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Artnews v. Ecorp.com [2000] GENDND 942 (22 August 2000)

National Arbitration Forum

DECISION

Artnews, L.L.C v. Ecorp.com

Claim Number: FA0007000095231

PARTIES

The Complainant is Artnews, L.L.C, New York, NY, USA ("Complainant"). The Respondent is Ecorp.com, Indianapolis, IN, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME

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

PANELIST

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

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 07/11/2000; The Forum received a hard copy of the Complaint on 07/11/2000.

On 07/10/2000, NSI confirmed by e-mail to The Forum that the domain name "ARTNEWS.NET" 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 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On 07/18/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 08/08/2000 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 Respondent’s registration as technical, administrative and billing contacts by e-mail.

On August 11, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed James P. Buchele as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

1. The Complainant is a LLC and publisher of a monthly magazine entitled "ARTnews".

"ARTnews" was first published in 1902 and presently has a circulation of 80,000 copies per month distributed in 120 countries worldwide. Complainant holds the trademark "ARTnews" which was first registered in 1965.

It is the Complainants position that the domain name "artnews.net" is identical or confusingly similar to its trademark and publication "ARTnews", potentially causing deception and falsely suggesting an association between the domain name and ARTnews L.L.C.

2. The Respondent Chad Folkening is an individual doing business under the name "E-corp.com". Respondent has registered "numerous domain names with the stated expectation that they will serve as platforms for a global webcommunications company. His stated "business strategy" is an interlinking of numerous web-based businesses to provide a consumer the opportunity to travel from site to site within a network of web-based businesses.

It is the Respondents position that he has made plans and preparations beginning in 1996 to use the domain name to establish a site to spotlight and provide a forum for digital art. Respondent contends that since his focus is on digital art his proposed use of the domain name is distinguishable from the Complainants publication and trademark use and that he was not aware of the existence of the marks held by the Complainant until he was contacted by it.

DISCUSSION AND FINDINGS

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 is the sole and exclusive owner of the United States registered trademark "ARTnews". Complainant has made use of this mark through publications, extensive marketing, advertising and promotion for many years. The Domain Name contains Complaints’ Trademark adding only the words ".net". The domain name "artnews.net" is identical and confusingly similar to Complainant’s Trademark pursuant to the Policy, paragraph 4 (a)(i).

Respondent asserts that he registered the Domain Name without prior knowledge of Complainants’ Trademark. Complainant’s statements that they had corresponded with and spoken to Mr. Folkening on several occasions in the period May through December 1999, before he made his latest registration of the Domain Name on March 19, 2000 are not refuted and are convincing. I find that Respondent registered the Domain Name "ARTNEWS.NET" on March 19,2000 with actual knowledge of Complainants Trademark and the Complainants assertions to him that he was infringing.

Respondent’s argument that since his proposed use of the Domain Name is focused on "digital art" it is wholly distinct from Complainants use fails. Complainant has established through its Exhibit 2 that it has provided extensive coverage of digital art in its ARTnews magazine as far back as 1991.

Respondent has made minimal use of the Domain Name and placed minimal content on the website and has offered no evidence that he has ever made any bona fide use of the Domain Name or a similar name as a website or for any other purpose.

Respondent has no rights or legitimate interest in the Domain Name "ARTNEWS.NET" pursuant to the Policy paragraph 4(a)(ii).

As indicated above, Respondent had actual knowledge at the time he registered the Domain Name "ARTNEWS.NET" of Complainant’s Trademark and its use of the term ARTnews. Respondent intentionally registered the Domain Name with knowledge of the alleged infringement.

Respondent acknowledges that he has purchased "numerous domain names" and has "been assembling domain names for several years in preparation of a web-based network" but offers no evidence that supports the conclusion that he has undertaken any substantive activity toward achieving his plan. Passive holding of a Domain Name constitutes a use of the name. This evidence and findings made in other cases (cited in Complainants Reply) relative to Respondents domain name activities supports the conclusion that Respondent has engaged in a pattern of registration of domain names in order to prevent the owners of a trademark from reflecting the mark in a corresponding domain name pursuant to Policy paragraph 4(b)(iii).

DECISION

For all of the foregoing reasons, I find that the Domain Name registered by Respondent is identical or confusingly similar to the trademark in which the Complainant has rights, and that the Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondent’s domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4,i of the Policy, it is the Arbitrators Decision that the registration of the Domain Name "artnews.net" be transferred to the Complainant.

James P. Buchele, Panelist

Dated: August 22, 2000

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