Reed Elsevier Inc. v. JIT Limited
Claim
Number: FA0501000409883
Complainant is Reed Elsevier Inc. (“Complainant”),
represented by Tara M. Vold, of Fulbright and Jaworski L.L.P., 801 Pennsylvania Avenue, N.W., Washington, DC 20004. Respondent is JIT Limited (“Respondent”), Post Office Box 908GT, Georgetown,
Grand Cayman KY.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <ny411.com>, registered with Dotster.
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
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
26, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 27, 2005.
On
January 27, 2005, Dotster confirmed by e-mail to the National Arbitration Forum
that the domain name <ny411.com> is registered with Dotster and
that Respondent is the current registrant of the name. Dotster has verified
that Respondent is bound by the Dotster 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
January 31, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 21, 2005 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@ny411.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
March 2, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed the Honorable
Charles K. McCotter, Jr. (Ret.) 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." 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 makes the following assertions:
1. Respondent’s <ny411.com>
domain name is identical to Complainant’s NY 411 mark.
2. Respondent does not have any rights or
legitimate interests in the <ny411.com> domain name.
3. Respondent registered and used the <ny411.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Reed Elsevier Inc., through its division Reed Business Information, provides
entertainment industry information through its operating arm, 411 Publishing. Specifically, Complainant, through this arm,
provides the entertainment industry with resources for film, TV, commercials,
video and music video production under the various 411-related marks.
Complainant
holds a registration for the NY 411 mark with the United States Patent and
Trademark Office (Reg. No. 2,628,509 filed March 18, 1998 and issued October 1,
2002). Complainant has utilized this
mark in commerce since at least as early as February 1999.
Complainant’s
websites are operated at the <newyork411.com> and
<411publishing.com> domain names.
These websites serve as a resource for the film, TV and commercial
production industry.
Respondent
registered the <ny411.com> domain name on March 10, 2003. Respondent is using the domain name to redirect
Internet users to a website that features links to sites that provide video
equipment, video production services and other production products and services
that all directly compete with Complainant’s business. Further, the disputed domain name contains a
number of “Sponsored Links” including sites advertising video production and
video monitor products and services that directly compete with Complainant’s
business.
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 has
established that it has rights to the NY 411 mark through its registration with
the United States Patent and Trademark Office and through continued use of the
mark for the last six years. 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 Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption.); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7,
2001) (finding that the Policy does not require that the mark be registered in
the country in which Respondent operates.
It is sufficient that Complainant can demonstrate a mark in some jurisdiction.).
The disputed
domain name, <ny411.com>, is identical to Complainant’s NY 411
mark because the domain name contains Complainant’s mark in its entirety and
merely adds the generic top-level domain “.com,.” which is irrelevant under the
Policy. 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 Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name
<gaygames.com> is identical to complainant's registered trademark GAY
GAMES); see also Sporty's
Farm L.L.C. v. Sportsman's Mkt., Inc., 202 F.3d 489 (2d Cir. 2000), cert.
denied, 530 U.S. 1262 (2000) ("For consumers to buy things or gather
information on the Internet, they need an easy way to find particular companies
or brand names. The most common method of locating an unknown domain name is
simply to type in the company name or logo with the suffix .com").
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
established by extrinsic proof in this proceeding that it has rights and
legitimate interests in the NY 411 mark, which is incorporated entirely in the <ny411.com>
domain name. Respondent did not respond
to the Complaint. Therefore, the Panel
may accept as true all reasonable inferences of fact from Complainant’s
allegations. See Vertical Solutions Mgmt.,
Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31,
2000) (holding that respondent’s failure to respond allows all reasonable
inferences of fact in the allegations of the complaint to be deemed true); see
also Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21,
2002) (finding that in accordance with Paragraph 14(b) of the Policy, the Panel
may draw such inferences as it considers appropriate, if respondent fails to
comply with the Panel's requests for information); see also Ziegenfelder Co. v. VMH Enter., Inc.,
D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on respondent’s
failure to respond: (1) respondent does not deny the facts asserted by
complainant, and (2) respondent does not deny conclusions which complainant
asserts can be drawn from the facts).
In the
instant case, Complainant has asserted that Respondent is not commonly known by
the disputed domain name. The Panel
accepts this assertion as true because nothing in the record indicates anything
to the contrary; thus, Respondent has no rights or legitimate interests in the domain
name pursuant to Policy ¶ 4(c)(ii). See 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); see also RMO,
Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail"); see
also 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).
Respondent’s
<ny411.com> domain name fully incorporates Complainant’s NY 411
mark and redirects Internet users to a website that features links and
sponsored links to a variety of websites, predominantly video
production-related websites. The Panel
finds that Respondent’s use of a domain name that is identical to Complainant’s
mark and redirects Internet users to commercial websites that compete with
Complainant’s business does not constitute a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
of the domain name pursuant to Policy ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating
that the "use of complainant’s entire mark in infringing domain names
makes it difficult to infer a legitimate use"); see also TM Acquisition
Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding
that respondent’s diversionary use of complainant’s marks to send Internet
users to a website which displayed a series of links, some of which linked to
competitors of complainant, was not a bona fide offering of goods or services);
see also Computer Doctor Franchise
Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000)
(finding that respondent’s website, which is blank but for links to other
websites, is not a legitimate use of the domain names).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
intentionally registered the <ny411.com> domain name that contains
in its entirety Complainant’s mark.
Furthermore, Respondent is using the disputed domain name to attract,
for commercial gain, Internet users to its website by creating a likelihood of
confusion with Complainant as to the source, sponsorship, affiliation or
endorsement of its website pursuant to Policy ¶ 4(b)(iv). The Panel infers that
Respondent is receiving click through fees from the third party links on its
website. Therefore, Respondent is
unfairly and opportunistically benefiting from the goodwill and reputation
associated with Complainant’s mark. See
G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum
Nov. 21, 2002) (finding that respondent registered and used the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv) because respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22,
2002) (finding that if respondent profits from its diversionary use of
complainant's mark when the domain name resolves to commercial websites and
respondent fails to contest the Complaint, it may be concluded that respondent
is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see
also Drs. Foster & Smith, Inc. v.
Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where
respondent directed Internet users seeking complainant’s site to its own
website for commercial gain).
Respondent is
using the disputed domain name to provide links to sites that provide video
equipment, video production services and other production products and
services. Complainant’s business also
provides video production-related services.
The Panel finds that, by creating confusion around Complainant’s NY 411
mark, Respondent is attempting to disrupt the business of a competitor. Respondent’s use of Complainant’s mark with
the domain name to sell goods and services similar to Complainant’s goods and
services is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iii). See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat.
Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and
used in bad faith where respondent and complainant were in the same line of
business in the same market area); 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 SR Motorsports
v. Rotary Performance, FA 95859 (Nat. Arb. Forum Jan. 4, 2001) (finding it
"obvious" that the domain names were registered for the primary
purpose of disrupting the competitor's business when the parties are part of
the same, highly specialized field).
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 <ny411.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
March 16, 2005
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