Liberty Publishing, Inc. v Magick Online

DECISION

Liberty Publishing, Inc. v. Magick Online

Claim Number: FA0307000168857

PARTIES

Complainant is Liberty Publishing, Inc., Beverly, MA (“Complainant”) represented by Gary J. Nelson, of Christie, Parker & Hale, LLP. Respondent is Magick Online, Center Square, PA (“Respondent”) represented by Ernest Sasso, of Law Offices of Ernest Sasso.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <scribbles.com> registered with Bulkregister, Inc.

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.

Judge Richard B. Wickersham, (Ret.) as Panelist

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 14, 2003; the Forum received a hard copy of the Complaint on July 16, 2003.

On July 15, 2003, Bulkregister, Inc. confirmed by e-mail to the Forum that the domain name <scribbles.com> is registered with Bulkregister, Inc. and that the Respondent is the current registrant of the name. Bulkregister, Inc. has verified that Respondent is bound by the Bulkregister, 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 16, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 5, 2003 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@scribbles.com by e-mail.

A timely Response was received and determined to be complete on August 5, 2003.

On August 12, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Richard B. Wickersham, (Ret.), as Panelist.

B. Respondent

As set forth in the following narrative from Kelley Kenworthy-Ward, the founder and president of Magick Online, the origins and persistent use of the term “scribbles,” while formally registered as a domain name on March 14, 1998, began in 1988, well in advance of Complainant’s first putative use of its mark in September 1993:

“My name is Kelley Kenworthy-Ward and I live and work in Blue Bell, Pennsylvania. I am a published and award winning writer and poet. My poem “The Mating of the Earth and Moon” won poem of the year in 1989 in “Dimensions” magazine. My short story “The Nightgown” won first prize in the Saint David’s Writer’s Guild’s 1989 competition.

In 1988 I took writing courses at Montgomery County Community College including Creative Writing. As part of this course, the students were divided into smaller groups of four. Our group assignment was to create and publish a small literary magazine. Through a heated debate among my group, my suggestion of the name “Scribbles” for our magazine prevailed and thus, in November of 1988 the first edition of “Scribbles” — a small literary magazine - was published. That edition was printed using a mimeograph machine — most people can remember the blue text on white paper from grade school and high school and sniffing the paper tests and handouts from teachers. My group continued to remain close even after that class and semester ended and we continued to publish our little literary magazine “Scribbles” with editions in April 1989, July 1989 and October 1989.

In July 1994 I signed up with my first official Internet Service Provider (ISP) called FishNet (pond.com) and I published my first homepage in September 1994. Part of my homepage was a section I called “Scribbles” which was where I shared my short stories and poetry.

In 1997 I registered a fictitious name “Magick Online” and began conducting my web business under that entity. One of my ideas became a website that attracted 30 million visitors a month. Changing, updating and managing this website consumed my time and my other website ideas and domains had to take a back seat. In June of 2000 I began using BulkRegister, Inc. to register my domains and transferred all of the domains I had with Network Solutions to BulkRegister, Inc.

My idea for scribbles.com is to offer a place where writers and poets can share their work with others, just as the original “Scribbles” little literary magazine had allowed my fellow classmates and I to share our work with each other and other students and friends.

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;

(1) the Respondent has no rights or legitimate interests in respect of the domain name; and

(2) the domain name has been registered and is being used in bad faith.

FINDINGS

Identical and/or Confusingly Similar Policy ¶ 4(a)(i).

Complainant contends that it has established rights in the SCRIBBLES mark through registration with the U.S. Patent and Trademark Office on June 6, 1995 (Reg. No. 1,898,327) and use in commerce since 1993. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that Complainant has common law rights in the mark FISHTECH, which it has used since 1982). We agree.

Also, Complainant asserts that the <scribbles.com> domain name is identical to Complainant’s mark because the disputed domain name fully incorporates the SCRIBBLES mark and the generic top-level domain “.com” is insufficient to distinguish the domain name from Complainant’s mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000)(finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); 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). We agree with this position as well.

Furthermore, Complainant argues that the <scribbles.com> domain name is confusingly similar to Complainant’s mark because the pronunciation of the disputed domain name is the same as Complainant’s mark. See Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of the Policy); see also VeriSign, Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the pronunciation and spelling between the domain name <venesign.com> and Complainant’s mark, VERISIGN, are so close that confusion can arise in the mind of the consumer). We so find.

Rights and Legitimate Interests Policy ¶ 4(a)(ii).

Complainant asserts that Respondent has passively held the <scribbles.com> domain name for over 5 years, and therefore Respondent lacks rights or legitimate interests in the disputed domain name. See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and Respondent is not commonly known by the domain name); see also Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where Respondent made no use of the infringing domain names). We concur.

Furthermore, the Panel finds that the WHOIS information for the <scribbles.com> domain name fails to establish Respondent as one commonly known by the <scribbles.com> domain name pursuant to Policy ¶ 4(c)(ii), and therefore Respondent lacks rights or legitimate interests in the disputed domain name. See Tercent, Inc. v. 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Registration and Use in Bad Faith Policy ¶ 4(a)(iii).

Complainant asserts that the SCRIBBLES mark is so closely associated with Complainant that Respondent’s registration of the disputed domain name, which is identical to Complainant’s mark, is evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Am Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the ICQ mark is so obviously connected with Complainant and its products that the use of the domain names by Respondent, who has no connection with Complainant, suggests opportunistic bad faith); see also London Metal Exch. Ltd. v. Hussain, D2000-1388 (WIPO Dec. 15, 2000) (finding that the “letters ‘lme’ are so obviously connected with a well-known entity that their very use by someone with no connection to Complainant suggests opportunistic bad faith”). We agree.

Also, Complainant argues that Respondent has registered and used the disputed domain name to attempt to exploit Complainant. See Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding registration in bad faith based when there was no reasonable possibility, and no evidence from which to infer that the domain name was selected at random since it entirely incorporated Complainant’s name). We so find.

Furthermore, Complainant contends that Respondent has passively held the disputed domain name for over 5 years, and therefore Respondent has used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that Respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith). We agree.

In addition, the Panel finds that Respondent had actual or constructive knowledge of Complainant’s rights in the SCRIBBLE mark due to its registration with the USPTO, and therefore Respondent’s knowledge of Complainant’s rights constitutes bad faith registration of the domain name. See Digi Int’l, Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”).

DECISION

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

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

JUDGE RICHARD B. WICKERSHAM, (Ret.), Panelist

Dated: August 26, 2003

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