The Reader's Digest
Association Inc. v. TravelVideoStore.com c/o Donald E. Wyatt
Claim Number: FA0806001204913
PARTIES
Complainant is The Reader's Digest Association Inc. (“Complainant”), represented by Lars
E Gulbrandsen, of Quarles & Brady LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <readersdigeststore.com>, registered
with Godaddy.com,
Inc.
PANEL
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.
Prof. Darryl C. Wilson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 12, 2008; the
National Arbitration Forum received a hard copy of the Complaint on June 16, 2008.
On June 16, 2008, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <readersdigeststore.com> domain name
is registered with Godaddy.com, Inc. and
that the Respondent is the current registrant of the name. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, 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 June 19, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 9, 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 postmaster@readersdigeststore.com by e-mail.
A timely Response was received and determined to be complete on July 9, 2008.
A timely Additional Submission was submitted by Complainant and
determined to be complete on July 14, 2008.
A timely Additional Submission was submitted by Respondent and
determined to be complete on July 21, 2008.
On July 17, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Prof. Darryl C. Wilson as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant contends that Respondent registered the domain name <readersdigeststore.com> on March
26, 2005 and that the disputed domain is identical and/or confusingly similar
to Complainant’s registered trademark, READER’S DIGEST.
Complainant further contends that Respondent cannot establish any
rights to or legitimate interest in the disputed domain and that Respondent
engaged in bad faith registration and use of the disputed domain.
B.
Respondent
Respondent contends that Complainant’s trademark consists of two
generic words which have individual common meanings that are descriptive and
therefore unprotectable. Respondent
additionally notes that others use the words “Reader’s Digest” in various forms
in conjunction with their business names. Respondent further points to the “First Sale”
doctrine and the “doctrine of exhaustion” as limits on Complainant’s ability to
enforce rights in the disputed domain since one of Respondent’s objectives is
to sell READER’S DIGEST videos that Complainant has already been compensated
for. Respondent also contends that the
domain in question is merely on a parked page featuring links from which
Respondent derives no compensation, thus further supporting Respondent’s
statement that its use is legitimate, noncommercial, or fair. Respondent argues that it has never offered
the domain in question for sale nor has Respondent engaged in bad faith
registration or use of the disputed domain.
C. Additional Submissions
Complainant’s Additional Submission disputes the characterization of
its registered trademark as generic and unprotectable. Complainant reasserts its objection to
Respondent’s use of the disputed domain name as confusingly similar to and
infringing upon Complainant’s trademark rights. Complainant notes that Respondent’s domain
name is identical to its registered mark except for the addition of the generic
word “store” and contends that Respondent’s claim that it is ignorant of the
current use of the website associated with the disputed domain name is not
proof of rights to or legitimate use of the domain. Complainant argues that Respondent’s reliance
on the “first sale” doctrine is misplaced and that Respondent fails to rebut
Complainant’s assertion that Respondent’s use is in bad faith.
Respondent’s Additional Submission restates the claim that READER’S
DIGEST is generic or at best descriptive and prays that if any protection is
given to the mark that such protection be limited to the registered mark and
not be extended “further into variations thereof.” Respondent also argues that its disputed
domain is not identical or confusingly similar to Complainant’s protected mark
because Complainant has failed to provide any evidence of actual confusion
supporting that contention. Respondent
reasserts the applicability of the “first sale doctrine” as limiting
Complainant’s rights and expands upon its contentions that the inadvertent acts
of some unknown third party(s) have intervened regarding the content of the
website to which the disputed domain resolves and that intervention bears upon
any conclusions that may be reached on Respondent’s intent to misuse the
disputed domain.
FINDINGS
Complainant, The Reader’s Digest Association
Inc., publishes the Reader’s Digest magazine in 50 editions and 21 languages to
a global readership of nearly 80 million consumers. The company also sells a
variety of products such as books, music, and videos on its online store which
can be found at <rdstore.com>. The
company owns several U.S. Trademark Registrations for the word mark READER’S
DIGEST and variations thereon. These
registrations, dating back to as early as 1963, indicate a date of first use in
commerce as early as 1922. Complainant also owns
several domain names incorporating the Reader’s Digest name and mark including <readersdigest.com>
which has been registered since 1996.
Respondent, Donald E. Wyatt, has been
actively engaged in selling and distributing travel-related films through his
website <travelvideo.com> and
many other domains since 2003. Respondent registered the disputed domain name, <readersdigeststore.com> on March
26, 2005. The website to which the
domain resolves is a parked page of Respondent’s domain registrar where it has
been since at least October, 2007. Respondent
claims that he is without knowledge of how this occurred and that he is
likewise without control over the page, suggesting that this dispute may be
better suited for a proceeding between ICANN and its registrars.
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.
