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Low Rider Publishing Group Inc v. Sand Web Names – For Sale [2001] GENDND 1212 (22 June 2001)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainant is Low Rider Publishing Group Inc a California Corporation whose contact details are 745 Fifth Avenue, New York, NY 10151, USA. The Respondent SAND WebNames – For Sale has an address at Vukovarska 43, Split/2100, HR, Croatia. The Complainant is represented by Kieran G Doyle of Cowan, Liebowitz & Latman, P.C. of 1133 Avenue of the Americas, New York, NY 10036, USA. The Respondent who has not filed a Response is not represented.

The domain name that is the subject of the Complaint is <lowridermag.com>. The Registrar is Network Solutions, Inc., of Huntmar Park Drive, Herndon, Virginia, 20170, USA. Notice of the Complaint was given to the Registrar which has confirmed that the Registrant is SAND WebNames – For Sale at the address referred to above.

3. Procedural History

The Complaint was received in electronic form by the WIPO Arbitration and Mediation Center on April 20, 2001, and in hard copy on April 23, 2001. Acknowledgement of Receipt of the Complaint by the Center was given on April 24, 2001. Notification of the Complaint was given to the Respondent on May 4, 2001, by email and by courier. No response was received from the Respondent and accordingly Notification of Respondent Default was given by email on May 29, 2001. On June 5, 2001 a Panel was appointed consisting of a single member, Mr. Clive Duncan Thorne. An extension of time for the Panel’s decision was given until June 22, 2001.

The Complainant is a publisher of special interest magazines. The Complainant and its predecessors have published LOW RIDER magazine since 1978. A sample of the publication is annexed as Exhibit 4 to the Complaint and features articles and information about classic cars. The Complainant and its predecessors also publish other magazines in the Low Rider family of publications including "LOW RIDER EURO", "LOW RIDER ARTE", "LOW RIDER BICYCLE" and "LOW RIDER BEST".

The Complainant also offers an online version of its LOW RIDER magazine and has done so since 1996. The Complainant registered the domain name <lowridermagazine.com> in 1996 and began hosting the Internet site for the Low Rider family of publications in 1999. The Internet site promotes the Low Rider family of publications generally and features articles and interactive resources about the same topics as appear in the hard copy magazines. The Complainant has exhibited (Exhibit 5) a printout showing the use of its trademarks on the Internet site.

The Complainant asserts that its LOW RIDER magazine has a paid circulation of over 200,000 and an estimated United States readership of 1.5 million. It also estimates that each month approximately 250,000 people visit its website. Gross revenue attributable to Low Rider Publications was over US$ 16.4 million in 2000. The Complainant spent more than US$ 730,000 to advertise and promote the Low Rider family of publications in 2000 and is projected to spend US$ 775,000 in the current year.

The Complainant is the sole and exclusive owner of a number of trademark registrations in the United States which are set out in the Complaint. These include the mark "LOWRIDER" (number 1557901) in class 16 for magazines. It is also the owner of trademarks in Japan for LOWRIDER. The Complainant has exhibited certificates of registration as exhibit 6 to the Complaint.

The Respondent appears to use the domain name <lowridermag.com> not for the purpose of offering goods or services but to divert consumers to sites displaying advertisements for pornographic websites. The Complainant has exhibited examples of these. The Respondent would appear to receive fees from advertisers each time a user clicks on to an advertisement in an attempt to exit the Respondent’s sites. At Exhibit 7, 8, 9, 10, 11, 12, 13, 14 and 15 to the Complaint the Complainant exhibits print outs showing the results of attempting to reach and exit Internet sites associated with the domain name <lowridermag.com>.

At Exhibit 7 for example there is an invitation to "Click Here To Enter!" followed by a further invitation to "Click Here to Enter Come on in if you want snatch". Exhibit 8 refers to a "Selection of best sex sites on the net" and a special offer of "Real Nude Celebs Photos" and makes reference to Britney Spears, Christina Aguilera, Anna Kournikova and Pamela Anderson. It also refers to an invitation to view "Thousands of Lesbian Pictures!! Thousands of Extreme Lesbian Videos Hot young girls with their girlfriends". Exhibit 9 invites the browser to "Click Here For Sinful Mail FREE Porn!!. Exhibit 10 is pictorially explicit with images of nude ladies and photographic images of copulating couples. Exhibit 11 refers to "Todays top 5 sex sites" with a pornographic photograph of a lady with her legs wide apart exhibiting her genitalia. Similarly Exhibits 13, 14 and 15 to the Complaint consist of pornographic images.

