The American Jewish Committee v. Wyith Limited dba Commentary.com / Master Host
Claim Number: FA1103001379118
Complainant is The American Jewish Committee (“Complainant”), represented by Kyle T. Peterson, Minnesota, USA. Respondent is Wyith Limited d/b/a Commentary.com / Master Host (“Respondent”), represented by Raymond Cheng of Wyith Limited, Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <commentary.com>, registered with WEB COMMERCE COMMUNICATIONS LIMITED d/b/a WEBNIC.CC.
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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 21, 2011; the National Arbitration Forum received payment on March 21, 2011.
On March 21, 2011, WEB COMMERCE COMMUNICATIONS LIMITED d/b/a WEBNIC.CC confirmed by e-mail to the National Arbitration Forum that the <commentary.com> domain name is registered with WEB COMMERCE COMMUNICATIONS LIMITED d/b/a WEBNIC.CC and that Respondent is the current registrant of the name. WEB COMMERCE COMMUNICATIONS LIMITED d/b/a WEBNIC.CC has verified that Respondent is bound by the WEB COMMERCE COMMUNICATIONS LIMITED d/b/a WEBNIC.CC 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 March 22, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 11, 2011 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@commentary.com. Also on March 22, 2011, 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 April 11, 2011.
Complainant filed an Additional Submission on April 15, 2011. This submission was determined to be complete and compliant with the Forum’s Supplemental Rule 7, and was considered by the Panel.
Respondent filed an Additional Submission on April 18, 2011. This submission was determined to be complete and compliant with the Forum’s Supplemental Rule 7, and was considered by the Panel.
On April 18, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Charles A. Kuechenmeister as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The American Jewish Committee (“Complainant”) owns and operates Commentary Magazine, a monthly magazine of opinion, committed since 1945 to maintaining, sustaining, and cultivating the future of the Jewish people.
2. Complainant owns the <commentarymagazine.com> domain name.
Complainant registered the COMMENTARY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,627,011 issued December 11, 1990).
3. Wyith Limited d/b/a Commentary.com, Master Host (“Respondent”) registered the domain name <commentary.com> (the “Domain Name”) on June 24, 1997.
4. The Domain Name resolves to a holding page at Respondent’s <commentary.com> web site, which states that “This domain name is now active,” and “This is a new web site. Please come back soon.”
5. The Domain Name is confusingly similar to Complainant’s COMMENTARY mark.
6. Respondent has no rights or legitimate interest in the Domain Name in that it is not commonly known by the name “commentary,” has no trademark or service mark rights therein, and is not making a legitimate noncommercial or fair use of it.
7. Respondent’s web site at <commentary.com> advertises <DomainAvenue.com> and identifies that web site as the new domain and hosting subdivision of Wyith Limited. Respondent receives monetary gain for diverting internet users to that web site, and this is evidence that Respondent registered and is using the Domain Name in bad faith.
Respondent
1. The Domain Name is comprised of a common and generic or descriptive term and thus cannot be deemed identical to Complainant’s mark.
2. Respondent was incorporated in 1999 in Hong Kong. Respondent maintains three main areas of business: (1) information technology and network operations; (2) information management services, processing of real-time information; and (3) OEM and product information research. As part of its business, Respondent is an accredited domain name registrar for country-code top-level domain names (“ccTLDs”) in a number of countries/regions, including the U.K., Italy, France, Denmark, Austria, Laos, and the Philippines. It uses <DomainAvenue.com> as its flagship website in connection with these services.
3. As part of its business operations, Respondent registers and uses generic domain names that reflect its business activities and what it does in general. Its development of the web site resolving from the Domain Name is pending and the Domain Name currently resolves to a default temporary holding page. It plans to use the Domain Name as part of its information management services.
4. Respondent’s plan is for the web site resolving from the Domain Name to provide subscription-based news, current affairs, and information, as well as a searchable generic database of commentaries and resources for democratic socialists around the world.
5. In response to Complainant’s claim that “Respondent has not used the Domain Name since it became registered in 1997,” Respondent states that it previously used the Domain Name to publish executive summaries of Chinese commentaries in English, and provides evidence from the Internet archive WaybackMachine.org, which shows that it used the Domain Name legitimately since 1997 as an online commentary service for business news and commentaries related to China. A screen shot from its web site in 1999 shows that Respondent was providing written commentary on Chinese affairs at that time. The screenshot shows the following message describing the web site: “Our publication is unique in that we cover a dozen Chinese language newspapers published in the PRC on a daily basis, providing distilled news briefings accompanied by concise analysis prepared by in-house team of economic-political risk analysts.”
6. Respondent’s web site contained subscription commentary on Chinese affairs beginning in 1997, providing distilled news briefings accompanied by concise analysis prepared by in-house teams of economic-political risk analysts. Early in 2001 it was temporarily shut down for under-subscription. A holding page was substituted at that time with a “Coming Soon” banner.