Complainant has rights in the READER’S DIGEST mark on the basis of its multiple registrations with the United States Patent and Trademark Office (i.e. USPTO Reg. No. 1,029,220 issued January 6, 1976.) See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Respondent’s domain name <readersdigeststore.com> is identical or confusingly similar to
Complainant’s mark. Minor changes in
lettering, punctuation, attaching generic terms, or adding gTLD’s is not
sufficient to distinguish between a registered mark and an improper domain
name. See LOreal USA Creative Inc v. Syncopate.com –
Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003)
(finding that the omission of an apostrophe did not significantly distinguish
the domain name from the mark); see also Am. Airlines, Inc. v.
Data Art Corp., FA 94908 (Nat.
Arb. Forum July 11, 2000) (finding <americanairline.com>
"effectively identical and certainly confusingly similar" to the
complainant's AMERICAN AIRLINES registered marks); see also Westfield Corp. v.
Complainant has established this element.
Complainant has made a prima facie case, thus Respondent bears the burden of showing rights or legitimate interests in the disputed domain. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Complainant
contends, and Respondent admits, that Respondent is not commonly known by the
disputed domain name nor is Respondent licensed to register names featuring the
READER’S DIGEST mark or any derivative thereof. As Respondent is not commonly known by the
domain name, such bears against a finding that Respondent has rights or legitimate
interests in the disputed domain. See Gallup,
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that the respondent does not have rights in a domain name when the
respondent is not known by the mark); see also Foot Locker Retail, Inc. v. Gibson, FA 139693 (Nat. Arb. Forum Feb. 4, 2003)
(“Due to the fame of Complainant’s FOOT LOCKER family of marks . . . and the fact that Respondent’s WHOIS information
reveals its name to be ‘Bruce Gibson,’ the Panel infers that Respondent was not
‘commonly known by’ any of the disputed domain names prior to their
registration, and concludes that Policy ¶ 4(c)(ii) does not apply to
Respondent.”).
Respondent also admits
that the disputed domain resolves to a website that hosts links to a variety of
goods and services. Complainant states
that these goods and services compete with the offerings covered by its
registered trademark, which Respondent does not deny but instead claims no
responsibility for due to actions of a third party. This novel assertion rings hollow for
Respondent in light of its desire to maintain ownership of the domain name. A party claiming ownership of a mark or domain
name cannot favorably separate their ownership from the responsibility of the
content associated with the same by passively allowing others to use their mark
or domain name. While Respondent states
that it is not compensated in any way for the links, no positive inferences
arise from Respondent’s decision to do nothing about the situation for nearly a
year. See Coryn Group, Inc. v. Media Insight,
FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not
using the domain names for a bona fide offering of goods or services nor
a legitimate noncommercial or fair use because the respondent used the names to
divert Internet users to a website that offered services that competed with
those offered by the complainant under its marks); see also Black & Decker Corp. v. Clinical Evaluations,
FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of
the disputed domain name to redirect Internet users to commercial websites,
unrelated to the complainant and presumably with the purpose of earning a
commission or pay-per-click referral fee did not evidence rights or legitimate
interests in the domain name).
Respondent’s contention that Complainant’s READER’S DIGEST
mark is unprotectable as it is descriptive or generic because of the separate
meaning of each term and/or the use of the terms by others is unfounded. READER’S DIGEST is a well known federally
registered mark with some degree of global fame that Respondent knew or should
have known of when it registered
<readersdigeststore.com>. While
Complainant does not have the right to prevent others from using the words
“reader’s” or “digest” in a merely descriptive fashion, their trademark rights
do allow them to prevent infringing confusingly similar uses by others who,
like Respondent, take advantage of their goodwill by using its protected mark
in the same manner Complainant does to identify the same or similar goods and
services. Furthermore, the law presumes that a registered mark is valid and
that it can not be invalidated by breaking it into parts. See
Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007)
(finding that because the complainant had received a trademark registration for
its VANCE mark, the respondent’s argument that the term was generic failed
under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s
argument that each individual word in the mark is unprotectable and therefore
the overall mark is unprotectable is at odds with the anti-dissection principle
of trademark law.”).
Complainant has established this element.
Respondent’s use of the disputed domain for
purposes of operating a website that competes with Complainant’s business
constitutes a disruption of Complainant’s business and is evidence of bad faith
registration and use. See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July
18, 2000) (finding the respondent acted in bad faith by attracting Internet
users to a website that competes with the complainant’s business); see also EBAY, Inc. v. MEOdesigns, D2000-1368
(WIPO Dec. 15, 2000) (finding that the respondent registered and used the
domain name <eebay.com> in bad faith where the respondent has used the
domain name to promote competing auction sites). Further, Respondent knew or should have known
of Complainant’s registered READER’S DIGEST mark due to the notoriety of the
mark and the correspondence Complainant sent to Respondent prior to and at the
time of Respondent’s registration of <readersdigeststore.com>. Registration
of a domain name that is confusingly similar to a registered mark is evidence
of bad faith registration. See
Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum April 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
Complainant has established this element.
DECISION
As Complainant has established all three elements required under the
ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <readersdigeststore.com> domain name
be TRANSFERRED from Respondent to Complainant.
Prof. Darryl C. Wilson, Panelist
Dated: July 31, 2008
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