Time, Inc. v. MIC c/o Domain Management
Claim Number: FA0611000857580
Complainant is Time, Inc. (“Complainant”), represented by James
R. Davis, of Arent Fox PLLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <fortuneconferences.com>, registered with Enom.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On December 1, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 21, 2006 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@fortuneconferences.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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:
Complainant owns all rights, title and interest in the trademark FORTUNE.
Complainant uses the FORTUNE mark in connection with the provision of a wide variety of services on the Internet, including with regard to conducting business seminars.
Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the FORTUNE mark (Reg. No. 1,120,995, issued June 26, 1979).
Complainant has not given Respondent consent to use its FORTUNE mark in Respondent’s domain name.
Respondent registered the disputed domain name, <fortuneconferences.com>, on
Respondent is using the disputed domain name to divert Internet users to a website with links to Complainant’s competitors.
Respondent’s <fortuneconferences.com> domain name is confusingly similar to Complainant’s FORTUNE mark.
Respondent does not have any rights or legitimate interests in the domain name <fortuneconferences.com>.
Respondent has registered and now uses the <fortuneconferences.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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. The Panel is entitled to accept 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 a 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in the FORTUNE mark by virtue of its
registration with the USPTO. See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Respondent’s <fortuneconferences.com> domain name is confusingly similar to Complainant’s mark within the meaning of Policy ¶ 4(a)(i) because it incorporates Complainant’s FORTUNE mark in its entirety and merely adds the generic term “conferences.” This term has a direct and obvious relationship to Complainant’s seminar business. Such a generic term does not adequately distinguish Respondent’s domain name from Complainant’s mark under to Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where a respondent’s domain name combined a complainant’s mark with a generic term that had an obvious relationship to that complainant’s business); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after a competing trademark were confusingly similar to the trademark).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights or
legitimate interests in the <fortuneconferences.com>
domain name. Complainant has the initial
burden of proof in establishing that Respondent has no rights or legitimate
interests in the domain name. However, once
Complainant makes a prima facie case in support of its allegations, the
burden shifts to Respondent to show it does have rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii). See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Because
Complainant’s Submission constitutes a prima
facie case under the Policy, the burden effectively shifts to
Respondent. Respondent’s failure to respond means that Respondent has not
presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).
See also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, once a complainant asserts that a respondent has no rights or legitimate interests with respect to a contested domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
On the record before us, it is undisputed that Respondent is
using the domain name <fortuneconferences.com>,
which is confusingly similar to Complainant’s FORTUNE mark, to divert Internet
users to a website with links to Complainant’s competitors. Such use of the domain name, presumably for
Respondent’s commercial gain, 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 TM Acquisition Corp. v. Sign Guards,
FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s
diversionary use of a complainant’s marks to send Internet users to a website
which displayed a series of links, some of which linked to that complainant’s
competitors, was not a bona fide offering of goods or services); see also Coryn
Group, Inc. v. Media Insight, FA
198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that a respondent was not using
domain names for a bona fide offering of goods or services nor a
legitimate noncommercial or fair use because that respondent used the names to
divert Internet users to a website that offered services that competed with
those offered by a complainant under its marks).
On a related point, Respondent has not answered the
Complaint with any information indicating that it is commonly known by the
disputed domain name. Complainant has
not given Respondent consent to use its FORTUNE mark in Respondent’s domain
name. There is likewise no information
in the WHOIS database implying that Respondent is commonly known by the <fortuneconferences.com> domain
name. Therefore, Respondent has not
established 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
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent does not deny that it is using the <fortuneconferences.com> domain name, which is confusingly similar to Complainant’s FORTUNE mark, to operate a website containing links to Complainant’s competitors. The Panel infers from these facts that Respondent receives click-through fees for misleading consumers to these websites. Therefore, Respondent is taking advantage of the likelihood of confusion between Respondent’s domain name and Complainant’s mark and capitalizing on the goodwill of the mark. Such use constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where a respondent registered and used a domain name confusingly similar to a complainant’s mark to attract users to a website sponsored by that respondent); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where a respondent's use of the domain name at issue to resolve to a website where similar services were offered to Internet users was likely to confuse Internet user into believing that a complainant was the source of or was sponsoring the services offered at the site).
Finally under this heading, it is evident that Respondent
registered the contested domain name with either
actual or constructive knowledge of Complainant’s rights in the FORTUNE mark by virtue of Complainant’s prior registration of
that mark with the pertinent national authorities. Registration of a confusingly similar domain
name despite such actual or constructive knowledge evidences bad faith
registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi
Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <fortuneconferences.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated:
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