7. After being contacted in 2001 by representatives of Complainant, Respondent added to its holding page a disclaimer indicating that the website was not related to Complainant, and provided a direct hyperlink to Complainant’s web site at <commentarymagazine.com>.
8. The holding page initiated in 2001 was maintained until October 2003, at which time Respondent discontinued the holding page and pointed the Domain Name to its web site at <SyndicatedNews.com>. This arrangement lasted until January 2007, when Respondent caused the Domain Name to point to its main corporate web site at <Wyith.com>. In November 2007, Respondent put up another temporary holding page at the <commentary.com> web site with the “This domain is now active!” banner. The redeveloped web site was scheduled to be re-launched in late 2007 to mid-2008, but was delayed by the financial crisis in 2008. The Domain Name currently resolves to the <commentary.com> web site, which shows this same holding page.
9. Respondent continues to work on the content for its Commentary. The redeveloped web site is scheduled for re-launch in 2012.
10. From July 2008 through October 2009, Complainant extended offers to buy the Domain Name from Respondent. The first offer, in July 2008, was for $15,000. The last offer, in October 2009, was for $27,500. Respondent consistently and unequivocally declined all of these offers because it desired, planned and intended to use the Domain Name in connection with its own business, as described above.
11. The term “commentary” in the Domain Name is common and generic or descriptive, and therefore, Complainant does not have an exclusive monopoly on the term on the Internet.
12. Respondent has never attempted to use the Domain Name to divert Internet users seeking Complainant’s Commentary Magazine to Respondent’s web site, as is clearly demonstrated by the disclaimer place on the “Coming Soon” holding page.
Additional Submission--Complainant
1. Respondent failed to provide evidence sufficient to refute the rebuttable presumption that Complainant’s COMMENTARY mark is not generic.
2. Complainant has not licensed or authorized Respondent to use its COMMENTARY mark.
3. Respondent has not used the Domain Name since at least 2007. An inactive domain Name does not constitute a bona fide offering of goods and services sufficient to confer rights or legitimate interest within the meaning of Policy ¶ 4(c)(i).
4. Respondent has stated over the course of a decade that it has plans for the Domain Name but has not provided details or offered a concrete timeline for executing those plans, and it therefore cannot claim a bona fide offering of goods or services.
5. Prior to 2007, the Domain Name was used to host hyperlinks and banner advertisements to sites that compete with Complainant, and to Respondent’s own web sites. This is evidence of bad faith.
Additional Submission--Respondent
1. Complainant’s COMMENTARY mark is a generic term. A Google search for the work results in over 113,000,000 matches.
2. From 2007 until early 2011, Respondent’s principal, Raymond Cheng, researched new methods of analyzing historic texts in order to identify emerging trends in policy and economics. This research was conducted as a doctoral program at the Tarlac State University in the Philippines and involved a 401-page dissertation which was approved by the doctoral committee early this year. Dr. Cheng has received a Doctor of Public Administration degree for his work. Respondent believes that this new method will enable its new <commentary.com> web site to stand out among various operators of news and commentary databases.
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."
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 makes the findings and determinations set forth below with respect to the Domain Name at issue between the parties.
Complainant owns and operates Commentary Magazine, a monthly magazine of opinion, committed since 1945 to maintaining, sustaining, and cultivating the future of the Jewish people. Complainant owns the <commentarymagazine.com> domain name. In addition, Complainant registered the COMMENTARY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,627,011 issued December 11, 1990). Complainant’s trademark registration with the USPTO sufficiently proves its rights in the COMMENTARY mark pursuant to Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). The Panel also finds it is irrelevant whether Complainant holds a trademark registration with the trademark authority in the country in which Respondent resides. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
While Respondent contends that the <commentary.com> domain name is comprised of a common and generic or descriptive term and as such cannot be found to be identical to Complainant’s mark, such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
Respondent’s <commentary.com> domain name (the “Domain Name”) is identical to Complainant’s COMMENTARY mark under Policy 4(a)(i). It contains Complainant’s entire COMMENTARY mark, merely adding the generic top-level domain (“gTLD”) “.com.” The addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”).
The Panel finds that the Domain Name is identical to the COMMENTARY mark for the purposes of Policy ¶4(a)(i), and that Complainant has substantial and demonstrated rights in that mark.
If a complainant makes a prima facie case that the respondent lacks rights and legitimate interest in the domain name under Policy ¶ 4(a)(ii), the burden shifts to the respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interest in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts, and the WHOIS information confirms, that the registrant of the Domain Name is “Wyith Limited dba Commentary.com, Master Host,” an entity whose name is other than the Domain Name. Complainant further asserts that Respondent has no trademark or service mark rights therein, and is not making a legitimate noncommercial or fair use of it. Further, Complainant has not authorized or licensed Respondent to use its COMMENTARY mark in the Domain Name or in any other way. On these facts it appears that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. It is thus incumbent upon Respondent to demonstrate that it does.
