Global Media Group, Ltd. v Damir Kruzicevic
Claim Number: FA0101000096558
The Complainant is Global Media Group, Ltd., New York, NY, USA ("Complainant") represented by Keith S. Orenstein, of Orenstein & Orenstein, L.L.C. The Respondent is Damir Kruzicevic, Split, HR (Croatia) ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is "ouimagazine.com", registered with Register.com.
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 a panelist in this proceeding.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on January 30, 2001; the Forum received a hard copy of the Complaint on January 24, 2001.
On February 2, 2001, Register.com confirmed by e-mail to the Forum that the domain name "ouimagazine.com" is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 12, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 5, 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 Respondentís registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A timely response was received and determined to be complete on February 13, 2001.
On February 22, 2001, pursuant to Complainantís request to have the dispute decided by a One Member Panel, the Forum appointed Louis E. Condon as Panelist.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
The Complainant is the owner of the federally registered trademark in "Oui" for a magazine that it publishes and distributes in the United States and elsewhere. Claimant also owns and operates a web site version of its publication entitled Oui Magazine at the URL oui-magazine.com. Complainant previously successfully challenged the right of We Magazine, Inc. to use the ouimagazine.com domain name. While claimant and We Magazine, Inc. were arranging transfer of the subject domain name, We Magazine, Inc. let the registration of ouimagazine.com lapse and, thereupon, Respondent registered the domain name ouimagazine.com on October 10, 2000. The domain name is identical to the Claimantís trademark and the title to its publication, Oui Magazine.
Complainant claims Respondent has no legitimate interest in the domain name; is not authorized to use Complainantís name; is using the domain name for commercial gain and is intentionally diverting customers from Complainant to advance its business; and that the domain name was registered and is being used in bad faith.
In response, the Respondent neither admitted nor denied any of the contentions of the Complainant. Rather, Respondent stated, inter alia, " I would like to say that this domain name was been registered Ďby errorí and used as a Ďsearch engineí gateway." Further, " I never really check out meaning of this name." And finally, "Well to clear this situation I agree that I need to transfer this domain name to Oui Magazine."
Policy Section 4(a)(i) Identical or Confusingly Similar
Complainant owns the registered mark OUI, which it uses in connection with its magazine that is published and distributed in the United States and elsewhere. Complainant contends Respondentís domain name, ouimagazine.com, is identical to Complainantís mark as well as the title of its publication. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec 9, 2000) finding that " neither the addition of an ordinary descriptive word Ö nor the suffix Ď.comí detract from the overall impression of the dominant part of the name in each case, namely the trademark Sony" and thus Policy 4(a)(i) is satisfied.
Policy Section 4(a)(ii) Rights and Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the domain name in question because Respondent is not commonly known by the domain name, nor has Respondent used the domain name in connection with a legitimate noncommercial or fair use without intent for commercial gain See Hartford Fire Ins. Co. v. Webdeal .com, Inc. FA 95162 ( Nat. Arb. Forum Aug. 29, 2000) finding that "Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainantís marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use."
Policy Section 4(a)(iii) Registration and Use in Bad Faith
Complainant asserts that Respondent registered the domain name at issue to intentionally attract, for commercial gain, Internet users to its web site, or other online locations, by creating a likelihood of confusion with Complainantís well-established mark as to the source, sponsorship, affiliation and endorsement of Respondentís web site. See Luckís Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) finding that the "Respondent had engaged in bad faith use and registration by linking the domain name to a web site that offers services similar to Complainantís services, intentionally attempting to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainantís marks;" see also 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 the Complainantís well known marks, thus creating a likelihood of confusion strictly for commercial gain."
Also, Complainant alleges Respondent registered the domain name at issue primarily for the purpose of selling, renting, or otherwise transferring its domain name registration to the Complainant, or to a competitor of the Complainant, for valuable consideration in excess of out-of-pocket costs directly related to the domain name. See Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov.27,2000) holding "failure to use the domain name in any context other than to offer it for sale to the Complainant amounts to a use of the domain name in bad faith."
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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."
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 Respondent does not offer any information to dispute the fact that the domain name is identical or confusingly similar to Complainantís registered trademark. See Asprey & Garrard Ltd. v. Canlan Computing, D2000-1262 (WIPO Nov.14, 2000). Also see Maple Leaf Sports & Entertainment Ltd. v Toronto Maple Leafs!, D2000-1510 (Jan 24, 2001). Therefore I conclude that the Complaint satisfies Policy Section 4(a)(i).
Rights or Legitimate Interests
The Complainant contends that Respondent has no rights or legitimate interests in the domain name because the Respondent is not authorized to use Complainantís trademark nor is it commonly known by the mark. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000).
The Complainant also contends that the Respondentís commercial use of the domain to confuse and divert Internet traffic is not a legitimate use of the domain name. See Toronto-Dominion Bank v.Karpachev, D2000-1571 (WIPO Jan. 15, 2001) finding no rights and legitimate interests where the Respondent diverted Complainantís customers to his web sites. Respondentís response and willingness to transfer the domain name to Complainant is further evidence that it has no rights or legitimate interest in the domain name. Therefore, I conclude that The Complainant has satisfied Policy Section 4(a)(ii).
Registration and Use in Bad Faith
The Complainant contends that Respondent registered the domain in bad faith to disrupt Complainantís competing business. See Fossil, Inc. v NAS, FA 92525 (Nat Arb. Forum Feb 23, 2000); Gorstew Ltd & Unique Vacations, Inc. v Satin Leaf, Inc, FA 95414 (Nat. Arb. Forum Oct. 4, 2000); and Lubbick Radio Paging v Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec 23, 2000).
Finally, Respondentís failure to respond to Complainantís specific allegations and his willingness to transfer the domain name in compliance with Complainantís request for relief, supports the contention that the domain name was filed and used in bad faith. See Marcor International v. Len Langevin, FA 96317 (Nat. Arb. Forum 12, 2001) Therefore, I conclude that Complainant has satisfied Policy Section 4(a)(iii).
The Complainant having established all three elements required under ICANN Policy, the decision of the Panel is that the requested relief should and is hereby granted. Accordingly, it is ordered that the domain name ouimagazine.com be transferred from the Respondent to the Complainant.
Louis E. Condon, Panelist
Dated: March 7, 2001
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