PROCEDURAL HISTORY
The Complaint was filed with CPR on July 21, 2000, and, after review for
administrative compliance, served on the respondent on July
27, 2000. The
Respondent did not file a Response on or before August 16, 2000. However, on
August 22, 2000, CPR received by Fax a
letter with attachments from the
Respondent which was in the nature of an informal Response. M. Scott Donahey was
appointed Arbitrator
pursuant to the Uniform Domain Name Dispute Resolution
Policy (UDRP”) and Rules promulgated by the Internet Corporation for Domain
Names and Numbers (ICANN). The Panel did not consider the informal Response,
both because it was late and because if failed to include
the certification
required by Uniform Rules, Rule 5. Edgar Rice Burroughs, Inc. v. Adtel
Communications, ICANN Case No. D2000-0115;
EAuto, Inc. v. Available-Domain-Names.com,
d/b/a Intellectual-Assets.com, Inc., ICANN Case No. D2000-0120. Upon the written
submitted
record including the Complaint and Annexes thereto, the Panel finds as
follows:
FINDINGS
Respondent’s registered domain name,<whoiswhoinamerica.com>, was
registered with Network Solutions, Inc. on December 25, 1999.
Respondent’s
registered domain names, <whoiswhointheworld.com>, <whoiswhoinlaw.com>,
<whoiswhoinpolitics.com>,
and <whoiswhoinmedicine.com>, were
registered with Network Solutions, Inc. on December 26, 1999. In registering the
names,
Respondent agreed to submit to this forum to resolve any dispute
concerning the domain names, pursuant to the UDRP.
The UDRP provides, at Paragraph 4(a), that each of three findings must be
made in order for a Complaint to prevail:
i. Respondent’s domain name must be identical or confusingly similar to a
trademark or service mark in which complainant has rights;
and
ii. Respondent has no rights or legitimate interests in respect of the
domain name; and
iii. Respondent’s domain name has been registered and is being used in
bad faith.
IDENTITY/CONFUSING SIMILARITY: Complainant alleges that the
domain names at issue are identical or confusingly similar to Complainant’s
trademarks, WHO’S WHO IN
AMERICA, WHO’S WHO IN THE WORLD, WHO’S WHO IN
MEDICINE AND HEALTHCARE, WHO’S WHO IN AMERICAN POLITICS, and WHO’S WHO IN
AMERICAN
LAW which apply to publications in the nature of a directory.
The Panel finds that the domain names <whoiswhoinamerica.com> and <whoiswhointheworld.com>
are virtually identical and
confusingly similar to Complainant’s marks WHO’S
WHO IN AMERICA AND WHO’S WHO IN THE WORLD. Nandos International Limited v. M.
Fareed
Farukhi, ICANN Case No. D2000-0225; DFO, Inc. v. Christian Williams,
ICANN Case No. D2000-0181. The panel also finds that the domain
name <whoiswhoinmedicine.com>
is confusingly similar to Complainant’s mark WHO’S WHO IN MEDICINE AND
HEALTHCARE. Neither the
mark, nor the domain name are limited geographically,
and one who is seeking information regarding Complainant’s publication is
likely
to be confused when he or she arrives at the parked homepage to which
<whoiswhoinmedicine.com> resolves and would likely assume
that a web page
produced by Complainant has not yet been constructed. Complaint, Annex L. Yahoo!
Inc. v. David Ashby, D2000-0241.
However, the Panel finds that the domain names <whoiswhoinlaw.com> and
<whoiswhoinpolitics.com> are not confusingly similar
to Complainant’s
marks WHO’S WHO IN AMERICAN LAW and WHO’S WHO IN AMERICAN POLITICS. Unlike
the marks, which are expressly limited
geographically, the two domain names at
issue are not so limited. Indeed, Complainant includes in its submissions
examples of numerous
publications from other companies that utilize the “who’s
who” format with and without geographical limitations (e.g., Who’s Who
In
Society, Who’s Who In New York, Who’s Who, Who’s Who in
Electroneurodiagnostics, Who’s Who In International Organizations, etc.)
SportSoft Golf, Inc. v. Sites to Behold Ltd., ICANN Case No.
FA00060000094976.
The Panel therefore concludes that the registered domain names <whoiswhoinamerica.com>,
<whoiswhointheworld.com>, and
<whoiswhoinmedicine.com> are identical
or confusingly similar to Complainant’s protected marks, and that the
registered domain
names <whoiswhoinlaw.com> and <whoiswhoinpolitics.com>
are not identical or confusingly similar to Complainant’s protected
marks.
RIGHTS AND LEGITIMATE INTERESTS: Complainant alleges and
Respondent has failed to deny that Respondent has no rights or legitimate
interest with respect to the domain
names at issue. Alcoholics Anonymous World
Services, Inc. v. Raymond, ICANN Case No. D2000-0007; Ronson Plc v. Unimetal
Sanayai veTic.
