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Niche Magazine v. NICHE Interactive Audio Magazine [2000] GENDND 855 (8 August 2000)

National Arbitration Forum

DECISION

Niche Magazine, Inc. v Niche Interactive Audio Magazine

Claim Number: FA0006000095039

PARTIES

The Complainant is Niche Magazine, Baltimore, MD, USA ("Complainant"). The Respondent is NICHE Interactive Audio Magazine, Ontario, Canada, ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s)

The domain name at issue is "NICHEMAGAZINE.COM", registered with Network Solutions Inc ("NSI").

PANELIST(s)

The Panelist certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as the panelist in this proceeding.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 06/19/2000; The Forum received a hard copy of the Complaint on 06/19/2000.

On 06/21/2000, NSI confirmed by e-mail to The Forum that the domain name "NICHEMAGAZINE.COM" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 4.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís UDRP.

On 06/27/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 07/17/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, and to all entities and persons listed on Respondentís registration as technical, administrative and billing contacts by e-mail.

On 07/17/2000, having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, The Forum transmitted to the parties a Notification of Respondent Default.

On July 28, 2000, pursuant to Complainantís request to have the dispute decided by a Single Member panel, The Forum appointed Judge Harold Kalina (Ret.) 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 Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, The Forumís Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIESí CONTENTIONS

A. Complainant

The Complainant contends that the Respondent has registered a domain name that is identical and confusingly similar to its trademark registered for and in use by the Complainant. Further, the Complainant contends that the Respondent has no rights or legitimate interests to the domain name, and that the respondent has registered and is using the domain name in bad faith.

The Complainant contends that the Respondent is diminishing the value of its registered mark, and unfairly trading upon its good name. The Complainant asserts that the Respondent could have chosen a domain name that was closer to its business name.

1. Respondent

The Respondent submitted no response in this matter. As a result, all reasonable inferences of fact in the allegation of the Complainant will be deemed true.

FINDINGS

The Complainant has published an art & craft magazine under the trademark "NICHE" since 1988. The Complainant owns trademarks in the United States and Canada. (U.S. registration date11/28/1989; No. 1,568,316) (Canada registration No. 1,045,241).

The Respondent registered the domain name in question on 03/18/1999. The domain name links to the Respondentís website, featuring interactive audio and hip hop culture.

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("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 rights in the registered trademark "NICHE", which is the name of the Complainantís magazine. The Respondentís domain name is identical and confusingly similar to the Complainantís mark. Adding the descriptive term "magazine" does not change the appearance, sound, or meaning of the Complainantís registered mark. See State Farm v. Kaufman, FA 94335 (Nat. Arb. Forum April 24, 2000) (finding that <statefarmdirect.com> is confusingly similar to Complaintís registered mark).

The Respondent asserts no rights or legitimate interests in the domain name in question. The failure of Respondent to produce evidence sufficient to rebut Complainant's allegations entitles the Panel to conclude that Respondent has no such rights or legitimate interests in respect of the domain name at issue. See Parfums Christian Dior v. QTR Corp., No. D2000-0023 (WIPO Mar. 9, 2000).

The Respondent has not responded to the Complaint and, therefore, does not deny that the domain name was registered and is being used in bad faith, as alleged by Complainant.

The Respondent uses the domain name in question to misleadingly divert consumers to the Respondentís website for commercial gain, by creating a likelihood of confusion with the Complainantís mark. Policy  4(b)(iv). The Complainant holds rights in the registered mark, NICHE. The Respondent registered the domain name in question over 10 years after the Complainant had established a business in connection with this mark.

While the services differ, a likelihood of confusion as to the source or endorsement of Respondentís website has been created as a result of the similarities between the Complainantís mark and the domain name in question. Policy  4(b)(iv).

Based on the above, the panel determines that the Respondent registered and used the domain name in bad faith.

DECISION

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name, "NICHEMAGAZINE.COM", be transferred from the Respondent to the Complainant.

______________________________________________________

Judge Harold Kalina (Ret.)

Dated:August 8, 2000