DECISION

 

Gruner + Jahr Printing & Publishing Co. v. Lorna Kang

Claim Number: FA0209000124757

 

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 Lorna Kang, Perak, MALAYSIA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <ymagazine.com>, registered with iHoldings.com.

 

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.

 

            Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 9, 2002; the Forum received a hard copy of the Complaint on September 9, 2002.

 

On September 11, 2002, iHoldings.com confirmed by e-mail to the Forum that the domain name <ymagazine.com> is registered with iHoldings.com and that Respondent is the current registrant of the name.  iHoldings.com has verified that Respondent is bound by the iHoldings.com 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 11, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 1, 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@ymagazine.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 23, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) 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 <ymagazine.com> domain name is confusingly similar to Complainant’s YM family of marks.

 

Respondent has no rights or legitimate interests in the <ymagazine.com> domain name.

 

            Respondent registered and used the <ymagazine.com> domain name in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Since at least as early as 1985, Complainant has continually used the YM mark in the United States.  Complainant uses the YM mark in connection with a magazine with a target audience of young teenagers.  Complainant’s related magazine is commonly referred to as YM and/or YM Magazine.  Throughout the publishing industry and the public at large the YM mark has come to be regarded as offering quality goods and services. 

 

Complainant holds the following United States Patent and Trademark Office (“USPTO”) registrations for the YM related marks (collectively the “YM family of marks”):

 

·        YM YOUNG MISS MAGAZINE, Registration No. 1,373,764 for “magazine published from time to time.”

·        YM YOUNG & MODERN, Registration No. 1,876,591 for “general interest magazines directed to young women.”

·        YM, Registration No. 2,343,150 for “general interest magazine directed to young women.”

·        YM.COM, Registration No. 2,416,469 for “computer service, namely providing online general interest magazines directed toward young women.”

 

Complainant’s magazine base has grown over the years, and currently YM Magazine is issued eleven times a year with a total audience of 9.1 million.  Due to Complainant’s large consuming audience, the YM family of marks have become an extremely valuable business asset for Complainant. 

 

Respondent registered the <ymagazine.com> domain name on May 15, 2002.  Upon entering the domain name in the web browser, a pop-up screen appears where if one clicks on “OK” they are diverted to a gambling website, <mangocasinos.com>.  When the pop-up screen is exited by clicking on “CANCEL” the main website fully appears.  This website is <ownbox.com/treasure/magazines/html>, which lists the sale of multiple magazines, including Complainant’s YM Magazine, at a discounted price.  Complainant attempted twice to contact Respondent and give notice of the infringing domain name, however,  Respondent never replied to Complainant’s correspondences. 

 

DISCUSSION

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 and legitimate interests in the YM family of marks through proof of registration with the USPTO and continuous use of the marks since 1985.

Respondent’s <ymagazine.com> domain name contains Complainant’s YM trademark combined with the majority of the word “magazine,” namely, “agazine.”  At first glance the domain name appears to simply be the common name of Complainant’s magazine, YM Magazine.  However, Respondent’s domain name is just a common misspelling of “magazine” combined with Complainant’s YM mark.  Respondent is merely taking advantage of a typographical error and therefore the domain name is not considered distinct.  Moreover, the <ymagazine.com> domain name is confusingly similar to Complainant’s YM mark and YM family of marks.  See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such generic typos do not change the Respondent’s infringement on a core trademark held by Complainant); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); 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).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied. 

 

Rights or Legitimate Interests

Respondent failed to come forward and challenge Complainant’s contentions.  Complainant has alleged a prima facie case, including its allegation that Respondent has no rights or legitimate interests in the <ymagazine.com> domain name.  Respondent’s failure to answer that contention allows the Panel to presume that Respondent has no such rights or legitimate interests.  See 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); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

 

Furthermore, allowing the Complaint to go uncontested permits the Panel to accept all 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

 

Respondent primarily uses the <ymagazine.com> domain name to divert Internet users to a website that sells subscriptions to numerous magazines, including Complainant’s YM Magazine.  Respondent is apparently profiting from its diversionary use of the domain name.  The evidence that allows this conclusion is that a pop-up screen appears for a gambling website, presumably creating revenue for Respondent, before an Internet user can fully view the magazine soliciting website.  Using the domain name as a means to sell Complainant’s products does not constitute rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).  See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of Complainant’s mark to sell Complainant’s perfume, as well as other brands of perfume, is not bona fide use); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell Complainant’s goods without Complainant’s authority, as well as others’ goods is not bona fide use).

 

Respondent is not authorized to use any of Complainant’s YM related marks, and has no connection with Complainant.  There is no evidence on record that Respondent is commonly known by the <ymagazine.com> domain name.  In fact, the only information of Respondent’s name suggests that Respondent is known as Lorna Kang.  Therefore, Respondent lacks rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See 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); see also 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).

 

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <ymagazine.com> domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

Respondent’s use of the <ymagazine.com> domain is in direct competition with Complainant’s business services of offering subscriptions to its YM Magazine.  Complainant points out that Respondent need not use the domain name to operate its magazine subscription website.  The use of the confusingly similar domain name, however, evidences an opportunistic attempt to draw a portion of a relevant consumer audience to Respondent’s commercial website.  Since the domain name is essentially a typographical error of Complainant’s YM Magazine, the Internet user that is diverted to Respondent’s website is highly likely to be confused as to Complainant’s sponsorship or affiliation.  Therefore, Respondent’s registration and use of the domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv).  See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that Respondent acted in bad faith by registering the domain name <fossilwatch.com> and using it to sell various watch brands); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as Complainant).

 

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 <ymagazine.com> be transferred from Respondent to Complainant.

 

 

 

 

 

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  November 4, 2002

 

 

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