World Publications, Inc. v. extendsj / Saksomo Herwijaya
Claim Number: FA1203001436955
Complainant is World Publications, Inc. (“Complainant”), represented by Amber N. Davis of Beusse Wolter Sanks Mora & Maire, P.A., Florida, USA. Respondent is extendsj / Saksomo Herwijaya (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sportfishingmagazine.net>, registered with UK2 GROUP LTD.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 28, 2012; the National Arbitration Forum received payment on March 28, 2012.
On March 29, 2012, UK2 GROUP LTD. confirmed by e-mail to the National Arbitration Forum that the <sportfishingmagazine.net> domain name is registered with UK2 GROUP LTD. and that Respondent is the current registrant of the name. UK2 GROUP LTD. has verified that Respondent is bound by the UK2 GROUP LTD. 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 30, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 2012 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@sportfishingmagazine.net. Also on March 30, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 25, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant makes the following contentions:
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is and has been over many years a successful publisher of specific interest magazines including the SPORT FISHING magazine which can be found at www.sportfishingmag.com.
2. Complainant owns trademark registrations for its SPORT FISHING mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,854,625 registered September 20, 1994).
3. Respondent registered the <sportfishingmagazine.net> domain name on January 20, 2012. It resolves to a website devoted to sport fishing and which offers identical services to those offered by Complainant in its magazine, promotes services that compete with Complainant and promotes itself to Complainant’s customers as a competitor of Complainant.
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.
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.”).
The Panel notes that the first prong of this analysis is to determine whether or not Complainant owns rights in the SPORT FISHING mark. Previous panels have determined that a USPTO trademark registration is evidence that a complainant holds rights in a mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a) (i).”); see also 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). Complainant provides the panel with copies of its USPTO trademark registrations for its SPORT FISHING mark (e.g., Reg. No. 1,854,625 registered September 20, 1994). See Exhibit F. Past panels have further held that a complainant is not required to register a trademark within the country where respondent resides or operates. 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. The Panel therefore finds that Complainant has established rights in its SPORT FISHING mark pursuant to Policy ¶ 4(a) (i).
The second prong of the analysis under Policy ¶ 4(a) (i) is whether the <sportfishingmagazine.net> domain name is identical or confusingly similar to Complainant’s SPORT FISHING mark. Prior panels have found that adding a descriptive term and a generic top-level domain (“gTLD”) to a complainant’s mark does not sufficiently distinguish a disputed domain name from a mark. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Complainant contends that Respondent’s <sportfishingmagazine.net> domain name consists of Complainant’s mark, the descriptive term “magazine,” and the addition of the gTLD “.net.”. The Panel concludes that Respondent’s <sportfishingmagazine.net> domain name is confusingly similar to Complainant’s SPORT FISHING mark under Policy ¶ 4(a) (i). This is especially so as the objective internet user would naturally assume that the disputed domain name related to a magazine dealing with sport fishing, the activity clearly covered by the trademark and probably the sport fishing magazine published by Complainant.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a) (ii), and then the burden shifts to 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 interests 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.”).
In order to demonstrate rights and legitimate interest, the Panel notes that Policy ¶ 4(c) provides three elements that a respondent may satisfy, although of course it may rely on other considerations: (i) a respondent is making a bona fide offering of goods and services; (ii) a respondent is commonly known by the disputed domain name; or (iii) a respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s SPORT FISHING trademark
and to use it in its domain name after adding the word “magazine”.
(b)Respondent has then decided to use the domain name by linking it to a website that is a clear copy of Complainant’s website and offering the same services as those offered by Complainant in its magazine, offering services that compete with Complainant and promoting itself to Complainant’s customers as a competitor of Complainant.
(c) Respondent has engaged in these activities without the consent or approval of Complainant.
