domain names it
purchased which include the word MAGAZINE.”
See First Am. Funds, Inc. v.
Ult.Search, Inc., D2000-1840 (WIPO Apr. 20, 2001) (finding that, absent bad
faith, the operation of a portal website is a legitimate interest); see also Shirmax Retail Ltd. v. CES Mktg.,
Inc., AF-0104 (eResolution Mar. 20, 2000) (stating “given the generic
nature of the domain name, [Respondent] has at least a tenable argument that
its use on the web merely for the purpose of redirecting visitors to a
different site constitutes a legitimate fair use, as long as this use is not
misleading to consumers and does not tarnish a trademark”). In this case, however, until it does develop its websites, Respondent is
diverting Internet users contacting all five contested domain names to
<lasvegascasino.com>, a website that links to various Internet casinos,
Internet gambling sites and Internet magazines. This use of the subject domain names is misleading and thus fails
to demonstrate rights or legitimate interests in Respondent. See
AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of
the domain name to direct users to other, unconnected websites does not
constitute a legitimate interest in the domain name).
On balance, Respondent has failed
adequately to demonstrate rights in the face of Complainant’s allegations. See,
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 in respect of the domain, the burden shifts to Respondent to provide
credible evidence that substantiates its claim of rights and legitimate
interests in the domain name).
Based upon the foregoing, the Panel finds
and determines that Respondent has no right or legitimate interest in respect
of <childmag.com>, <homestylemagazine.com>, <homestylemagazine.net>, <capitalmagazine.com> or <capitalmagazine.net>.
Registration and Use in Bad Faith Policy
¶4(a)(iii)
While Complainant's
U.S. and German trademark registrations clearly confer rights upon it within
the meaning of Policy
¶4(a)(i), they do not automatically require a finding that Respondent's
registration of the contested names, which incorporate Complainant's marks, was
in bad faith. Respondent asserts that
Complainant's names, while registered in the U.S. and Germany, are neither
world-famous nor registered in Costa Rica, the situs of Respondent's business
office. Respondent's connection with the
U.S. is not expressly specified but the Panel notes that its name is in English
and its form of business organization is shown as "Inc.," a uniquely
U.S. designation, rather than "S.A.," the abbreviation for sociedad anónima, the Costa Rican
designation for corporation. The Panel
concludes from this that Respondent is organized in the U.S. It thus has significant contacts with that
country, notwithstanding its Costa Rican address, and at least for the purposes
of this proceeding is charged with knowledge of U.S. trademark
registrations. The Panel finds that
Respondent had constructive notice of the Complainant's rights in two of the
three marks, CHILD and HOMESTYLE, incorporated into the contested domain names
by virtue of their prior registration in the U.S. Respondent's registration of the domains <childmag.com>, <homestylemagazine.com>,
<homestylemagazine.net>,
despite knowledge of Complainant’s preexisting rights, is evidence of bad faith
registration under Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding,
FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue,
Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla.
2001) (noting that “a Principal Register registration [of a trademark or
service mark] is constructive notice of a claim of ownership so as to eliminate
any defense of good faith adoption” pursuant to 15 U.S.C. § 1072). Since Complainant's USTPO registration of
CAPITAL was not issued until after Respondent's registration of the two
contested domains incorporating that mark, the Panel finds that Complainant has
failed to prove bad faith registration as to <capitalmagazine.com>
or <capitalmagazine.net>.
It is not disputed
that Respondent diverts Internet users contacting the contested domain names to
its own
<lasvegascasino.com> website, which links to various Internet casinos,
Internet gambling sites and Internet magazines. Respondent is thus using the
said names to attract users to its website by creating a likelihood of
confusion with Complainant's marks as to the source, affiliation or endorsement
of the website by Complainant.
Respondent's conduct thus falls within Policy subparagraph
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); see
also Mars, Inc. v. Double Down Magazine, D2000-1644 (WIPO Jan. 24, 2001)
(finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked the domain
name <marssmusic.com>, which is identical to Complainant’s mark, to a
gambling website).
Based upon the foregoing, the Panel finds
and determines that the Respondent registered and is using <childmag.com>, <homestylemagazine.com>,
and <homestylemagazine.net> in
bad faith. As noted above, the Panel finds and determines that Complainant failed to
prove that the Respondent registered <capitalmagazine.com> and <capitalmagazine.net> in bad faith.
DECISION
Based upon the foregoing Findings and
Discussion, the relief sought in the Complaint is partially granted and
partially denied. The domain-names <childmag.com>,
<homestylemagazine.com>, and homestylemagazine.net> are ordered
transferred to Complainant.
Complainant's request for transfer of the names <capitalmagazine.com> and <capitalmagazine.net> is
denied.
Honorable Charles A. Kuechenmeister
(Ret.)
Panel Chair
HonorableCarloyn
M. Johnson (Ret.) G. Gervaise
Davis III, Esq.
Panelist Panelist
Dated:
September 3, 2002