duPont Publishing, Inc. v. Marcus Stern d/b/a Marcus Stern Inc.
Claim Number: FA0211000129127
Complainant is duPont Publishing, Inc., St. Petersburg, FL (“Complainant”) represented by J Douglas Baldridge and Tara M. Vold, of Howrey Simon Arnold & White. Respondent is Marcus Stern d/b/a Marcus Stern Inc., Missouri City, TX (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwdupontregistry.com>, registered with Go Daddy Software.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 4, 2002; the Forum received a hard copy of the Complaint on November 7, 2002.
On November 5, 2002, Go Daddy Software confirmed by e-mail to the Forum that the domain name <wwwdupontregistry.com> is registered with Go Daddy Software and that Respondent is the current registrant of the name. Go Daddy Software verified that Respondent is bound by the Go Daddy Software 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 November 11, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 2, 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 email@example.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 December 12, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Respondent’s <wwwdupontregistry.com> domain name is confusingly similar to Complainant’s DUPONT REGISTRY mark.
Respondent does not have any rights or legitimate interests in the <wwwdupontregistry.com> domain name.
Respondent registered and used the <wwwdupontregistry.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, duPont Publishing, Inc., holds a tradmark registration for the DUPONTREGISTRY.COM mark (U.S. Reg. No. 2,616,090, registered on the Principal Register of the United States Patent and Trademark Office on September 10, 2002). In addition to this trademark registration, Complainant has applied for numerous other trademarks incorporating the DUPONT REGISTRY moniker (the “DUPONT REGISTRY marks”).
Complainant publishes a magazine, duPont REGISTRY, devoted to luxury items, including automobiles, yachts and homes. Complainant first published this magazine in 1985 as an international forum for owners or dealers in exotic, collectible and luxury automobiles, expanding a few years later to the publishing of such magazines as A Buyers Gallery of Fine Boats, A Buyers Gallery of Fine Automobiles and a Buyers Gallery of Fine Homes. All of these publications include the DUPONT REGISTRY mark prominantly displayed to identify the source of the magazine. Complainant has spent millions of dollars promoting its magazines through varied promotional and advertising media. Complainant’s DUPONT REGISTRY marks have been acknowledged as internationally famous. A recent newscast referred to Complainant as the “world famous duPont REGISTRY” and a feature story about Complainant on the television program “Lifestyles of the Rich and Famous” was run dozens of times both domestically and abroad and focused on the fame of Complainant’s mark among the “rich and famous.”
In addition to its print publications, Complainant maintains a presence on the Internet at <dupontregistry.com>. This website receives four to five million hits per month.
Respondent, Marcus Stern d/b/a Marcus Stern Inc., registered the <wwwdupontregistry.com> domain name on January 5, 2002. Respondent is not authorized or licensed to use Complainant’s marks for any purpose. Respondent has posted no original content at its website since its registration of the domain name over ten months ago.
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 will draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
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.
Identical to and/or Confusingly Similar
Because Complainant’s registration of the DUPONT REGISTRY marks took place after Respondent registered the <wwwdupontregistry.com> domain name, the Panel does not automatically assume that Complainant has standing. Complainant’s trademark and subsequent applications for numerous additional registrations of the mark do not establish conclusively rights in the mark. However, Complainant’s uncontroverted statements in this proceeding establish that Complainant has common law rights in the DUPONT REGISTRY mark, which is sufficient to bestow standing upon Complainant to bring this Complaint. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications); see also British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
Over the past fifteen years in which Complainant has done business under the DUPONT REGISTRY marks, Complainant has invested millions of dollars in the development of the goodwill associated with its marks. The resulting consumer recognition of DUPONT REGISTRY makes it a distinctive term that has no meaning beyond its use as a means to identify Complainant as a source of information about certain luxury products and services. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that Complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify Complainant as the source of broadcast services over the Internet, and evidence of wide recognition of the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services).
The domain name registered by Respondent, <wwwdupontregistry.com>, is confusingly similar to Complainant’s DUPONT REGISTRY marks. Respondent’s registration is an example of “typosquatting” or taking advantage of Internet users who enter an Internet address but inadvertantly fail to add the period between the “www” and whatever domain name they are attempting to reach. In this case, Internet users who are hoping to arrive at Complainant’s “www.dupontregistry.com” but accidently do not type a period after they have entered “www,” will be tricked into reaching Respondent’s <wwwdupontregistry.com> domain name. Adding “www” without the period does not prevent a finding of confusing similarity between Respondent’s domain name and Complainant’s mark, especially as the dominant feature of the domain name consists of Complainant’s mark. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”).
