West Publishing Corporation v. Forum LLC
Claim Number: FA0510000573882
Complainant is West Publishing Corporation (“Complainant”), represented by Jodi A. DeSchane of Faegre & Benson LLP, 2200 Wells Fargo Center, 90 South Seventh St., Minneapolis, MN, 55402. Respondent is Forum LLC (“Respondent”), PO Box 2331, Roseau, Roseau, 00152, DM.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <blackslawdictionary.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies that she 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 electronically October 7, 2005; the National Arbitration Forum received a hard copy of the Complaint October 11, 2005.
On October 9, 2005, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <blackslawdictionary.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. verified that Respondent is bound by the Fabulous.com Pty Ltd. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 14, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 3, 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@blackslawdictionary.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 10, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson 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. The domain name that Respondent registered, <blackslawdictionary.com>, is identical to Complainant’s BLACK’S LAW DICTIONARY mark.
2. Respondent has no rights to or legitimate interests in the <blackslawdictionary.com> domain name.
3. Respondent registered and used the <blackslawdictionary.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, West Publishing Corporation, was founded in
1872 by John B. West, and since that time, has become the legal profession’s
leading provider of authoritiative legal information resources and research
technologies. In 1996, Complainant
joined The Thomson Corporation and is now part of one of The Thomson
Corporation’s four principal global market groups.
Complainant provides high quality legal, regulatory and
business information and innovative technology tools to manage this
information. Complainant publishes more
than 66 million books and 500 CD-ROM libraries per year. Complainant’s Black’s Law Dictionary
has been in publication since 1891 and is one of the most widely cited and
best-selling legal references. The
current version contains more than 43,000 definitions, nearly 3000 quotations
and a thesaurus for more than 5,300 terms.
Complainant is continually adding terms to the book.
Additionally, Complainant owns a registration with the United States Patent and Trademark Office (“USPTO”) for the BLACK’S LAW DICTIONARY mark (Reg. No. 1,227,479 issued February 15, 1983).
Respondent registered the <blackslawdictionary.com> domain name June 11, 2002. The domain name resolves to a search engine website that displays links to various legal information products and services of Complainant’s competitors. In addition, the website features pop-up advertisements.
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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel accepts 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.”).
Paragraph 4(a) of the Policy requires Complainant to 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 provided extrinsic evidence in this proceeding to establish rights in the mark contained within the disputed domain name. Complainant registered the BLACK’S LAW DICTIONARY mark with the USPTO, which the Panel finds to be sufficient to establish Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Complainant asserts that the <blackslawdictionary.com> domain name appropriates Complainant’s entire BLACK’S LAW DICTIONARY mark and simply omits the apostrophe and adds the generic top-level domain “.com.” Both of these changes, as well as the omission of spaces between words, are incapable of creating a domain name that is distinct from Complainant’s registered mark, and the Panel finds that the domain name is identical to the mark. See Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to the complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark); see also Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); 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).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
The initial burden under Policy ¶ 4(a)(ii) is on Complainant to prove that Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (describing the burden shifting from the complainant to the respondent regarding rights and legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
The Panel finds that Complainant presented a prima facie case, and the Panel now considers whether an evaluation of all the evidence demonstrates rights to or legitimate interests for Respondent under Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the <blackslawdictionary.com> domain name and that Respondent is not licensed by Complainant to use Complainant’s BLACK’S LAW DICTIONARY mark. Based upon these assertions and the record, including the WHOIS information for Respondent, the Panel finds no evidence suggesting that Respondent established rights or legitimate interests in the mark and domain name under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Furthermore, Respondent failed to establish rights or legitimate interests in the domain name under Policy ¶ 4(c)(i) or (iii). Complainant asserts that the disputed domain name, <blackslawdictionary.com>, resolves to a search engine website that features sponsored links to dictionaries and other legal products and services of Complainant’s competitors, as well as pop-up advertisements. Respondent’s use of Complainant’s mark within a domain name to divert Internet users to competing products and services, presumably to earn referral fees, is not in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Respondent is using the <blackslawdictionary.com>
domain name to operate a website that provides links to various products and
services similar to those offered by Complainant. Respondent’s use of a domain name that is identical to
Complainant’s BLACK’S LAW DICTIONARY mark to offer competing products,
presumably to earn referral fees, suggests that Respondent is attempting to
attract Internet users to its commercial website by creating a likelihood of
confusion. This is evidence of bad
faith registration and use under Policy ¶ 4(b)(iv). See Amazon.com, Inc. v.
Shafir, FA 196119 (Nat. Arb. Forum Nov.
10, 2003) (“As Respondent is using the domain name at issue in direct
competition with Complainant, and giving the impression of being affiliated
with or sponsored by Complainant, this circumstance qualifies as bad faith
registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”); see
also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003)
(“Registration and use of a domain name that incorporates another's mark with
the intent to deceive Internet users in regard to the source or affiliation of
the domain name is evidence of bad faith.”); see also Associated
Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19,
2003) (“Respondent's prior use of the <mailonsunday.com> domain name is
evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name
provided links to Complainant's competitors and Respondent presumably
commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
In addition, Respondent’s use of
the <blackslawdictionary.com> domain name to redirect
Internet users to a website containing links associated with Complainant’s
competitors is evidence that Respondent registered the domain name primarily to
disrupt Complainant’s business. This
activity constitutes bad faith registration and use of the domain name
according to Policy ¶ 4(b)(iii). See
Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶
4(b)(iii) [and] (iv).”); 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).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <blackslawdictionary.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 28, 2005.
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