Lewis & Clark Media, LLC v. C Magazine and CEM MAG a/k/a Roopan Dey
Claim Number: FA0901001242200
Complainant is Lewis & Clark Media, LLC (“Complainant”), represented by Robert
J. Morgan, of Porter, Wright, Morris
& Arthur LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <614magazine.com> and <614mag.com>, registered with Godaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol M. Stoner, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 9, 2009; the National Arbitration Forum received a hard copy of the Complaint on January 16, 2009.
On January 12, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <614magazine.com> and <614mag.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 January 20, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 9, 2009 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 firstname.lastname@example.org and email@example.com by e-mail.
A timely Response was received and determined to be complete on February 9, 2009.
On February 17, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol M. Stoner, Esq., as Panelist.
Complainant requests that the domain names <614mag.com> and <614magazine.com> be transferred from Respondent to Complainant. Respondent requests that a determination of reverse domain name hi-jacking be assessed against the Complainant.
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder”. Complainant contends that both of the disputed names are owned by Respondent, Roopan Dey. Respondent has admitted to ownership of both disputed domain names in its response.
The Panel finds that Complainant’s allegations that the disputed domain names are controlled by the same person and/or entity are confirmed by Respondent’s admissions regarding same. Thus, the instant proceeding can proceed, as presently captioned.
A. Complainant alleges as follows:
Complainant Lewis and Clark, LLC d/b/a “614
Magazine” is a well known publisher of local general interest magazines. Complainant has been promoting its publishing
services and product bearing the 614 MAGAZINE mark since as early as July, 2008.
Complainant avers that Respondent has registered and is using the domain names <614magazine.com> and <614 mag.com> which are comprised of components nearly identical and confusingly similar to Complainant’s registered “614 Magazine” mark.
Complainant has averred that it has expended, and continues to expend, substantial sums promoting the 614 Magazine publication’s name, mark and related advertising services in connection with its business and publication. Because of these efforts, 614 MAGAZINE has become well known to the relevant public and has come to uniquely identify Complainant as the source of the publication titled with, and promoted in association with, the mark.
Complainant avers that Respondent has no rights or legitimate interests with respect to the disputed domain names, in that the web sites associated with the disputed domain names are presently devoid of content, and Respondent has never been known as “614 Magazine” or “614 Mag.” or any name similar, thereto.
Complainant avers that Respondent’s adoption, registration and use of the domain names evidences a primary purpose and bad faith intent to profit by the selling, renting or otherwise transferring the domain name registration to the Complainant, who is the owner of 614 MAGAZINE trademark embodied in the domains, and who is also the competitor of Respondent’s C Magazine, a general interest magazine publication. Complainant then cites Respondent’s offer to sell the disputed domain for $75,000 as conclusive evidence to establish that the domain name has been registered and is being used in bad faith.
B. Respondent alleges as follows:
Respondent Roopan Dey is the individual responsible for publication of a magazine known as “C Magazine”. Roopan Dey is the sole member of Roopan Dey Limited and Royal Tiger Publishing. Royal Tiger Publishing Limited is the owner of the federally registered trademarks “C The Columbus Magazine” and “C Magazine” both filed with the United States Patent and Trademark Registration Office on January 12, 2006, and registered on May 29, 2007.
Respondent Roopan Dey does not
dispute that he is the owner of the domain names <614magazine.com> and <614mag.com>
which were registered on November 28, 2006, per Exhibit B to Complainant’s
Complaint. It is undisputed that
Respondent’s business has published a magazine for circulation in the
Complainant claims rights to the
mark “614 Magazine” based upon its registration of the mark with the Ohio
Secretary of State. Said mark is a mere descriptive geographic indicator for
Respondent further alleges that
Respondent has rights and legitimate interests in the disputed domain name, in
that the area code 614 is synonymous with
Respondent’s sites in question have featured content before any notice of dispute and are currently under construction. Further, a generic domain holder can claim rights in a name that is not exclusively associated with Complainant’s business.
Respondent avers that bad faith registration cannot be found where the Complainant does not claim any ownership or use of the “614 magazine” mark until nearly 18 months after Respondent registered the domain names and where Respondent did not file its State of Ohio registration until nearly two years after Respondent registered the domain names. A subsequent offer of sale is not evidence of bad faith.
Respondent lastly avers that Complainant has engaged in reverse domain name hi-jacking. Respondent’s support for this allegation is that when a domain name is registered before a trademark right is established, the registration of the domain name cannot have been done in bad faith, because the registrant could not have contemplated the Complainant’s non-existent right. Complainant was represented by Counsel, presumably familiar with the UDRP System. Counsel should not have led Complainant to believe that Complainant possessed trademark rights prior to Respondent’s registration of the contested domain name, and thus that it would not be an abuse of the UDRP process to file a Complaint, in connection therewith.
<![if !supportLists]>(1) <![endif]>the domain names registered by the Respondent, i.e., <614mag.com> and <614magazine.com> are not identical or confusingly similar to a mark in which Complainant has rights, that is mark 614 Magazine.
