Westchester
Media Company, L.P. v. Infa dot Net Web Services
Claim Number: FA0106000097759
PARTIES
Complainant is Westchester Media Company, L.P., Houston, TX, USA (“Complainant”) represented by David P. Andis, of Dobrowski & Associates, L.L.P. Respondent is Infa dot Net Web Services, Johnstown, PA, USA (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <polomagazine.com>, registered with BulkRegister.com.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 29, 2001; the Forum received a hard copy of the Complaint on June 29, 2001.
On July 5, 2001, BulkRegister.com confirmed by e-mail to the Forum that the domain name <polomagazine.com> is registered with BulkRegister.com and that Respondent is the current registrant of the name. BulkRegister.com has verified that Respondent is bound by the BulkRegister.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 5, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 25, 2001 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@polomagazine.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 1, 2001 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The <polomagazine.com> domain name is confusingly similar to Complainant’s federally registered trademark.
Respondent has no rights or legitimate interests in the <polomagazine.com> domain name.
Respondent registered and used the <polomagazine.com> domain name in bad faith.
B. Respondent did not submit a Response.
FINDINGS
Complainant publishes the magazine Polo. The name Polo was first used for this purpose in October 1976 and has been in commerce continuously from that time to the present. The name Polo was originally registered to Fleet Street Publishing Corporation (“Fleet”) in 1976. More recently, Fleet obtained a Federal trademark bearing registration number 1,691,432 on June 9, 1992. Subsequently, Complainant acquired the rights to the name Polo from Fleet, and Complainant continued to publish the magazine titled Polo.
Complainant originally registered the <polomagazine.com> domain in approximately October 1998. Immediately thereafter, Complainant operated its web site and conducted trade. Between October 1998 and October 2000, Complainant moved its physical address and billing contact information from Dallas, Texas to Houston, Texas. Complainant, thereafter, failed to receive a renewal notice concerning registration of the domain name. In or about October 2000, Complainant discovered that its website was inoperative. Upon investigation, Complainant discovered that the Respondent had registered Complainant’s domain name and would not release it to Complainant. Complainant attempted, unsuccessfully, to contact Respondent by numerous means, all of which failed.
Respondent registered the domain name on October 31, 2000 and has not created a website for the domain name nor demonstrated any preparation to use the domain name.
DISCUSSION
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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Identical and/or
Confusingly Similar
The <polomagazine.com> domain name combines the Polo mark, owned by Complainant, with the generic word "magazine" describing the type of services offered by Complainant. The addition of a generic word to Complainant’s mark makes the <polomagazine.com> domain name confusingly similar to Complainant’s famous mark. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business).
Therefore, Complainant has satisfied the requirements under Policy ¶ 4(a)(i).
Rights or
Legitimate Interests
Respondent’s registration and passive holding of the disputed domain does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See American Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name).
There is no
evidence in the record, and Respondent has not come forward to establish that
it is commonly known by the disputed domain name, pursuant to Policy ¶
4(c)(ii). In fact, Complainant’s prior
registration and use of the domain name would make it difficult for Respondent
to be commonly known by the <polomagazine.com>
domain name. See American Anti-Vivisection Soc’y v. “Infa dot
Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that
Complainant’s prior registration of the same domain name is a factor in
considering Respondent’s rights or legitimate interest in the domain name).
Furthermore, there is no evidence that demonstrates Respondent is making a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
The Panel therefore concludes that Complainant has met its burden under Policy ¶ (4)(a)(ii).
Registration and
Use in Bad Faith
Respondent’s passive holding of the disputed domain names is evidence of bad faith. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Additionally, Respondent registered the <polomagazine.com> domain name in bad faith, because Respondent took advantage of Complainant’s lapse in registration. See BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where Respondent took advantage of the Complainant’s failure to renew a domain name); see also InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (finding that where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three of the elements under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.
Accordingly, it is Ordered that the <polomagazine.com> domain name be transferred from Respondent to Complainant.
James P. Buchele, Panelist
Dated : August 3, 2001
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