City News and Video v. Citynewsandvideo
Claim
Number: FA0403000244789
Complainant is City News and Video (“Complainant”), represented
by J.P. Fernandez, of Hale & Wagner, S.C.,
205 E. Wisconsin Ave., Suite 300, Milwaukee, WI 53202. Respondent is Citynewsandvideo (“Respondent”), 275 W. Main St., Waukesha, WI
53186.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <citynewsandvideo.com>, <supervideo2.com>,
and <selectivevideo.com>, registered with Domain Discover.
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on March 11, 2004; the Forum received a hard copy of the
Complaint on March 11, 2004.
On
March 12, 2004, Domain Discover confirmed by e-mail to the Forum that the
domain names <citynewsandvideo.com>, <supervideo2.com>,
and <selectivevideo.com> are registered with Domain Discover and
that Respondent is the current registrant of the names. Domain Discover has
verified that Respondent is bound by the Domain Discover 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
March 26, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 15, 2004 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@citynewsandvideo.com, postmaster@supervideo2.com,
and postmaster@selectivevideo.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
April 26, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Louis E. Condon as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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."
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. Respondent’s <citynewsandvideo.com>,
<supervideo2.com>, and <selectivevideo.com> domain
names are identical to Complainant’s CITY NEWS & VIDEO, SUPER VIDEO 2, and
SELECTIVE VIDEO marks.
2. Respondent does not have any rights or
legitimate interests in the <citynewsandvideo.com>, <supervideo2.com>,
and <selectivevideo.com> domain names.
3. Respondent registered and used the <citynewsandvideo.com>,
<supervideo2.com>, and <selectivevideo.com> domain
names in bad faith.
B.
Respondent failed to submit a Response
in this proceeding.
Complainant
operates three stores that each sell “Adult Merchandise and Exotic Smoking
Accessories throughout the South-Eastern Wisconsin area.” Mark Phillips Affidavit at 2. These stores are known as “City News &
Video,” “Super Video 2,” and “Selective Video.”
The City News
& Video store has operated under the trade name and mark CITY NEWS &
VIDEO since 1989. The Super Video 2
store has operated under the trade name and mark SUPER VIDEO 2 since 1999 and
the Selective Video store has been operating under the trade name and mark
SELECTIVE VIDEO since 1993.
Complainant has
undertaken advertising campaigns for each of the stores.
Respondent
registered the disputed domain name <citynewsandvideo.com> on
January 3, 2003. Respondent registered
the disputed domain names <supervideo2.com> and <selectivevideo.com>
on January 17, 2003. The three
disputed domain names are used to host a website that contains the words “CITY
NEWS & VIDEO” in big and bold lettering.
The website contains information relating to an adult-oriented video
store located in southeastern Wisconsin, presumably owned by Respondent.
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 names registered by Respondent
are 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 names; and
(3) the domain names have been registered and
are being used in bad faith.
Complainant has
not registered its CITY NEWS & VIDEO, SUPER VIDEO 2, and SELECTIVE VIDEO
marks with any governmental authority.
However, a mark need not be registered with a governmental authority for
rights to be established in a mark under the Policy. Unregistered marks are afforded protection under the Policy. 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 Great Plains Metromall,
LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the
Policy does not require “that a trademark be registered by a governmental
authority for such rights to exist”).
For an
unregistered mark to be afforded protection under the Policy, evidence must be
presented by a complainant to show that the mark is distinctive. Distinctiveness may either be inherent
within a mark or distinctiveness may be established through the secondary
meaning associated with the mark. In
this case, Complainant has asserted and has provided evidence to show that its
businesses have all maintained a presence in southeastern Wisconsin for at least
a period of five years. In addition,
Complainant has provided the Panel with evidence of the advertising associated
with its various businesses and the goods and services connected therewith.
Moreover, no evidence has been adduced to rebut these assertions by
Complainant. Therefore, the Panel finds that Complainant has provided enough
evidence to support its assertion that Complainant has rights in the CITY NEWS
& VIDEO, SUPER VIDEO 2, and SELECTIVE VIDEO marks. See
Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding
common law rights in a mark where its use was continuous and ongoing, and
secondary meaning was established); see also S.A. Bendheim Co., Inc. v.
Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that
Complainant established rights in the descriptive RESTORATION GLASS mark
through proof of secondary meaning associated with the mark); see also Restatement
(Third) of Unfair Competition § 13, pp. 37-38, and Comment a (Tent.
Draft No. 2, Mar. 23, 1990) (An identifying mark is distinctive and capable of
being protected if it either (1) is inherently distinctive or (2) has acquired
distinctiveness through secondary meaning.).
The domain name <citynewsandvideo.com>
is identical to Complainant’s CITY NEWS & VIDEO mark because the name
incorporates the mark in its entirety and the substitution of an ampersand
symbol with its alphabetic spelling is irrelevant under the Policy. See
Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the
<wrightandlato.com> domain name is identical to Complainant’s WRIGHT
& LATO mark, because the ampersand symbol (&) is not reproducible in a
URL); see also McKinsey
Holdings, Inc. v. Indidom, D2000-1616 (WIPO Jan. 31, 2001) (finding that
the removal of the ampersand from “McKinsey & Company” does not affect the
user’s understanding of the domain name, and therefore the domain name
<mckinseycompany.com> is identical and/or confusingly similar to the mark
“McKinsey & Company”).
The domain names
<supervideo2.com> and <selectivevideo.com> are
identical to Complainant’s SUPER VIDEO 2 and SELECTIVE VIDEO marks because the
names incorporate the marks in their entireties and have merely added the
generic top-level domains “.com” to the marks. See 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 Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22,
2000) (finding that the addition of a top-level domain is without legal
significance).
