Trans-High Corporation, Inc. v. 420 Magazine
Claim Number: FA0803001163475
Complainant is Trans-High Corporation, Inc. (“Complainant”), represented by Kieran
G. Doyle, of Cowan, Liebowitz & Latman, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <misshightimes.com>, registered with Network Solutions, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 13, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 14, 2008.
On March 13, 2008, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <misshightimes.com> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement 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, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 14, 2008 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 timely Response was received and determined to be complete on April 14, 2008.
On April 21, 2008 an Additional Submission was received from the Complainant in compliance with Supplemental Rule 7. On April 25, 2008 an Additional Submission was also received from the Respondent in a timely fashion.
On April 18, 2008 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant contends that it owns the registered trademark HIGH TIMES and the web site found at <hightimes.com>. Complainant also contends that in conjunction with the goods and services associated with its mark, Complainant has established rights in the mark MISS HIGH TIMES. Complainant further asserts that Respondent registered the identical or confusingly similar domain name <misshightimes.com> although the Respondent has no rights or legitimate interest in the domain name. Complainant states that Respondent has registered and is using the domain name in bad faith.
The Respondent contends that the domain name in dispute is being used in a manner that is not identical or confusingly similar to Complainant’s marks, and that Respondent has rights and legitimate interest in the domain name. Respondent bases its assertions on the current usage of the mark in conjunction with a blog for airline stewardesses. Respondent also asserts that the present use of the domain name is not in bad faith and claims several legal and equitable defenses are applicable on its behalf.
C. Additional Submissions
Complainant’s additional submission reiterated the contents of its amended complaint and questioned the viability of the Respondent’s answer in claiming a lack of sufficient knowledge to admit or deny a substantial number of facts and allegations stated in the Complainant’s pleadings. Complainant’s submission also challenged Respondent’s efforts at focusing on the current usage of the disputed domain as opposed to the circumstances surrounding its adoption and initial usage.
Respondent’s additional submission reiterated the statements and defenses of its response and further defended the decision to answer the complaint in a manner that did not directly address many of the facts and allegations due to insufficient knowledge. Respondent also contended that the Respondent had rights to the disputed domain name based on its current usage and that Complainant’s interpretation of the UDRP provisions applicable to this proceeding was erroneous.
Complainant has published a magazine about
hemp and hemp counterculture since 1974 in connection with the mark HIGH TIMES.
Complainant also uses the mark in connection with entertainment and online
services as well as with merchandising through its web site at <hightimes.com>. Since 2005, Complainant has used the
mark in connection with a contest for female readers with the purpose of
crowning monthly and annual winners dubbed as MISS HIGH TIMES. Complainant has
also used the MISS HIGH TIMES mark on various types of clothing for marketing
purposes. Complainant owns pending applications for the MISS HIGH TIMES mark with
the United States Patent and Trademark Office (“USPTO”) at Serial Nos. 77/83,717
and 77/241,740. Complainant also owns several registrations for the mark HIGH
TIMES with the USPTO including Reg. Nos. 2,780,476; 3,025,055; 2,856, 379;
2,519,697, and others. Complainant also owns a Community trademark and a
Respondent also publishes magazines about hemp and hemp counterculture. Respondent allegedly registered the disputed domain name the day after Complainant announced its first MISS HIGH TIMES competition including the details thereof along with a picture of its first finalist in its March 22, 2005 issue of HIGH TIMES magazine. Respondent did not address these allegations or those regarding the initial use of the disputed domain name in competition with the Complainant. Respondent did state that it owns over a hundred domain names all pointed to its marijuana related web site and that Complainant had not complained of Respondent’s use of MISS HIGH TIMES before. Respondent stated that whether persons were truly diverted from Complainant’s website could not be admitted or denied without extensive discovery.
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.
national (and international) trademark registrations are sufficient to
establish rights in the HIGH TIMES mark pursuant to Policy ¶ 4(a)(i). See Mattel, Inc. v. KPF, Inc.,
FA 244073 (Nat. Arb. Forum Apr. 26, 2004) (“Complainant established
rights in the BARBIE mark through registration with the U.S. Patent and
Trademark Office (‘USPTO’).”); see also Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb.
Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO
adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶
4(a)(i).”). Complainant has also established common law trademark rights in the
MISS HIGH TIMES mark based on its use in connection with its competitions and
Respondent’s <misshightimes.com> domain name contains the HIGH
TIMES mark in full
with the addition of the generic term “miss” and the generic top-level domain
(“gTLD”) “.com.” Respondent’s domain
name also contains the MISS HIGH TIMES mark in full. Slight alterations fail to
prevent the disputed domain name from being identical or confusingly similar to
Complainant’s mark pursuant to Policy ¶ 4(a)(i). See
Arthur Guinness Son & Co. (
Complainant has established this element.
The Respondent is not commonly known by the <misshightimes.com> domain name pursuant to Policy ¶ 4(c)(ii) since the WHOIS information identifies Respondent as “420 Magazine.” See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t as the registrant of the disputed domain name and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). Respondent admittedly competes with Complainant in the very narrow market of hemp counterculture publications and does not deny Complainants’s allegation that use of the disputed domain name could lead to viewers being diverted from Complainant’s website to Respondent’s. Respondent also does not refute Complainant’s allegations regarding Respondent’s prior use of the disputed domain name in connection with competing goods and services as well as adult oreinted content on the web such as Respondent’s website featuring “420 girls” which involved nude women smoking cannabis. Thus Respondent’s previous use of the <misshightimes.com> domain name constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Sony Kabushiki Kaisha v. Domain firstname.lastname@example.org +1.415.0, FA 128701 (Nat. Arb. Forum Dec. 16, 2002) (finding that the respondent’s use of its domain name in order to divert Internet users to a website that offers search engine services and links to adult orientated websites was not considered to be in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or 4(c)(iii)); see also Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Complainant established a prima facie case that Respondent lacked rights and legitimate interests in the disputed domain name and the Respondent had the burden of proving the contrary to be true. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). Respondent failed to indicate any interests in the disputed domain prior to the date of the domain registration which occurred the day after the announcement of Complainant’s MISS HIGH TIMES inaugural competition. Respondent’s only claim to rights and legitimate interest relate to it’s present use of the website as a blog for flight attendants, which Respondent admits is a recent change from the prior offending uses. The present use of the website can not be accepted as a bona fide offering of goods and services or fair use under the policy. The policy was not established with the intent of allowing a registrant to gain rights or legitimize wrongful activities by merely changing the disputed website’s contents when faced with a UDRP proceeding. Respondent has failed to carry its burden.
Complainant has established this element.
Complainant alleges that Respondent’s previous use of the <misshightimes.com> domain name competed with and disrupted Complainant’s business. Such use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Svcs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) when the disputed domain name resolved to a website that displayed commercial links to the websites of the complainant’s competitors); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that the respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Respondent’s previous use also
likely caused confusion as to the source, sponsorship, affiliation, and
endorsement of the products advertised on the website which resolved from the <misshightimes.com> domain name for
Respondent’s commercial gain since the domain is identical or confusingly
similar to Complainant’s marks. Such use is further evidence of bad
faith pursuant to Policy ¶ 4(b)(iv). See Qwest Comm’ns Int’l Inc. v. Ling
Shun Shing, FA 187431 (Nat. Arb. Forum
Oct. 6, 2003) (“Respondent has attempted to commercially benefit from
the misleading <qwestwirless.com> domain name by linking the domain name
to adult oriented websites, gambling websites, and websites in competition with
Complainant. Respondent’s attempt to
commercially benefit from the misleading domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv).”); see also Asbury Auto. Group, Inc. v.
Additionally, Respondent apparently had actual knowledge of Complainant’s business through previous interaction with Complainant. This interaction occurred in terms of magazine marketing and merchandising, as well as Respondent’s participation in Complainant’s annual events such as the Cannabis Cup, held in the city where Respondent is located. Bad faith is presumed pursuant to Policy ¶ 4(a)(iii) under such circumstances. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”).
Complainant has established this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <misshightimes.com> domain name be TRANSFERRED from Respondent to Complainant.
Prof. Darryl C. Wilson, Panelist
Dated: May 2, 2008
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