National Arbitration Forum

 

DECISION

 

News West Publishing, Inc., d/b/a Laughlin Entertainer and LaughlinEntertainer.com v. Thane O'Brien

Claim Number: FA1007001333948

 

PARTIES

Complainant is News West Publishing, Inc., d/b/a Laughlin Entertainer and LaughlinEntertainer.com (“Complainant”), represented by Neil Martin, of Gordon & Rees LLP, California, USA.  Respondent is Thane O'Brien (“Respondent”), Nevada, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <laughlinentertaineronline.com>, registered with Wild West Domains, Inc.

 

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Nathalie Dreyfus as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 8, 2010.

 

On July 8, 2010, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <laughlinentertaineronline.com> domain name is registered with Wild West Domains, Inc. and that the Respondent is the current registrant of the name.  Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 July 14, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 3, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@laughlinentertaineronline.com.  Also on July 14, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on July 26, 2010.

 

An additional document was submitted by Respondent to the Forum by email on August 6, 2010. The Supplemental Rule 7 provides that a party may submit additional written statements and documents to the Forum and the opposing party within five calendar days after the date the Response was received by the forum. Respondent submitted the additional document more than five calendar days to the Forum, and it did not submit it to the opposing party. Thus the additional submission does not comply with Supplemental Rule 7. As a consequence, the Panel will not take Respondent’s Additional Submission into consideration.

 

On August 4, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Nathalie Dreyfus as Panelist.

 

On August 12, 2010, the Forum served an Order for additional submissions and extending time for rendering a decision, by e-mail to Complainant authorized representative and to Respondent, requesting Complainant to submit additional submissions to the Forum no later than August 19, 2010, and extending time for the Panel to render the decision to August 25, 2010, pursuant to Rule 12 and Rule 15 (b) of the Policy. Namely, Complainant was requested to submit evidences of its rights in the marks referred to in the Complaint, along with evidences of the registration and use of the domain name at issue. Complainant submitted the requested additional written statements and documents pursuant to the Order on August 19, 2010. As a consequence, the Panel will take Complainant’s Additional Submission into consideration.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant contends that it owns common law rights in LAUGHLIN ENTERTAINER and LAUGHLINENTERTAINER.COM.

 

Complainant avers it has used the LAUGHLIN ENTERTAINER mark in commerce since 1985 in connection with print magazines, consisting of articles that provide information on casinos, resorts, hotels, tourism, attractions, dining, shows, events, coupons, and theaters for the Laughlin, Nevada area. Complainant asserts that people have come to associate LAUGHLIN ENTERTAINER with the publications from Complainant.

 

Complainant also alleges that it has acquired secondary meaning in the mark LAUGHLINENTERTAINER.COM as it began to provide its articles and information online in 1999 via the domain name <laughlinentertainer.com>.

 

Complainant alleges that the domain name at issue is confusingly similar to Complainant’s common law rights. Complainant asserts the disputed domain name fully incorporates its marks.  Complainant contends the addition of the generic term “online” to Complainant’s mark does not sufficiently distinguish Respondent’s disputed domain name from its mark.  In addition, Complainant’s representative claims four of Complainant’s advertisers expressed confusion regarding the source of Respondent’s website.

 

Complainant further contends that Respondent has no rights with respect to the disputed domain name because the Respondent was not authorized to use Complainant’s marks for his own personal use, and Respondent is not making a legitimate noncommercial or fair use of the domain name at issue or a bona fide offering of goods or services.

 

Finally, Complainant contends that Respondent registered and used the domain name in bad faith. Indeed, Complainant argues that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its marks. Complainant also alleges Respondent uses the disputed domain name to resolve to a website that provides information and services that compete with Complainant’s business.

 

B. Respondent

 

Respondent contends the LAUGHLIN ENTERTAINER or LAUGHLIN ENTERTAINER.COM marks are not registered with the United States Patent and Trademark Office (“USPTO”).

 

Respondent also contends the purpose of the disputed domain name is to sell advertising to the Laughlin, Nevada community. Respondent claims that it provides its online periodical to subscribers via e-mail broadcast rather than on its resolving website.

 

C. Additional Submissions

 

Complainant submitted evidence of its rights in the marks referred to in the Complaint.

