Reed Elsevier Inc. and Reed Elsevier
Properties Inc. v. Ben Dover
Claim Number: FA0501000408246
PARTIES
Complainants
are Reed Elsevier Inc. and Reed Elsevier Properties Inc. (collectively, “Complainant”),
represented by Tara M. Vold, of Fulbright and Jaworski L.L.P., 801 Pennsylvania Avenue N.W., Washington, DC 20004. Respondent is Ben Dover (“Respondent”), 332 West 24th, New York, NY 10018.
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue is <variety-magazine.com>,
registered with Gandi.
PANEL
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.
R.
Glen Ayers, Jr. served as a Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
24, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 25, 2005.
On
January 25, 2005, Gandi confirmed by e-mail to the National Arbitration Forum
that the domain name <variety-magazine.com>
is registered with Gandi and that the Respondent is the current registrant of
the name. Gandi has verified that
Respondent is bound by the Gandi 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 27, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of February
16, 2005 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@variety-magazine.com by e-mail.
A
timely Response was received and determined to be complete on February 11, 2005.
On February 18, 2005, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed R. Glen Ayers, Jr., as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainants, Reed
Elsevier, Inc. and Reed Elsevier Properties, Inc. (“Complainant”) assert that
Complainant is in the business of publishing magazines, newsletters, and other
material including the very famous entertainment magazine “VARIETY.” There are various VARIETY publications and
VARIETY domain names, including <variety.com> and
<dailyvariety.com>. Complainant
is the owner of a number of trademarks related to VARIETY registered n the
United States and elsewhere.
Complainant
asserts that Respondent registered the domain name <variety‑magazine.com> on December 12, 2004. This domain name resolves to a pornography
site, <worldsex.com>.
Complainant
asserts that the domain name is either identical to or confusing similar to its
marks.
Complainant
asserts that there is no legitimate rights of the name held by Respondent and
Complainant asserts that it certainly has not given any rights to
Respondent. Complainant asserts that
there is no bona fide offering of goods or services, since the domain
name dissolves to a pornography website.
Further,
given the famous nature of mark, registration of a domain name incorporating a
famous mark is clear evidence of bad faith.
B. Respondent
The
Respondent did file a response consisting entirely of the following statement:
“Hello,
I didn’t get a copy of the complaint.
Why do they deserve my domain name?
Because they paid you to get it.
This is a formal response [sic], I would like to keep my name. Thanks, Mr. Dover”
Readers
should note that the name of the Respondent is a somewhat questionable
sobriquet, “BEN DOVER.” This Response
was not served on Complainant, as required, but the Panelist has determined to
consider the Response.
C. Additional Submissions
In response to Mr.
Ben Dover’s short submission, Complainant noted that it had taken every step
possible to communicate with Mr. Dover.
Apparently, Mr. Dover has not given accurate information, which would
enable anyone to contact Mr. Dover.
According to Complainant, Mr. Dover’s addresses of record are as
fictitious as his name. His first
address, listed with WHOIS, was ‘“666 Hellway,
New York, New York 10018, ‘with a telephone and fax of’ (212) 555-1212.”’ Therefore, failure of Mr. Dover to receive
information, says Complainant, is his own fault.
FINDINGS
In the absence of
any appropriate response from “Mr. Ben Dover,” the only findings possible for
the Panelist are that the Complainant has provided adequate information and
evidence that its marks in its “VARIETY” trademarks, which are certainly famous
marks, are identical to or confusingly similar to the domain name selected by
Mr. Dover, <variety-magazine.com>.
Of course, Respondent has not asserted
that he or it has any interest in the VARIETY name and has not asserted that
the VARIETY name is being used to promote any bona fide offerings
of goods and services. As Complainant
has asserted, there is ample evidence that there are no rights in the name and
that the name is not being used to promote bona fide offerings of goods and
services, since the resolution of the domain name is to a pornography
site.
Finally, as to bad faith, the findings
are clear as to the bad faith of the Respondent. If nothing else, the use of the name “Ben Dover,” and the false
addresses, including “666 Hellway,” are clear evidence that Mr. Dover
registered these names in bad faith.
DISCUSSION
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.
The
Complainant has clearly demonstrated that the domain name and VARIETY marks are
identical to or confusing similar. The
VARIETY marks are registered and are famous.
The mere addition of a “-” and a generic word such as “magazine” are
irrelevant. See generally, Chernow
Communications, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000); see
also, Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar 23, 2001). But
see Rollerblade, Inc. v. CBNO, D2000-0427 (WIPO Aug. 24, 2000).
Complainant’s facts clearly establish
that the use of the domain name to redirect Internet users to a pornography
website, <worldsex.com>, means that Respondent’s use of the domain name
is not in connection with any bona fide offering of goods or services. Further, there is no legitimate use or fair
use. See generally, Brown
& Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5,
2001).
Further, since there is no evidence that
Respondent might be known by the name <variety-magazine.com>
nor is it authorized to use the marks.
There is no legitimate interest in the name. See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat.
Arb. Forum Feb. 5, 2001).
Finally, this Panelist, like others,
finds that the simple use of a mark to redirect traffic to a pornography website
is, ispo facto, bad faith. See
generally, Wells Fargo & Co. v. Party Night, Inc., FA 144647
(Nat. Arb. Forum Mar. 18, 2003).
In addition, however, the Panelist wishes to note that the
use of obviously false names (Ben Dover), coupled with obviously false
addresses and telephone numbers provided to WHOIS, constitute acts of bad
faith.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <variety-magazine.com>
domain name be TRANSFERRED from Respondent to Complainant.
R. GLEN AYERS, JR.
Dated: March 4, 2005
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