Gruner + Jahr Printing & Publishing
Co. v. Peter Carrington a/k/a Party Night Inc.
Claim Number: FA0208000122207
PARTIES
Complainant
is Gruner + Jahr Printing &
Publishing Co., New York, NY, USA (“Complainant”) represented by Lisa Rosenburgh, of Salans Hertzfeld Heilbronn Christy & Viener. Respondent is Peter Carrington a/k/a Party Night, Inc., Amsterdam, THE
NETHERLANDS (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <ymmagizine.com>,
registered with Key-Systems GmbH.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
James
A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 22, 2002; the Forum received a hard copy of the
Complaint on August 26, 2002.
On
August 23, 2002, Key-Systems GmbH confirmed by e-mail to the Forum that the
domain name <ymmagizine.com>
is registered with Key-Systems GmbH and that Respondent is the current
registrant of the name. Key-Systems
GmbH has verified that Respondent is bound by the Key-Systems GmbH 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
September 3, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 23, 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@ymmagizine.com 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
October 8, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<ymmagizine.com> domain name
is confusingly similar to Complainant’s mark.
Respondent
has no rights or legitimate interests in the <ymmagizine.com> domain name.
Respondent
registered and used the <ymmagizine.com>
domain name in bad faith.
B.
Respondent
Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant holds Reg. No. 2,343,150 with
the United States Patent and Trademark Office (“USPTO”) for the YM mark. Complainant also has other trademarks
registered with the USPTO incorporating the YM mark in some fashion, including
YM YOUNG MISS MAGAZINE, YM YOUNG & MODERN and YM.COM. Complainant first used the YM mark in 1985.
Complainant uses the YM mark and related
marks for its magazine that is directed to an audience of young women. In addition, Complainant licenses the YM
mark for products related to the YM magazine. Complainant’s magazine is issued eleven times a year and reaches
an audience of 9.1 million. YM
magazine is among the most popular and well-respected teen magazines and, as
such, the YM mark is among Complainant’s most valuable assets.
Respondent registered the <ymmagizine.com> domain name on
August 11, 2002. Shortly thereafter,
Respondent used the domain name to link Internet traffic to pornographic
websites. Upon entering the domain name
into the web browser, the Internet user is routed to a pornographic website
(<amateurvideos.nl>) and cannot exit without clicking through a
succession of web pages, a process called “mousetrapping.” The web pages that pop-up upon attempting to
exit the initial pornographic website are all pornography related and contain
illicit pictures.
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 Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2)
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 rights in
the YM mark through proof of trademark registration with the USPTO and
continuous use of the mark in commerce since 1985.
Respondent’s <ymmagizine.com> domain name contains Complainant’s entire YM
mark with the misspelled addition of the word “magazine” (“magizine”). The word “magazine” has an obvious
relationship with Complainant’s YM mark, as the mark itself denotes
Complainant’s teen magazine.
Respondent’s addition of “magizine” to the YM mark also is suggestive of
Complainant’s business operations, because “magizine” is essentially a typo of
“magazine” and is phonetically the same.
Therefore, Respondent’s <ymmagizine.com>
domain name is confusingly similar to Complainant’s YM mark. See 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); 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).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
As a part of its prima facie case,
Complainant alleges that Respondent has no rights or legitimate interests in
the <ymmagizine.com> domain
name. Respondent has failed to come
forward to contest this allegation, and has failed to fulfill its burden of
articulating rights or legitimate interests.
Therefore, the Panel may presume that Respondent has no rights or
legitimate interests in the <ymmagizine.com>
domain name. 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); see also 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).
Furthermore, because Respondent failed to
answer the Complaint, the Panel is permitted to accept Complainant’s
allegations as true and draw all reasonable inferences in favor of
Complainant. See Talk City, Inc.
v. Robertson, D2000-0009 (WIPO Feb. 29, 2000)
(“In the absence of a response, it is appropriate to accept as true all
allegations of the Complaint”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095
(Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable
inferences of fact in the allegations of Complainant to be deemed true).
Respondent’s <ymmagizine.com> domain name is used as a tool to ensnare
Internet users to pop-up pornographic websites. Upon keying the domain name into the web browser the Internet
user is swept away into a pornographic web (“mousetrap”). The Internet user cannot exit the initial
pornography related website without clicking through a succession of more
pornographic websites that pop-up. This
is a common infringing practice done by many cybersquatters and, as such, it is
reasonable to presume that Respondent commercially benefits from the
“mousetrap.” Therefore, Respondent’s
domain name use does not represent a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), nor does it constitute a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii).
See Vapor Blast Mfg. Co. v.
R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding
that Respondent’s commercial use of the domain name to confuse and divert
Internet traffic is not a legitimate use of the domain name); see also Brown & Bigelow, Inc. v. Rodela, FA
96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's
well-known mark to provide a link to a pornographic site is not a legitimate or
fair use); see also MatchNet plc. v. MAC Trading,
D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of
goods or services to use a domain name for commercial gain by attracting
Internet users to third party sites offering sexually explicit and pornographic
material where such use is calculated to mislead consumers and to tarnish
Complainant’s mark).
Although Complainant licenses its YM mark
for products related to its teen magazine, Respondent clearly was never authorized
to use the mark for any reason, let alone to divert Internet traffic into a
pornographic “mousetrap.” Respondent is
only identified to this Panel as Peter Carrington, or alternatively, Party
Night Inc. Respondent has not come
forward to demonstrate that it is commonly referred to by the <ymmagizine.com> domain
name. Thus, Respondent has not
established rights or legitimate interests in the <ymmagizine.com> domain name pursuant to Policy ¶
4(c)(ii). 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 Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark).
Accordingly, the Panel finds that
Respondent has no rights or legitimate interests in the <ymmagizine.com> domain name; thus, Policy ¶ 4(a)(ii) has
been satisfied.
Registration and Use in Bad Faith
Respondent’s pornographic “mousetrap” is
an infringing process that tarnishes Complainant’s YM mark. This is especially true because the YM mark
is used to denote Complainant’s YM teen magazine. Hence, there is a strong likelihood that
young Internet users will be caught up in Respondent’s pornographic web and
therefore become confused as to Complainant’s association. Even more frightening is that Respondent’s
young consumer base may more easily misspell “magazine,” incorporating
Respondent’s “magizine,” when searching for Complainant’s YM related Internet
services. Respondent’s domain name was
clearly registered to capitalize on the goodwill of Complainant’s YM mark by
presumably collecting a profit from the hits of each pop-up pornography related
websites contained in the “mousetrap.”
Therefore, Respondent’s behavior falls within the purviews of Policy ¶
4(b)(iv), representing bad faith registration and use of the <ymmagizine.com> domain
name. See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000)
(finding that the association of a confusingly similar domain name with a
pornographic website can constitute bad faith); see also Brown & Bigelow, Inc. v. Rodela, FA
96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well-known mark to
provide a link to a pornographic site is evidence of bad faith registration and
use); see also Youtv, Inc. v.
Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where
Respondent attracted users to his website for commercial gain and linked his
website to pornographic websites).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby granted.
Accordingly, it is Ordered that the
domain name <ymmagizine.com> be transferred from Respondent
to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 10, 2002
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