Reiman Media Group Inc. v. Peter
Carrington d/b/a Party Night Inc.
Claim Number: FA0212000135046
PARTIES
Complainant
is Reiman Media Group Inc.,
Greendale, WI, USA (“Complainant”) represented by Nathan D. Jamison, of
Quarles & Brady LLP. Respondent
is Peter Carrington d/b/a Party Night Inc., Amsterdam, THE NETHERLANDS (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <reimanpublishing.com>,
registered with Key-Systems.
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.
Tyrus
R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on November 27, 2002; the Forum received a hard copy of the
Complaint on December 2, 2002.
On
December 6, 2002, Key-Systems confirmed by e-mail to the Forum that the domain
name <reimanpublishing.com> is
registered with Key-Systems and that Respondent is the current registrant of
the name. Key-Systems has verified that
Respondent is bound by the Key-Systems 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
December 11, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 31, 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@reimanpublishing.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
January 8, 2003, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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
Complainant
contends that Respondent’s <reimanpublishing.com>
domain name is almost identical to its business name REIMAN PUBLICATIONS.
Respondent
has no rights or legitimate interests in the <reimanpublishing.com> domain name.
Respondent
registered and used the <reimanpublishing.com>
domain name in bad faith.
B.
Respondent
Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant, Reiman Media Group Inc., is
the successor company to Reiman Publications LLC and continues to do business
as Reiman Publications. Complainant is
in the business of publishing magazines, books and calendars. Complainant also operates a retail store in
Greendale, Wisconsin and sells merchandise through catalogs. Complainant contends that it is
“exceptionally well-known” for its magazines by way of the REIMAN PUBLICATIONS
name.
Complainant relies on its REIMAN
PUBLICATIONS name in marketing its magazines to the relevant consuming
public. As a unique form of magazines,
Complainant’s publications do not print paid advertising within the text of the
magazines. As a result, Complainant
depends on its REIMAN PUBLICATIONS name in a cross-promotional effort among its
various magazines. Furthermore,
Complainant’s REIMAN PUBLICATIONS business name “appears on the masterhead of
all of its magazines.” Thus,
Complainant’s consumers associate all of its magazines with the REIMAN PUBLICATIONS
name.
Further support of Complainant’s
interests in the REIMAN PUBLICATIONS name is evidenced by Complainant’s website
located at <reimanpub.com>. At
this website, Complainant predominately displays its REIMAN PUBLICATIONS name
to promote its various publications. In
addition, Complainant’s consumers subscribe to magazines with REIMAN
PUBLICATIONS subscription forms and write checks payable to REIMAN
PUBLICATIONS.
Respondent registered the <reimanpublishing.com> domain
name on March 10, 2003. Respondent is
Party Night Inc. a/k/a Peter Carrington, who has been a frequent Respondent in
past domain name disputes. As was the
case in a majority of Respondent’s prior domain name disputes, the current
domain name diverts Internet traffic to <hanky-panky-college.com>, a
pornographic website.
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.
Complainant has established a use in
commerce of the REIMAN PUBLICATIONS business identity, enough to raise a claim
against Respondent’s <reimanpublishing.com>
domain name. Complainant asserts that
the REIMAN PUBLICATIONS name is well-known among the consuming public for a
variety of uses associated with its assorted magazines. This assertion is uncontested by Respondent
and thus the Panel concludes that Complainant has sufficient rights in the
REIMAN PUBLICATIONS moniker to challenge Respondent’s registration and use of
the <reimanpublishing.com> domain name. See British Broad. 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”); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000)
(holding that ICANN Policy ¶ 4(a)(i) does not require Complainant to
demonstrate ‘exclusive rights,’ but only that Complainant has a bona fide basis
for making the Complaint in the first place).
