National Wildlife Federation v. Lorna
Kang
Claim
Number: FA0307000170519
Complainant is National Wildlife Federation, Reston,
VA, (“Complainant”), represented by Matthew Clanton. Respondent is Lorna Kang, Telok Intan, Perak, MALAYSIA (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <yourbigbackyard.com> and <rangerrickmagazine.com>,
registered with iHoldings.com, Inc d/b/a DotRegistrar.com.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge, she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on July 18, 2003; the Forum received a hard copy of the
Complaint on July 23, 2003.
On
July 22, 2003, iHoldings d/b/a DotRegistrar.com confirmed by e-mail to the
Forum that the domain names <yourbigbackyard.com> and <rangerrickmagazine.com>
are registered with iHoldings d/b/a DotRegistrar.com and that Respondent is the
current registrant of the names. iHoldings d/b/a DotRegistrar.com verified that
Respondent is bound by the iHoldings d/b/a DotRegistrar.com 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 24, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 13, 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@yourbigbackyard.com and postmaster@rangerrickmagazine.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
August 26, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum 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.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names registered by Respondent
are identical to or confusingly similar to marks owned by Complainant. The
domain name, <yourbigbackyard.com>, is identical to Complainant’s
YOUR BIG BACKYARD mark; the domain name <rangerrickmagazine.com>,
is confusingly similar to Complainant’s RANGER RICK mark.
2. Respondent has no rights to or legitimate
interests in the <yourbigbackyard.com> and <rangerrickmagazine.com>
domain names.
3. Respondent registered and used <yourbigbackyard.com>
and <rangerrickmagazine.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
established in this proceeding that it holds several registrations with the
U.S. Patent and Trademark Office for the RANGER RICK mark and variations
thereof, including Reg. No. 1290044 registered on August 14, 1984. Per the mark’s registration document,
Complainant has used the RANGER RICK mark in commerce since 1983. Complainant uses the RANGER RICK mark in
conjunction with Complainant’s “Ranger Rick” magazine, which is distributed to
an audience of over 7.1 million per year and is circulated throughout the U.S.
and worldwide, including Malaysia, Respondent’s country of residence.
In addition,
Complainant holds several registrations with the U.S. Patent and Trademark
Office, for the YOUR BIG BACKYARD mark, including Reg. No. 1235270, registered
April 19, 1983. Per the mark’s
registration document, Complainant uses the mark in connection with “education
magazines for young people for promotion of wildlife conservation.” The YOUR BIG BACKYARD mark has been used
since January 1979 in conjunction with Complainant’s magazine entitled “Your
Big Backyard.” The magazine has an
audience of over 7 million and is distributed throughout the U.S. and
worldwide.
Respondent
registered the <yourbigbackyard.com> and <rangerrickmagazine.com>
domain names on December 17, 2001.
In the past,
Respondent has used the <yourbigbackyard.com> domain name in
several affiliate programs, including one in which the affiliate program
advertised that it would give a 30% commission for magazine sales made by
diverting Internet users to the <magazines.com> website. The <magazines.com> website sells
numerous magazine subscriptions, including Complainant’s magazines and the
magazines of Complainant’s competitors.
Respondent is currently using the <yourbigbackyard.com>
domain name to redirect Internet users to an on-line casino website that
informs Internet users that they have won a “virtual reality casino +$$$ bonus!
Click on OK …”. If Internet users click
“ok” they are directed to the <euroseek.com> website, which offers links
to additional on-line casino websites.
One of the links provided on the <euroseek.com> website directs
Internet users to a website that contains a link to the <magazines.com>
website. If Internet users attempt to
exit the <euroseek.com> website, pop-up windows appear for additional
on-line casino websites and adult oriented websites.
Respondent uses
the <rangerrickmagazine.com> domain name in the same manner that
the <yourbigbackyard.com> domain name is currently being
used. However, when the first website
appears and Internet users attempt to exit instead of clicking “ok,” Internet
users are directed to an adult oriented website.
Respondent has a
history of registering domain names that infringe on others’ rights in
marks. See RE/MAX Int’l, Inc. v.
