Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. Domain, Admin c/o Western Sports Shows Inc.
Claim Number: FA0903001252055
Complainant is Reed
Elsevier Inc. and Reed Elsevier
Properties Inc. (“Complainant”), represented by Tara M. Vold, of Fulbright & Jaworski L.L.P, Washington,
D.C., USA. Respondent is Domain, Admin c/o Western Sports Shows Inc. (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <easternsportsshow.com> and <easternoutdoorshow.com>, registered with Moniker Online Services, Inc.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 12, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 13, 2009.
On March 19, 2009, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <easternsportsshow.com> and <easternoutdoorshow.com> domain names are registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the names. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 24, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 13, 2009 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@easternsportsshow.com and postmaster@easternoutdoorshow.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 20, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <easternsportsshow.com> and <easternoutdoorshow.com> domain names are confusingly similar to Complainant’s EASTERN SPORTS & OUTDOOR SHOW mark.
2. Respondent does not have any rights or legitimate interests in the <easternsportsshow.com> and <easternoutdoorshow.com> domain names.
3. Respondent registered and used the <easternsportsshow.com>and <easternoutdoorshow.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Reed Elsevier Inc. and Reed Elsevier Properties Inc., is in the business of promoting, organizing, and conducting tradeshows and conferences. Complainant has promoted tradeshows under its EASTERN SPORTS & OUTDOOR SHOW mark since 1984, and has registered its mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,103,112 issued October 7, 1997).
Respondent registered the <easternsportsshow.com> and <easternoutdoorshow.com> domain names on April 5, 2006 and May 10, 2004, respectively. The disputed domain names resolve to websites that display links to, and advertisements for, third-party competitors of Complainant.
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
Paragraph 4(a) of the Policy requires that 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.
The Panel finds that Complainant’s registration of the EASTERN SPORTS & OUTDOOR SHOW mark with the USPTO sufficiently demonstrates Complainant’s rights in the mark under Policy ¶ 4(a)(i). See VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (“Complainant has established rights in the AIM mark through its use and federal trademark registrations for purposes of Policy ¶ 4(a)(i).”).
Respondent’s <easternsportsshow.com> and <easternoutdoorshow.com>
domain names include Complainant’s EASTERN SPORTS & OUTDOOR SHOW mark while
removing the ampersand element as well as the “SPORTS” or “OUTDOOR” element, and
both include the generic top-level domain “.com.” The Panel finds that none of these
alterations sufficiently differentiate the disputed domain names from
Complainant’s mark. See Trip
Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007)
(concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,”
or “.org,” is irrelevant to a Policy ¶ 4(a)(i)
analysis); see also Down E. Enter. Inc. v.
Countywide Commc’ns, FA 96613 (Nat. Arb.
Forum Apr. 5, 2001) (finding the domain name <downeastmagazine.com>
confusingly similar to the complainant’s common law mark DOWN EAST, THE
MAGAZINE OF MAINE). Therefore, the Panel
finds that the disputed domain names are confusingly similar to Complainant’s
mark under Policy ¶ 4(a)(i); see also McKinsey Holdings, Inc. v. Indidom, D2000-1616 (WIPO Jan.
31, 2001) (finding that the removal of the ampersand from “McKinsey &
Company” does not affect the user’s understanding of the domain name, and
therefore the domain name <mckinseycompany.com> is identical and/or confusingly
similar to the mark “McKinsey & Company”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain names. Once Complainant sets forth a prima facie case supporting its allegations, as it has in this case, the burden shifts to Respondent to prove that it does have rights or legitimate interests under Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
The Panel notes that the evidence within the record points against Respondent in a Policy ¶ 4(c)(ii) analysis of whether Respondent is or ever was commonly known by the disputed domain names. The WHOIS information lists Respondent as “Domain, Admin c/o Western Sports Shows Inc.,” and Complainant has expressly alleged that Respondent has never received license or authorization to use the mark in any fashion. Thus, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there is no evidence in the record indicating that the respondent is commonly known by the disputed domain name); see also 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).
The disputed domain names resolve to websites that list
links and advertisements for Complainant’s direct competitors. The Panel presumes that Respondent
commercially benefits from this endeavor through the receipt of click-through
fees. The Panel therefore finds that
Respondent has not made 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). See
Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007)
(holding that the operation of a pay-per-click website at a confusingly similar
domain name was not 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)); see
also Vance Int’l, Inc. v. Abend, FA
970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a
pay-per-click website at a confusingly similar domain name does not represent a
bona fide offering of goods or
services or a legitimate noncommercial or fair use, regardless of whether or
not the links resolve to competing or unrelated websites or if the respondent
is itself commercially profiting from the click-through fees).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s use of disputed domain
names to host competitive third-party advertisements disrupts Complainant’s
business, and therefore evidences Respondent’s bad faith registration and use
under Policy ¶ 4(b)(iii). See
Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining
“competitor” as “one who acts in opposition to another and the context does not
imply or demand any restricted meaning such as commercial or business
competitor”); see also DatingDirect.com Ltd. v. Aston,
FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is
appropriating Complainant’s mark to divert Complainant’s customers to
Respondent’s competing business. The
Panel finds this diversion is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii).”).
Complainant claims that Respondent has created a likelihood
of confusion as to Complainant’s association or sponsorship of the disputed
domain names for commercial gain due to the confusingly similar disputed domain
names and corresponding websites. The
Panel agrees with this assertion and therefore finds that Respondent has
engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke,
FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent
engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a
commercial search engine with links to the products of the complainant and to
complainant’s competitors, as well as by diverting Internet users to several
other domain names); see also AOL LLC v.
AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the
respondent registered and used the disputed domain name in bad faith pursuant
to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the
likelihood of confusion between the complainant’s AIM mark and the competing
instant messaging products and services advertised on the respondent’s website
which resolved from the disputed domain name).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <easternsportsshow.com> and <easternoutdoorshow.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: May 4, 2009
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