national arbitration forum

 

DECISION

 

Cox, Matthews and Associates, Inc. v. Kenichiro, Kobayashi

Claim Number: FA 1357159

 

PARTIES

Complainant is Cox, Matthews and Associates, Inc. (“Complainant”), represented by Kevin T. Oliveira of Odin, Feldman & Pittleman, P.C., Virginia, USA.  Respondent is kenichiro, kobayashi (“Respondent”), Japan.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bibookreview.com>, registered with Network Solutions, LLC.

 

PANEL

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

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 8, 2010; the National Arbitration Forum received payment on November 8, 2010.

 

On November 9, 2010, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <bibookreview.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the names.  Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On November 15, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 6, 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@bibookreview.com.  Also on November 15, 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.

 

Respondent forwarded two items to the National Arbitration Forum, which did not constitute a response under the Policy.  Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 14, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.  The Panel has determined not to consider the nonconforming items sent by Respondent.

 

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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 a response from Respondent.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <bibookreview.com> domain name is confusingly similar to Complainant’s Black Issues Book Review mark.

 

2.      Respondent does not have any rights or legitimate interests in the <bibookreview.com> domain name.

 

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

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Cox, Matthews and Associates, Inc, is the publisher of the newsstand magazine Black Issues Book Review.  Complainant has used the mark in connection with its magazine title since 1999.  Complainant’s publication deals with literature by, about, or of interest to, African Americans.

 

Respondent, kenichiro, kobayashi, purchased the disputed domain name at auction for $1,211 on September 8, 2010.  The domain name was previously used by Respondent to display content related to Complainant’s publication.  Currently the disputed domain name resolves to a website providing information on the nutritional benefits of a soybean diet.

 

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 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.

 

Identical and/or Confusingly Similar

 

In considering whether the complainant has sufficiently established rights in a mark, the Panel notes that trademark registration is not required under Policy ¶ 4(a)(i).  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 SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist).

 

The Panel finds that Complainant has established common law rights in the Black Issues Book Review mark pursuant to Policy ¶ 4(a)(i) through the continuous and extensive use of the Black Issues Book Review as a title to Complainant’s magazine since 1997.  The mark has also been used to identify the magazine’s web presence since that same time.  Such continued use of a mark grants sufficient secondary meaning to establish the necessary rights under Policy ¶ 4(a)(i).  See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)).    Therefore, the Panel finds that Complainant has sufficient rights in the Black Issues Book Review mark under ¶ 4(a)(i).

 

The Panel also finds that the disputed domain name is confusingly similar to Complainant’s mark.  The only differences between the disputed domain name and the mark is that the first two words are abbreviated, the spaces are omitted, and a generic top-level domain (“gTLD”) is added.  Abbreviations of portions of a preexisting mark in a domain name render the domain name confusingly similar to the preexisting mark.  See Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name was confusingly similar to the complainant’s MINNESOTA STATE LOTTERY mark under Policy ¶ 4(a)(i)); see also Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated).  The omission of the spaces between the words and the addition of the addition of the gTLD “.com” do not distinguish Respondent’s domain name from Complainant’s preexisting mark.  See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).  Therefore, Respondent’s disputed domain name <bibookreview.com> is confusingly similar to Complainant’s Black Issues Book Review mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds that Complainant has met the requirements of Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have any rights or legitimate interests in the <bibookreview.com> domain name.  Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  The Panel finds Complainant has made a sufficient prima facie case.  Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”).

 

Complainant alleges that Respondent is not commonly known by the disputed domain name and that Complainant did not authorize Respondent to use the mark.  The WHOIS information of disputed domain name indicates that Respondent is known by “kenichiro, kobayashi” and not any form of the <bibookreview.com> domain name.  Respondent has not supplied the Panel with any evidence indicating otherwise.  Therefore, the Panel finds that Respondent is not commonly known by the domain name pursuant to ¶ 4(c)(ii).  Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

Complainant alleges that Respondent has no bona fide offering of goods or services and no legitimate noncommercial or fair use associated with either its previous or current use of the <bibookreview.com> domain name.  After examining the evidence provided by the Complainant regarding Respondent’s use of the disputed domain name, the Panel agrees.  Respondent’s prior use offered information about the Complainant’s business.  As Complainant also offered a web presence offering similar information, they are competitors for the same audience.  The Panel finds that Respondent is using a confusingly similar domain name to divert Internet users to a competing website.  Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Clear Channel Commc’ns, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that the respondent, as a competitor of the complainant, had no rights or legitimate interests in a domain name that utilized the complainant’s mark for its competing website).  Therefore, the Panel finds Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

 

In regards to the current use, Respondent uses the confusingly similar domain name to divert people looking Complainant’s web presence to unrelated content regarding soy diets.  Respondent’s current use of the website diverts Internet users away from Complainant’s business to unrelated content.  This use also indicates that Respondent is not making a bona fide offering of goods or services, nor a noncommercial or fair use.  U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).  Therefore, the Panel finds Respondent’s current use of the <bibookreview.com> domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

 

The Panel also finds evidence of a lack of rights and legitimate interests in Respondent’s offer to sell the disputed domain name.  Respondent’s offer to sell the disputed domain name was over double the price Respondent paid to purchase the domain name at auction.  Respondent’s offer to sell a domain name for more than its out-of-pocket costs provides evidence that Respondent has no rights or legitimate interests in the domain name.  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii).)

 

The Panel finds that Complainant has met the requirements of Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent offered to sell the disputed domain name for more than double what it cost Respondent.  The Panel finds that this offer to sell in excess of the out-of-pocket cost of registration is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i).  See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs). 

 

Respondent’s previous use of the <bibookreview.com> domain name was a competitive use.  The use of a confusingly similar domain name in a competitive manner to redirect Internet users is a disruptive use and evidence of bad faith.  See 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).”); see also Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion).  Therefore the Panel finds the Respondent’s previous use indicates a bad faith registration and use under Policy ¶ 4(b)(iii).

 

Respondent purchased the disputed domain name due to the Internet traffic already associated with it.  Respondent has continued its use in order to create confusion regarding the affiliation or sponsorship of the website.  Respondent’s later use is completely unrelated.  The Panel presumes that Respondent benefits in some way from the website either through sponsored material or click-through advertising.  Accordingly, the Panel finds that Respondent intentionally attempted to attract Internet users to its domain name, for commercial gain, by creating a likelihood of confusion as to the source or sponsorship of the domain name.  See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website).  The Panel finds that Respondent’s use of a confusingly similar domain name to attract Internet users to its site is evidence of a bad faith registration and use pursuant to Policy ¶4(b)(iv).

 

The Panel finds that Complainant has met the requirements of Policy ¶ 4(a)(iii).

 

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 <bibookreview.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Sandra J. Franklin, Panelist

Dated:  December 23, 2010

 


 

 

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