A.S., ICANN Case No. D2000-0011.
The Panel therefore concludes that Respondent does not have rights or
legitimate interests in respect of the domain names still at
issue, namely <whoiswhoinamerica.com>,
<whoiswhointheworld.com>, and <whoiswhoinmedicine.com>.
BAD FAITH: In support of the contention of Respondent’s bad
faith registration and use, Complainant notes that Respondent has registered
multiple
names, in addition to those at issue, which are unrelated either to
Respondent’s business or to each other, suggesting an improper
motive, and
that Respondent failed to change its conduct after receiving notification of
infringement from Complainant.
Paragraph 4(b) of the UDRP provides that indications of bad faith include,
without limitation, (a) registration for the purposes of
selling, renting or
transferring the domain name to the Complainant for value in excess of
Respondent’s cost; (b) a pattern of registration
in order to prevent
Complainant from reflecting the mark in a corresponding domain name; (c)
registration for the primary purpose
of disrupting the business of a competitor;
or (d) an intentional attempt to attract, for commercial gain, Internet users to
Respondent’s
web site by creating a likelihood of confusion with Complainant’s
mark as to the source, sponsorship, affiliation or endorsement
of Respondent’s
web site or location, or of a product or service on Respondent’s web site or
location.
The domain names registered by Respondent are typically generic or
descriptive in nature: (e.g., <howtomakealotofmoney.com>,
<topfivechefs.com>,
<truffleoil.com>, <whoiswhointhefoodworld.com>, <feedingthehungry.com>,
<howtofindagooddoctor.com>,
etc.) The Panel finds that the mere
registration of multiple generic or descriptive domain names, without more, does
not constitute
bad faith registration and use under ¶4(b)(ii), nor does such
registration suggest an improper motive. LIBRO AG v. NA Global Link
Limited,
ICANN Case No. D2000-0186; Microcell Solutions Inc. v. B-Seen Design Group Inc.,
ICANN Case No. AF-0131.
Moreover, Complainant indicates, without expressly stating, that Respondent
contacted Complainant following the letters which Complainant
sent, and that
some attempts to resolve their differences followed. Complaint, ¶18, last
sentence, at 5-6. As Respondent did not
attempt to conceal its identity or to
hide from Complainant, the Panel does not find that Complainant has met its
burden in establishing
bad faith registration and use merely from the fact that
the parties could not resolve their dispute.
However, two of Complainant’s marks are so well known that it is impossible
to believe that anyone living in America for any length
of time could have been
unaware of them. WHO’S WHO IN AMERICA has been in use since 1899, and WHO’S
WHO IN THE WORLD has been in
use since 1970. Registration of such well known
marks as domain names could not have been done in good faith, and any use to
which
they would be put would constitute bad faith use under the policy. The
Panel therefore concludes that Respondent did not register
and use the domain
name <whoiswhoinmedicine.com> in bad faith, as that term is defined in the
ICANN Policy, but did register
and use the domain names <whoiswhoinamerica.com>
and <whoiswhointheworld.com> in bad faith.
CONCLUSION
In light of the findings above that (a) the registered domain names <whoiswhoinlaw.com>
and <whoiswhoinpolitics.com> are
not identical or confusingly similar to
Complainant’s protected marks, but that the registered domain names <whoiswhoinamerica.com>,
<whoiswhointheworld.com>, and <whoiswhoinmedicine.com> are identical
or confusingly similar to Complainant’s protected
marks; (b) Respondent does
not have rights or legitimate interest with respect to the three remaining
domain names at issue; and
(c) Respondent did not register and use the domain
name <whoiswhoinmedicine.com> in bad faith, as that term is defined in the
ICANN Policy, but that Respondent did register and use the domain names <whoiswhoinamerica.com>
and <whoiswhointheworld.com>
in bad faith, the Panel finds in favor of the
Respondent as to the domain names <whoiswhoinlaw.com>, <whoiswhoinpolitics.com>,
and <whoiswhoinmedicine.com>, and the Panel finds in favor of the
Complainant as to the domain names <whoiswhoinamerica.com>
and <whoiswhointheworld.com>.
REMEDY
Complainant’s request to transfer the domain names <whoiswhoinlaw.com>,
<whoiswhoinmedicine.com>, and <whoiswhoinpolitics.com>
is hereby
DENIED.
Complainant’s request to transfer the domain names <whoiswhoinamerica.com>
and <whoiswhointheworld.com> is hereby GRANTED,
and those two domain names
shall be transferred to Complainant Reed Publishing (Nederland) B.V.
__________________________________ August 29, 2000
Signature of
Arbitrator
Date