Kang, FA 117325, (Nat. Arb. Forum Sept. 24, 2002) (ordering that the <remaxcalifornia.com>
domain name be transferred from Respondent to Complainant); see also
Disney Enters., Inc. v. Kang, FA 125375 (Nat. Arb. Forum Nov. 18, 2002)
(ordering that the <disneylandhotel.com>
domain name be transferred from Respondent to 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."
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.
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.
Complainant
established in this proceeding that it has rights in the YOUR BIG BACKYARD and
RANGER RICK marks through registration with the U.S. Patent and Trademark
Office (“USPTO”) and through use of the marks in connection with Complainant’s
magazine business since 1979 and 1983 respectively.
Furthermore, the
domain name registered by Respondent, <yourbigbackyard.com>, is
identical to Complainant’s mark because the disputed domain name fully
incorporates the YOUR BIG BACKYARD mark and merely adds the generic top-level
domain “.com.” Respondent’s addition of
the generic top-level domain “.com” is insufficient to avoid finding that the
disputed domain name is identical to 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 Blue Sky
Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000)
(holding that the domain name <robohelp.com> is identical to
Complainant’s registered ROBOHELP trademark, and that the "addition of
.com is not a distinguishing difference").
Also,
the domain name registered by Respondent, <rangerrickmagazine.com>,
is confusingly similar to Complainant’s mark because the disputed domain name
fully incorporates the RANGER RICK mark and merely adds the term “magazine,”
which is a word that describes Complainant’s business. Respondent’s addition of the word “magazine”
is insufficient to distinguish the disputed domain name from Complainant’s mark
because “magazine” is the product that Complainant provides in conjunction with
Complainant’s RANGER RICK mark. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business); see
also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the
<hoylecasino.net> domain name is confusingly similar to Complainant’s
HOYLE mark, and that the addition of “casino,” a generic word describing the
type of business in which Complainant is engaged, does not take the disputed
domain name out of the realm of confusing similarity).
In addition,
both of the domain names registered by Respondent, <yourbigbackyard.com>
and <rangerrickmagazine.com>, fully incorporate Complainant’s YOUR
BIG BACKYARD and RANGER RICK marks but eliminate the spaces from each of the
marks. The elimination of spaces in
Complainant’s marks is insufficient to distinguish the domain names from
Complainant’s marks. See Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding
<hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16,
2000) (finding that the domain name <wembleystadium.net> is identical to
the WEMBLEY STADIUM mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
established that it has rights to and legitimate interests in the domain names
in issue. Respondent did not provide the Panel with a Response in this
proceeding. Thus, the Panel may accept
all reasonable allegations and inferences in the Complaint as true. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding it appropriate for the Panel to draw adverse inferences from
Respondent’s failure to reply to the Complaint); see also Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that Complainant’s allegations are true unless clearly contradicted
by the evidence).
Moreover, due to
Respondent’s failure to contest the allegations of the Complaint, the Panel may
presume that Respondent lacks rights or legitimate interests in the disputed
domain names. See Canadian Imperial Bank of Commerce v. D3M
Virtual Reality, Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the Panel and Respondent did not come forward to suggest any right
or interest it may have possessed); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no legitimate interest in the domain names).
Furthermore, the
WHOIS information for the <yourbigbackyard.com> and <rangerrickmagazine.com>
domain names fails to establish that Respondent is commonly known by either of
the disputed domain names. The record
fails to establish that Respondent was authorized or licensed to use or
register domain names that incorporate the RANGER RICK or YOUR BIG BACKYARD
marks. Therefore, the Respondent has no
rights or legitimate interests in the disputed domain names pursuant to Policy
¶ 4(c)(ii). 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 Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior
rights in the domain name precede Respondent’s registration; (3) Respondent is
not commonly known by the domain name in question).
