The Reader's Digest Association Inc. v. TravelVideoStore.com c/o Donald E. Wyatt
Claim Number: FA0806001204913
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.
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.
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 firstname.lastname@example.org 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.
Complainant requests that the domain name be transferred from Respondent to 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.
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.
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.
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.
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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