Complainant has established Policy ¶ 4(a)(i).
Having failed to
respond to the Complaint, Respondent has evidenced that it lacks rights and
legitimate interests in the domain names. See 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); see
also Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where Respondent fails to respond).
Although
Respondent’s WHOIS information lists its name as “citynewsandvideo,” there is
no evidence before the Panel to indicate that Respondent is, in fact, commonly
known by the disputed domain name <citynewsandvideo.com> pursuant
to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat.
Arb. Forum June 17, 2003) (finding that
Respondent was not “commonly known by” the <shantiyogaworks.com>
domain name despite listing its name as “Shanti Yoga Works” in its WHOIS
contact information because there was “no
affirmative evidence before the Panel that Respondent was ever ‘commonly known
by’ the disputed domain name prior to its registration of the disputed domain
name”); see also Web House USA, Inc. v. eDollarShop Hostmaster,
FA 155180 (Nat. Arb. Forum June 10, 2003)
(finding that Respondent was not “commonly known by” the
<edollarshop.com> domain name, despite naming itself “eDollarShop,”
because Respondent’s website was almost identical to Complainant’s “first in
use” website and infringed on Complainant’s marks); see also Neiman Marcus
Group, Inc. v. Neiman-Marcus, FA 135048 (Nat. Arb. Forum Jan. 13, 2003)
(noting that “Complainant has
established itself as the sole holder of all rights and legitimate interests in
the NEIMAN MARCUS mark,” in holding that Respondent was not commonly known by the
<neiman-marcus.net> name, despite naming itself “Neiman-Marcus”
in its WHOIS contact information).
There is nothing
in the record to indicate that Respondent is commonly known by the disputed
domain names <supervideo2.com> and <selectivevideo.com> pursuant
to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its
failure to imply that Respondent is commonly known by the disputed domain name,
is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark).
The evidence
before the Panel indicates that Respondent and Complainant are both engaged in
the same business within the similar geographic area. As a result, Respondent
and Complainant are competitors.
Therefore, Respondent is not using the disputed domain name in
connection with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii) because Respondent is using a competitor’s marks in identical
corresponding domain names to direct Internet users to its own website. See
Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s
appropriation of Complainant’s mark to market products that compete with
Complainant’s goods does not constitute a bona fide offering of goods and
services); see also Clear Channel Communications, Inc. v. Beaty Enters.,
FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a
competitor of Complainant, had no rights or legitimate interests in a domain
name that utilized Complainant’s mark for its competing website); see also Chip Merch., Inc. v. Blue Star Elec.,
D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were
confusingly similar to Complainant’s mark and that Respondent’s use of the
domain names to sell competing goods was illegitimate and not a bona fide
offering of goods).
Complainant has
established Policy ¶ 4(a)(ii).
Respondent has
registered and used the disputed domain names in bad faith pursuant to Policy ¶
4(b)(ii) because Respondent registered the domain names to prevent Complainant,
the owner of the CITY NEWS & VIDEO, SUPER VIDEO 2, and SELECTIVE VIDEO
marks, from reflecting its marks in corresponding domain names. Respondent has engaged in a pattern of
conduct as evidenced by Respondent’s multiple registrations of domain names
identical to marks in which Complainant has rights. See YAHOO!
Inc. v. Syrynx, Inc., D2000-1675
(WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii)
in Respondent's registration of two domain names incorporating Complainant's
YAHOO! mark); see also Australian
Stock Exch. v. Cmty. Internet, D2000-1384
(WIPO Nov. 30, 2000) (finding bad faith under Policy ¶ 4(b)(ii) where
Respondent registered multiple infringing domain names containing the
trademarks or service marks of other widely known businesses); see also Pep Boys Manny, Moe, & Jack v. E-Commerce Today, Ltd., AF-0145
(eResolution May 3, 2000) (finding that, where Respondent registered many domain
names, held them hostage, and prevented the owners from using them, the
behavior constituted bad faith).
Respondent has
also registered and used the disputed domain names in bad faith pursuant to
Policy ¶ 4(b)(iii) because Respondent, as a competitor of Complainant,
registered the domain names primarily to disrupt the business of
Complainant. Disruption is occurring as
a result of Internet-user confusion as to the source of the content being
offered at Respondent’s website. See
Surface Protection Indus., Inc. v.
Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the
competitive relationship between Complainant and Respondent, Respondent likely
registered the contested domain name with the intent to disrupt Complainant's
business and create user confusion); see also S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by
attracting Internet users to a website that competes with Complainant’s
business); see also EthnicGrocer.com,
Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7,
2000) (finding that the minor degree of variation from Complainant's marks
suggests that Respondent, Complainant’s competitor, registered the names
primarily for the purpose of disrupting Complainant's business).
In conjunction
with the preceding, Respondent has also registered and used the disputed domain
names in bad faith pursuant to Policy ¶ 4(b)(iv) because it has intentionally
attempted to attract, for commercial gain, Internet users to its website by
creating a likelihood of confusion with Complainant’s marks. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29,
2000) (finding bad faith where the domain name in question is obviously
connected with Complainant’s well-known marks, thus creating a likelihood of
confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding
that Respondent intentionally attempted to attract Internet users to his
website for commercial gain by creating a likelihood of confusion with
Complainant’s mark and offering the same services as Complainant via his
website); see also Scholastic Inc.
v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001)
(finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the
domain name at issue to resolve to a website offering similar services as
Complainant into the same market).
Complainant has
established Policy ¶ 4(a)(iii).
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <citynewsandvideo.com>, <supervideo2.com>,
and <selectivevideo.com> domain names be TRANSFERRED from
Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
May 5, 2004