 

FINDINGS

For the reasons set forth below, the Panel finds the requested relief should be granted.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant is not the owner of trademark registrations for the LAUGHLIN ENTERTAINER mark or the LAUGHLINENTERTAINER.COM mark with the USPTO.  However, federal trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i).  Prior panels have found that a governmental registration is not required so long as the complainant can establish common law rights through proof of sufficient secondary meaning associated with the mark.  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007).

 

Complainant submitted newspaper articles published by third parties, print-outs of Internet pages and excerpts of the LAUGHLIN ENTERTAINER print publication. This submission shows consistent and continuous use of the mark LAUGHLIN ENTERTAINER in connection with print magazines providing articles and information regarding casinos, resorts, hotels, tourism, attractions, dining, shows, events, coupons, theaters, and diverse information for the Laughlin, Nevada area since 1990. Complainant also submitted web traffic statistics for its domain name <laughlinentertainer.com>, print-outs of the website “www.laughlineentertainer.com” and a web agency agreement.  This submission highlights the use of the mark LAUGHLINENTERTAINER.COM in connection with online articles and information for the Laughlin, Nevada area since 2003. Based on the record, the Panel concludes Complainant has provided sufficient evidence of its continuous use and acquired secondary meaning in the LAUGHLIN ENTERTAINER mark and the LAUGHLINENTERTAINER.COM mark to establish common law rights in the marks under Policy ¶ 4(a)(i) dating back to 1985 and 1999 respectively.  See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007).

 

The Panel finds that the domain name at issue fully incorporates Complainant’s LAUGHLINENTERTAINER.COM mark.  The addition of the generic term “online” to Complainant’s mark does not sufficiently distinguish Respondent’s disputed domain name from its mark. Thus the Panel is convinced that the domain name at issue <laughlinentertaineronline.com> is confusingly similar to Complainant’s LAUGHLINENTERTAINER.COM mark pursuant to Policy ¶ 4(a)(i).  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001).

 

Besides, the Panel evaluates confusingly similar as it relates to Complainant’s LAUGHLIN ENTERTAINER mark.  Prior Panels have found the omission of spaces between the words in a complainant’s mark and the affixation of a generic top-level domain (“gTLD”) like “.com” do not negate a finding of confusingly similar.  See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007).  The Panel finds the addition of the generic term “online” does not render Respondent’s disputed domain name distinct from Complainant’s mark.  See Arthur Guinness, D2001-0026, supra.  Therefore, the Panel finds the domain name at issue is also confusingly similar to Complainant’s LAUGHLIN ENTERTAINER mark pursuant to Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant alleges it has not authorized Respondent to use its marks for Respondent’s own personal use. This allegation is not denied by Respondent.

 

The Complainant alleges that the domain name at issue resolves to a home page for Entertainer Weekly, containing articles and information regarding casinos, resorts, hotels, tourism, attractions, dining, shows, events, coupons, and theaters in the Laughlin, Nevada area.  Respondent does not deny this allegation, but it contends that said domain name provides an online periodical to subscribers via e-mail broadcast rather than on its resolving website. In the absence of further record and denial from Respondent, the Panel accepts that the information published on Respondent’s website is the same type of information that Complainant provides in its print and online magazines. Thus, Respondent’s domain name directly competes with Complainant’s magazine and business. The Panel concludes Respondent does not use the disputed domain name for 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 Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002).

 

Registration and Use in Bad Faith

 

As previously discussed, the Panel finds the domain name at issue is confusingly similar to Complainant’s marks. The Panel finds that Respondent is using the domain name to intentionally attempt to attract Internet users, for commercial gain, to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or services. The Panel thus finds Respondent’s behavior constitutes registration and use in bad faith pursuant to Policy ¶ 4(b)(v).  See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000); see also Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006).

 

The Panel accepts that the domain name at issue resolves to a website that provides information and services that compete with Complainant’s business.  The Panel finds Respondent uses a confusingly similar domain name to divert Internet users seeking Complainant’s business to Respondent’s competing website.  Therefore, the Panel finds this practice disrupts Complainant’s business, which qualifies as registration and use in bad faith pursuant to Policy ¶ 4(b)(iii).  See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <laughlinentertaineronline.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Nathalie Dreyfus, Panelist
Dated: August 24, 2010

 

 

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