Respondent’s addition of the top-level domain “.com”, a feature that is required for all domain name registrants, fails to prevent the Panel from finding that Respondent’s domain name is confusingly similar to Complainant’s mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants").
Accordingly, the Panel finds that the <wwwdupontregistry.com> domain name is confusingly similar to Complainant’s DUPONT REGISTRY marks under Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
Policy paragraphs 4(c)(i)-(iii) list three circumstances illustrative of situations where a respondent would have rights or legitimate interests in a domain name. When a respondent fails to respond to a Complaint, a showing by Complainant that none of these three circumstances is present should be sufficient for Complainant to meet its burden under the Policy, since at that point, the burden shifts to Respondent to rebut Complainant’s allegations. 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).
In these circumstances, Respondent’s failure to respond not only results in its failure to meet its burden but also can be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name. See America Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance that could demonstrate rights to or legitimate interests in the domain name).
Complainant has shown that Policy paragraphs 4(c)(i) and (iii) are inapplicable to Respondent because Respondent does not use the <wwwdupontregistry.com> domain name for any purpose. Respondent has posted no content at the site since its registration some 10 months ago. By failing to make any use of its domain name, Respondent is, by definition, not making a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and is not making a legitimate, noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, Respondent had not used the domain names in connection with any type of bona fide offering of goods and services).
Respondent’s contact information states that it is “Marcus Stern d/b/a Marcus Stern Inc.,” and no evidence supports the proposition that Respondent has ever been “commonly known by” the name WWWDUPONTREGISTRY or <wwwdupontregistry.com>. As such, the Panel finds that Complainant met its burden to show that Respondent does not fall under the ambit of Policy ¶ 4(c)(ii). See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <wwwdupontregistry.com> domain name under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
While Policy paragraph 4(b) lists four circumstances evidencing bad faith use and registration of a domain name, that list is not meant to be all-inclusive. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in ¶4(b), does not mean that the domain names at issue were not registered in and are not being used in bad faith”).
One example of bad faith use and registration not directly illustrated in the Policy, yet nevertheless representing bad faith use and registration of a domain name under Policy ¶ 4(a)(iii), is typosquatting. See AltaVista Co. v. Stoneybrook, D2000-0886 (WIPO Oct. 26, 2000) (awarding <wwwalavista.com>, among other misspellings of altavista.com, to Complainant); see also Dow Jones & Co. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (awarding domain names <wwwdowjones.com>, <wwwwsj.com>, <wwwbarrons.com> and <wwwbarronsmag.com> to Complainants). In light of Complainant’s marks and previously registered <dupontregistry.com> domain name, Respondent’s registration and use of the <wwwdupontregistry.com> domain name qualifies as typosquatting (simply adding a “www” prefix to a mark in which another has rights exemplifies typosquatting) and therefore evidences bad faith use and registration.
Further, evidence of Respondent’s bad faith use and registration of the disputed domain name can be inferred from the fact that Respondent had actual knowledge of Complainant’s mark when it registered the infringing domain name and used it to redirect Internet users to its own website. Respondent’s website incorporates, in its entirety, Complainant’s distinctive DUPONT REGISTRY mark, a circumstance the Panel refuses to find coincidental. Such registration and use is another non-enumerated example of bad faith under Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 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 Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith).
Passive holding of a domain name is also evidence of bad faith use of a domain name under Policy ¶ 4(a)(iii). Respondent has not used the domain name at all since its registration over ten months ago. In light of the fact that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark, and Respondent failed to offer any evidence arguing the contrary, the Panel finds that Respondent has made no good faith and has no good faith use planned for the disputed domain name. Passive holding of the name evidences Respondent’s registration and use in bad faith. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Hewlett-Packard Co. v. Martineau, FA 95359 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent’s failure to submit an assertion of good faith intent to use the domain name, in addition to the passive holding of the domain name, reveal that Respondent registered and used the domain name in bad faith).
Accordingly, the Panel finds that Respondent registered and used the <wwwdupontregistry.com> domain name in bad faith, and Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <wwwdupontregistry.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 26, 2002.
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