To this end, Respondent shows that from 1997 until 2001 it used its web site at the Domain Name in connection with its business of providing subscription commentary on affairs in the People’s Republic of China, “providing distilled news briefings accompanied by concise analysis prepared by in-house teams of economic-political risk analysts.” That web site was temporarily discontinued in 2001 for lack of sufficient subscription but Respondent has nevertheless maintained its intent and desire to redevelop the web site at <commentary.com> as a platform of searchable database of commentaries. From 2003 until 2006, the Domain Name pointed to one of Respondent’s other web sites located at <SyndicatedNews.com> while Respondent attempted to gather data for the new “Commentary and Editorial Picks” section at that web site, which was planned to be spun off to form content for the new <commentary.com> web site. That site was previously scheduled to be re-launched in 2007 to mid-2008, only to be delayed by the financial crises that occurred at about that time.
Respondent’s plan to redevelop its <commentary.com> web site is corroborated by its refusal to accept Complainant’s lucrative offers to purchase the Domain Name in 2008 and 2009. Had Respondent not been seriously planning and preparing to use the Domain Name for the purposes stated, it is difficult to imagine that it would have passed up an opportunity to be paid some $27,500 for it.
Notwithstanding the foregoing, Complainant argues persuasively that the mere fact of non-use and inactivity of the Domain Name over a period of almost ten years should preclude Respondent from establishing rights or legitimate interest in the same for the purposes of Policy ¶ 4(c)(i). Complainant also asserts that Respondent failed to provide details regarding its plans or to present a concrete timeline for “completing the alleged plans.”
Responding to the last of these arguments, Respondent states in its Additional Submission that from 2007 until early 2011 Respondent’s principal, Raymond Cheng, was engaged in researching new methods of analyzing historic texts in order to identify emerging trends in policy and economics. This research was conducted as a doctoral program at the Tarlac State University in the Philippines and involved a 401-page dissertation which was approved by the doctoral committee early this year. Dr. Cheng received a Doctor of Public Administration degree for this work. Respondent believes that this new method will enable its new <commentary.com> website to stand out among various operators of news and commentary databases.
The Panel notes with concern the extended period of inactivity, or at least lack of substance or actual content, on the web site resolving from the Domain Name and is hesitant to find that Respondent has demonstrated rights and legitimate interest in it in the face of such extended inactivity. Actual commentary appears to have been presented only from 1997 until early 2001. Thereafter, a temporary holding page appeared at that web site until October 2003, when Respondent discontinued the holding page and pointed the Domain Name directly to its web site at <Syndicated News.com>. Respondent restored a temporary holding page at <commentary.com> in November 2007, and has maintained it there through the present time. This page advises the reader that “the Owner of the Domain Name has not uploaded any Web pages to our server yet. Please visit later.” The only mention of other web sites on this page is a reference to Respondent’s web site at <Domain Avenue.com>. There is no disclaimer. Thus, there is a genuine issue as to whether the Domain Name has been inactive to the point where Respondent can no longer claim that it uses or is preparing to use the name in connection with a bona fide offering of goods and services.
Nevertheless, two factors unique to this case persuade the Panel that Respondent has met its burden in this regard. One is its decision not to accept $27,500, a significant amount, offered by Complainant for the Domain Name. The email messages attached to the Response reflect that in rejecting Complainant’s offers to buy the Domain Name, Dr. Cheng consistently told Complainant that he planned to use the name in connection with his career as a policy analyst and for that reason was not interested in selling the name. The second is Dr. Cheng’s pursuing and obtaining a doctoral degree in a field that relates directly and materially to the demonstrated purposes of Respondent’s proposed web site.
Based on this evidence, the Panel finds that Respondent has made demonstrable preparations to use the Domain Name in connection with a bona fide offering of services within the meaning of Policy ¶ 4(c)(i). See SFX Entm’t, Inc. v. Cushway, D2000-0356 (WIPO July 10, 2000) (finding that the respondent had rights and legitimate interests in the domain name where he began demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services); see also David J. Joseph Co. v. Barry, D2000-1418 (WIPO Jan. 2, 2001) (finding the respondent provided substantial evidence of his demonstrable preparations to use the domain name with a business involving the sale of scrap materials prior to receiving notice of the present dispute).
Accordingly, the Panel finds that Respondent has demonstrated that it has rights or legitimate interests in the Domain Name pursuant to Policy ¶ 4(c)(i).
In light of the Panel’s finding and determination with respect to the Rights or Legitimate Interests element of the Complaint, the Panel declines to review or comment upon the allegations regarding bad faith. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary).
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <commentary.com> domain name remain with Respondent.
Charles A. Kuechenmeister, Panelist
Dated: April 29, 2011
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