<![if !supportLists]>(2) <![endif]>The Panel has declined to analyze Par. 4(a)(ii) and Par. 4(a)(iii) of the UDRP Policy.
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:
<![if !supportLists]>(1) <![endif]>the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
<![if !supportLists]>(2) <![endif]>the Respondent has no rights or legitimate interests in respect of the domain name; and
<![if !supportLists]>(3) <![endif]>the domain name has been registered and is being used in bad faith.
Complainant states in its Complaint that, “Respondent has registered and is using the domain names “614 magazine.com” and “614mag.com,” which are comprised of components nearly identical and confusingly similar to Complainant’s registered “614 MAGAZINE” mark.
The Panel will not dispute the similarity of the marks. However, Policy 4(a)(i) requires an analysis of identity and similarity of a mark “in which Complainant has rights.” Here, as will be shown, Complainant has not proved that it has rights in the mark “614 MAGAZINE.”
claimed rights to the mark “614 Magazine” based upon its recent (11/13/08)
A descriptive mark such as “614 Magazine” is entitled to trademark protection only if it has acquired secondary meaning. To establish secondary meaning or “acquired distinctiveness,” one must show that “in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself.
In the present matter, Complainant merely asserts that it has expended and continues to expend substantial sums promoting its 614 Magazine publication. “Lewis and Clark Media LLC, through its extensive promotion of 614 Magazine, has established intellectual property rights in the 614 Magazine Mark.” (See Respondent’s Exhibit G, consisting of Complainant’s Counsel’s November 12, 2008 “cease and desist” letter to Respondent.)
Where is Panel to find substantiation of these asserted facts of secondary meaning? Where are the tearsheets or screenshots of the promotions? What is the dollar amount of the extensive promotions? Who actually viewed the promotion? Where are the surveys as to actual or hypothetical consumer confusion?
Counsel’s supposition of consumer confusion from typing either of the disputed domain names into a browser, and appended responses to a self-serving blog authored by a disputant, is not so extant as to create intellectual property rights through the caboose of secondary meaning.
Complainant, in its Exhibit D, shows a cover of 614 Magazine. Yet, Complainant has yet to publish a single edition of the magazine, which is not scheduled to circulate until April of 2009. Thus, there is exceedingly thin support for any supposition of consumer confusion between the domain names and an as yet unpublished magazine and its associated skeletal website.
The reviewing Panel thus finds that Complainant has not acquired sufficient secondary meaning associated with the mark, and that the Complainant lacks rights in the 614 MAGAZINE mark under Policy ¶ 4(a)(i). See Falwell v. Cohn, D2002-0184 (WIPO June 3, 2002) (“Complainant claims a common law trademark in his personal name. The Complainant has failed to show that his name, well known as it is, has been used in a trademark sense as a label of particular goods or services.”); see also Build-A-Bear Workshop, Inc. v. Pallone, FA 874279 (Nat. Arb. Forum Mar. 1, 2007) (finding that the complainant did not establish common law rights in the BEAR BUILDER or BEAR BUILDERS marks because the evidence it submitted was insufficient to show the mark had acquired any secondary meaning).
The Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to establish rights in the mark. Therefore, the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v.Complainanat states in its Complaint that, “ Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the Complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Respondent argues that Complainant engaged in reverse domain name hijacking by filing the instant Complaint while knowing that the disputed domain names predated any rights asserted by Complainant. Panel concludes that Complainant had knowledge of the pre-dated domain name rights because Complainant’s Exhibit B, (Registrar Whois information for the domains at issue at the time of the filing of the Complainant) shows the November 26, 2008 file dates and Complainant’s Exhibit C evidences Complainant’s November 13, 2008 Ohio Trademark registration date.
Respondent also asserts that Complainant, a
competitor of Respondent, seeks to obtain a competitive advantage by wresting
the disputed domain names from Respondent. It is obvious to Panel from a review
of both Complainant’s and Respondent’s material that both parties are in the
magazine business and both parties seek to serve the same target market, that is
Thus, the Panel finds that Complainant has engaged in reverse domain name hijacking. See Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”); see also Vortal Group, Inc. v.Digital Transp., FA 222968 (Nat. Arb. Forum Mar. 9, 2004) (“The claim for reverse domain name hijacking is granted, because filing a Complaint which one knows or should have known would fail based upon the admissions of Complainant can be interpreted as harassing per se and should be discouraged.”); see also NetDeposit, Inc. v. NetDeposit.com, D2003-0365 (WIPO July 22, 2003) (finding reverse domain name hijacking because “Respondent's domain name registration preceded the Complainant's creation of its trademark rights”).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that Complainant’s request for relief shall be DENIED.
Having established the requisite findings for reverse domain name hijacking, the Panel concludes that Respondent’s request for a determination of reverse domain name hi-jacking by Complainant is GRANTED.
Carol M. Stoner,
Dated: March 03, 2009
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