Respondent’s <reimanpublishing.com> domain name contains a variation of
Complainant’s REIMAN PUBLICATIONS business name. The <reimanpublishing.com>
domain name substitutes “publishing” in place of “publication.” This change is inconsequential as the two
words are synonymous and the domain name contains the most unique feature of
Complainant’s business name, REIMAN.
Using the most distinctive portion of another entity’s name in
conjunction with a substituted word that carries the same or substantially the
same meaning as the omitted portion of the name does not defeat a claim of
confusing similarity. Hence,
Respondent’s <reimanpublishing.com>
domain name is confusingly similar to Complainant’s REIMAN PUBLICATIONS
moniker. See 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 Hewlett-Packard Co. v. Zuccarini,
FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name
<hewlitpackard.com> to be identical or confusingly similar to
Complainant’s HEWLETT-PACKARD mark).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
As previously mentioned, Respondent has
not come forward to contest Complainant’s allegations. Complainant has alleged a prima facie
case and thus has dispensed its burden effectively shifting the burden on
Respondent to articulate rights or legitimate interests in the disputed domain
name. Respondent’s failure to satisfy
its minimal burden allows the Panel to presume Respondent has no such rights or
legitimate interests in the <reimanpublishing.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).
Furthermore, Respondent’s failure to
challenge the Complaint permits the Panel to accept all allegations as true,
and draw all reasonable inferences in Complainant’s favor. 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, Peter Carrington d/b/a Party
Night, Inc., has been a defending party in multiple domain name disputes. Respondent’s actions in past disputes are
duplicated in the present matter; Respondent uses <reimanpublishing.com> to divert Internet traffic to its
pornographic website located at <hanky-panky-college.com>. Respondent presumably profits from the
diversionary use of the disputed domain name.
Due to Respondent’s infringing actions, neither Policy ¶¶ 4(c)(i) nor
(iii) establish rights or legitimate interests in Respondent’s favor. See 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); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9,
2000) (finding no legitimate use when Respondent was diverting consumers to its
own website by using Complainant’s trademarks).
Respondent is not commonly known by the <reimanpublishing.com> domain
name and has no apparent interest in the REIMAN PUBLISHING name used in the
second-level domain. It is clear, from
Respondent’s identity, that Respondent registered the <reimanpublishing.com> domain name only for the potential
value it had in relation to Complainant’s REIMAN PUBLICATIONS moniker. Respondent merely benefited from use of the
REIMAN PUBLICATIONS name by connecting the disputed domain name to a commercial
pornographic website. Therefore,
Respondent has no affiliation with the second-level domain that would establish
rights or legitimate interests in the <reimanpublishing.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Broadcom Corp. v.
Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no
rights or legitimate interests because Respondent is not commonly known by the
disputed domain name or using the domain name in connection with a legitimate
or fair use).
Accordingly, the Panel finds that
Respondent has no rights or legitimate interests in the domain name; thus,
Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses the <reimanpublishing.com> domain name to opportunistically
divert Internet consumers, who are presumably searching for Complainant, to the
pornographic <hanky-panky-college.com> website. Respondent has not come forward to establish any interests in the
<reimanpublishing.com> domain
name, so it is clear the domain name was registered and used to trade off of
the goodwill associated with the REIMAN PUBLICATIONS moniker. Since the <reimanpublishing.com> domain name is confusingly similar to
Complainant’s REIMAN PUBLICATIONS business name and Respondent has no
independent interest in the second-level domain, Complainant’s consumers are
likely to be confused by the resulting use of the domain name. Therefore, Respondent’s actions with respect
to the disputed domain name represent bad faith registration and use under
Policy ¶ 4(b)(iv). See CCA Indus., Inc. v. Dailey, D2000-0148
(WIPO Apr. 26, 2000) (finding that “this association with a pornographic web
site can itself constitute bad faith”); see also 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 Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding bad faith where Respondent linked the domain name
in question to websites displaying banner advertisements and pornographic
material).
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 <reimanpublishing.com>
be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: January 17, 2003
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