In addition, the
Panel presumes that Respondent has attempted to cause Internet user confusion
and to benefit commercially from the goodwill associated with Complainant’s
mark because the disputed domain names fully incorporate Complainant’s marks
and Respondent has used the domain names to direct Internet users to on-line
casino and adult oriented websites, which are commonly known to pay
“click-through fees.” In the past,
Respondent used the <yourbigbackyard.com> domain name to direct
Internet users to the <magazines.com> website, which advertises that it
will pay a 30% commission for magazine sales made by diverting Internet users
to its website. The
<magazines.com> website sells Complainant’s magazines and the magazines
of Complainant’s competitors.
Respondent’s use of the disputed domain names is evidence that
Respondent has not made a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Imation Corp. v.
Streut, FA 125759 (Nat. Arb. Forum Nov. 8, 2002) (finding no rights or
legitimate interest where Respondent used the disputed domain name to redirect
Internet users to an online casino); see also McClatchy Mgmt. Servs.,
Inc. v. Carrington a/k/a Party Night Inc., FA 155902 (Nat. Arb. Forum June
2, 2003) (holding that Respondent’s use of the disputed domain names
to divert Internet users to a website that features pornographic material, had
been “consistently held” to be neither a bona fide offering of goods or
services . . . nor a legitimate noncommercial or fair use); see also Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding
Respondent had no rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) where it used the domain name
<deluxeform.com> to redirect users to Complainant’s <deluxeforms.com>
domain name and to receive a commission from Complainant through its affiliate
program).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
The Panel may
infer that Respondent knew of Complainant’s rights in the YOUR BIG BACKYARD and
RANGER RICK marks because (1) Complainant’s marks are recognized worldwide due
to Complainant’s worldwide distribution of its magazines, (2) the inclusion of
the word “magazine” in the <rangerrickmagazine.com> domain name
describes Complainant’s business, and (3) the <yourbigbackyard.com>
domain name directed Internet users to a website that sells Complainant’s
magazines. 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
Exxon Mobil Corp. v. Fisher,
D2000-1412 (WIPO Dec. 18, 2000) (finding that Respondent had actual and
constructive knowledge of Complainant’s EXXON mark given the worldwide
prominence of the mark and thus Respondent registered the domain name in bad
faith).
Respondent has
used the disputed domain names to direct Internet users to on-line casinos,
adult oriented websites, and to websites that pay a commission for selling
Complainant’s magazines and the magazines of Complainant’s competitors. Respondent’s use of the disputed domain
names is evidence that Respondent has used the domain names in bad faith
pursuant to Policy ¶ 4(a)(iii). See Mars, Inc. v. Double Down Magazine,
D2000-1644 (WIPO Jan. 24, 2001) (finding bad faith under Policy ¶ 4(b)(iv)
where Respondent linked the domain name <marssmusic.com>, which is
identical to Complainant’s mark, to a gambling website); see also Wells
Fargo & Co. v. Party Night Inc. a/k/a Peter Carrington, FA 144647 (Nat.
Arb. Forum Mar. 18, 2003) (finding that Respondent’s
tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence
that the domain names were being used in bad faith); see also Deluxe
Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002)
(finding Respondent registered and used the <deluxeform.com> domain name
in bad faith pursuant to Policy ¶ 4(b)(iv) by redirecting its users to
Complainant’s <deluxeforms.com> domain name, thus receiving a commission
from Complainant through its affiliate program).
In addition,
Respondent has a history of registering domain names that infringe on other
trademark holders’ rights; therefore, Respondent’s registration and use of the <yourbigbackyard.com>
domain name constitutes bad faith pursuant to Policy ¶ 4(b)(ii) because the
domain name is identical to Complainant’s YOUR BIG BACKYARD mark and prevents
Complainant from reflecting its mark on-line.
See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb.
28, 2003) (finding that Respondent’s previous registration of domain names such
as <pillsbury.net>, <schlitz.net>, <biltmore.net> and
<honeywell.net> and subsequent registration of the disputed <Marlboro.com>
domain name evidenced bad faith registration and use pursuant to Policy ¶
4(b)(ii)); see also Am. Online,
Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding
a bad faith pattern of conduct where Respondent registered many domain names
unrelated to its business which infringe on famous marks and websites).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED. Accordingly, it is Ordered that
the <yourbigbackyard.com> and <rangerrickmagazine.com>
domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 9, 2003.
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