Meredith Corporation v. Dan Armstrong
Claim Number: FA2009001911633
Complainant is Meredith Corporation (“Complainant”), represented by Mark A. Lerner of Duane Morris LLP, Iowa, USA. Respondent is Dan Armstrong (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <meredith-mags.com>, registered with Pdr Ltd. D/B/A Publicdomainregistry.Com; PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 9, 2020; the Forum received payment on September 9, 2020.
On September 10, 2020, Pdr Ltd. D/B/A Publicdomainregistry.Com; PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <meredith-mags.com> domain name is registered with Pdr Ltd. D/B/A Publicdomainregistry.Com; PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. Pdr Ltd. D/B/A Publicdomainregistry.Com; PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the Pdr Ltd. D/B/A Publicdomainregistry.Com; PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 14, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 5, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@meredith-mags.com. Also on September 14, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 8, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant runs multiple publications including magazines, books, and pamphlets. Complainant has rights in the MEREDITH mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 1,198,642, registered Jun. 22, 1982). The disputed domain name <meredith-mags.com> is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds a hyphen and the word “mags”, along with the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized or licensed Respondent to use its MEREDITH mark in the disputed domain name.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent disrupts Complainant’s business for commercial gain by passing off as Complainant in email correspondence. Additionally, Respondent redirects the disputed domain names’s resolving website to Complainant’s official website. Finally, Respondent registered the disputed domain name with constructive or actual knowledge of Complainant’s rights in the MEREDITH mark.
B. Respondent
Respondent did not submit response in this proceeding.
1. The disputed domain name was registered on August 18, 2020.
2. Complainant has established rights in the MEREDITH mark through its registration with the United States Patent and Trademark Office (“USPTO”). (e.g. Reg. 1,198,642, registered Jun. 22, 1982).
3. An email correspondence from the disputed domain name originates from “a President of Meredith Local Media Group”, and allegedly attempts to fraudulently offer photo shoots to the email recipients.
4. The disputed domain name currently redirects to Complainant’s official website.
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."
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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the MEREDITH mark through its registration with the USPTO (e.g. Reg. 1,198,642, registered Jun. 22, 1982). Registration with the USPTO is generally sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Therefore, the Panel finds that Complainant has rights in the mark per Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name is identical and/or confusingly similar to Complainant’s MEREDITH mark as it incorporates the mark in its entirety and adds a hyphen, the word “mags”, and the “.com” gTLD. Per Policy ¶ 4(a)(i), adding a descriptive word related to a Complainant’s business, along with a hyphen and a gTLD is generally insufficient to differentiate a disputed domain name from a mark. See Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant’s ANT FINANCIAL mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds the disputed domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain name because Respondent is not commonly known by the domain name and Complainant has not authorized or licensed Respondent to use its MEREDITH mark. In lieu of a response, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). The WHOIS of record identifies Respondent as “Dan Armstrong”, and nothing in the record rebuts Complainant’s assertion that it never authorized Respondent to use its mark in the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name
Complainant argues Respondent registered and uses the disputed domain name in bad faith by disrupting Complainant’s business and attempting to attract Internet users for commercial gain. Attempting to pass off as a complainant through email is generally considered bad faith disruption and attraction for commercial gain under Policy ¶ 4(b)(iii) and (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”). Complainant provides screenshots of an email correspondence from the disputed domain name that claims to originate from “a President of Meredith Local Media Group”, and allegedly attempts to fraudulently offer photo shoots to the email recipients. As the Panel finds this convincing, it holds that Respondent disrupts Complainant’s business for commercial gain in bad faith under Policy ¶ 4(b)(iii) and (iv).
Complainant argues that Respondent registered and uses the disputed domain name in bad faith by redirecting the disputed domain name’s resolving website to Complainant’s official site. Redirecting a disputed domain name’s resolving website to a complainant’s official website may be considered a bad faith use under Policy ¶ 4(a)(iii). See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”). Complainant asserts that the disputed domain name currently redirects to Complainant’s official website. Complainant notes that this behavior by Respondent creates further confusion as to the relationship between the disputed domain name and Complainant’s business. Therefore, the Panel finds Respondent registered and uses the disputed domain name under Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered the disputed domain name in bad faith because it had actual or constructive knowledge of Complainant’s rights in the MEREDITH mark at the time of domain registration. Under Policy ¶ 4(a)(iii), constructive notice is generally insufficient to establish bad faith, but actual knowledge may be sufficient for a finding of bad faith. Actual knowledge can be demonstrated by a respondent’s use of the domain name to pass off and/or compete with complainant’s business. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). The Panel recalls that Complainant claims the disputed domain name is identical or confusingly similar to Complainant’s mark, and that Respondent attempts to pass off as Complainant in email exchanges. Therefore, the Panel infers that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the mark under 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 <meredith-mags.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: October 17, 2020
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