(d) Complainant contends that Respondent is not commonly known by the <sportfishingmagazine.net> domain name. Prior panels have concluded that a respondent is not commonly known by a disputed domain name if the WHOIS information is not similar to the disputed domain name and the respondent fails to present any evidence in support of a commonly known by finding. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c) (ii) does not apply); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names and the complainant had not authorized the respondent to register a domain name containing its registered mark). Complainant submitted evidence establishing that the WHOIS information identifies “Saksomo Herwijaya” as the registrant of the disputed domain name. See Exhibit B. Because Respondent failed to submit any evidence that it is commonly known by the disputed domain name and because the WHOIS information is not similar to the disputed domain name, the Panel finds that Respondent is not commonly known by the <sportfishingmagazine.net> domain name under Policy ¶ 4(c)(ii).
(e) Complainant also alleges that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Previous panels have held that a respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use when the respondent uses the disputed domain name to resolve to a website that competes with Complainant’s services. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); 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). Complainant contends that Respondent’s <sportfishingmagazine.net> domain name resolves to a website that offers instructional tools and offers items for sale via its fishing equipment, fishing spot, fishing technique, “how-to” information, and fishing news. Complainant argues that these are the same or similar services to the services it provides and, thus, Respondent’s disputed domain name offers services in direct competition with Complainant’s. It is clear that the evidence tendered by Complainant supports these submissions and that Complainant’s submissions are correct. Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services under Policy ¶ 4(c) (i) or a legitimate or fair use of the dispute domain name under Policy ¶ 4(c) (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
Policy ¶ 4(b) establishes four different avenues for a complainant to demonstrate bad faith registration and use, although it may also rely on other matters: (i) the respondent registered the domain name for the purpose of selling the disputed domain name for more than the respondent’s out-of-pocket costs; (ii) the respondent registered and uses the disputed domain name as part of a pattern to prevent the complainant from reflecting its mark in a corresponding domain name; (iii) the respondent registered and uses the disputed domain name for the purpose of disrupting the complainant’s business; or (iv) the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website.
First, Complainant relies on Policy ¶ 4(b) (iii) and contends that Respondent registered the disputed domain name for the purpose of disrupting Complainant’s business. Past panels have found that a respondent’s registration and use of a disputed domain name to resolve to a competing website disrupts a complainant’s business. 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 S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business). Complainant alleges that Respondent is using the disputed domain name to divert business from Complainant to Respondent and it is apparent that this is so. Complainant submitted pursuasive evidence that the Panel finds establishes that Respondent attempted to post a comment on Complainant’s website directing Internet users on Complainant’s site to Respondent’s site for additional fishing information. The Panel finds that this use of the disputed domain name disrupts Complainant’s business and the Panel thus finds that Respondent registered and used the <sportfishingmagazine.net> domain name in bad faith under Policy ¶ 4(b)(iii).
Secondly, Complainant relies on Policy ¶ 4(b) (iv) and argues that Respondent is attempting to gain commercially by creating confusion as to Complainant’s affiliation with the disputed domain name and the resolving website. Previous panels have maintained that a respondent’s registration and use of a disputed domain name to resolve to a website that competes directly with Complainant’s business is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site). Complainant alleges that the website to which the confusingly similar disputed domain name resolves offers similar services to those offered under Complainant’s mark. Complainant argues that this creates a likelihood of confusion among Internet users and argues that Respondent commercially benefits from diverting Internet users from Complainant’s site. The Panel agrees with those submissions. The Panel finds that Respondent commercially benefits from the diversion just described and determines that Respondent’s registration and use of the <sportfishingmagazine.net> domain name was in bad faith under Policy ¶ 4(b) (iv).
Thirdly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the SPORT FISHING mark. Complainant submitted evidence to establish that Respondent attempted to post a comment on Complainant’s site directing Internet users from Complainant’s site to Respondent’s site. See Exhibit J. Complainant argues that this indicates that Respondent had actual knowledge of Complainant’s mark and rights and the Panel agrees. The Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a) (iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name")."
Fourthly, in addition and having regard to the totality of the evidence and the submissions of Complainant, the Panel finds that, in view of Respondent’s registration of the domain name using the SPORT FISHING mark and in view of the conduct that Respondent engaged in by using the domain name, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sportfishingmagazine.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 27, 2012
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