In the absence of a Response the Panel is prepared to accept the Complainant’s evidence as to its registered and unregistered trademark rights and that the Respondent uses the domain name to misleadingly divert consumers to different sites displaying advertisements for pornographic websites.

In order to succeed in its request for an Order to transfer the domain name the Complainant has to prove that each of the elements set out in paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy are present.

These are as follows:-

i) The Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

ii) The Respondent has no rights or legitimate interest in respect of the domain name.

iii) The Respondent’s domain name has been registered and is being used in bad faith.

The Panel proceeds to deal with each of these in turn.

i) The Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant has provided evidence of its trademark rights in the United States and Japan. It has also provided evidence of long use of the mark LOW RIDER in the United States and on the Internet. The Panel accepts the Complainant’s submission that the relevant portion of the domain name <lowridermag.com> is identical or confusingly similar to the Complainant’s LOWRIDER trademark.

ii) The Respondent has no rights or legitimate interest in respect of the domain name.

In support of this contention the Complainant asserts that the Respondent does not own a trademark or service mark registration that is identical, similar or in any way related to the Complainant’s "LOWRIDER" trademarks. It also asserts that the Respondents personal name is not "Low Rider Mag" and that the Respondent does not actually engage in any business or commerce under the name LOWRIDERMAG. It asserts that the Respondent is not a licensee of the Complainant and that there has never been any authorisation by the Complainant to use the Complainant’s trademark.

Rather the Complainant submits that the Respondent uses the domain name for the purpose of promoting pornographic websites.

The Panel accepts the Complainant’s submissions and finds that the Respondent has no rights or legitimate interest in respect of the domain name.

(iii) The Respondent’s domain name has been registered and is being used in bad faith.

The Complainant submits that evidence of bad faith is provided by:-

(a) The registration by the Respondent of the domain name <lowridermag.com> with knowledge of the Complainant’s use of the trademark "LOWRIDER" and the Complainant’s Internet site <lowridermagazine.com>. It asserts that the Respondent registered and uses the domain name because it is identical or confusingly similar to the Complainants trademarks.

(b) The Complainant relies on the Respondent’s business name "SAND WebNames – For Sale" as evidence that the Respondent is "engaged in abusive domain name registration within the meaning of the Policy" and is seeking to use the domain name "to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s marks as to the source of product or services on its website locations."

(c) The Complainant relies upon the fact that the Respondent has apparently engaged in a course of conduct of registering several domain names including famous marks or celebrity names and refers to inter alia registrations by the Respondent for <sonyplaystation.com>, <ticketmaster.com>, and <britneyspears.com>.

(d) The Complaint refers to the findings of a National Arbitration Forum decision in a complaint (number FA94722) brought by The North Face Inc against the Respondent in which the Panel had noted that the Respondent had registered other domain names of prominent celebrities such as <pamelalee.com> and <zena.com>. The Complainant exhibits at Exhibit 17 a list of the registrations.

(e) The Complainant exhibits at Exhibit 19 a demand letter dated January 19, 2001, and sent to the respondent alleging that the Respondent’s registration and use of the domain name in dispute constitutes trademark infringement and dilution of the Complainant’s LOWRIDER marks in violation of the United States Anti Cyber Squatting Consumer Protection Act. No response was received.

Having considered all the Complainant’s submissions as to bad faith, and taking into account in particular the pornographic nature of the sites reached through the Respondent’s domain name the Panel is satisfied that the Complainant’s submissions as to bad faith are made out.

It follows that the Complainant has succeeded in all three limbs of paragraph 4(a) of the Policy and succeeds in its Complaint.

6. Decision

The Complainant requests that the Panel issues a decision that the domain name <lowridermag.com> be transferred to the Complainant. The Panel finds for the Complainant and orders that the domain name <lowridermag.com> be transferred from the Respondent to the Complainant.

Clive Duncan Thorne
Sole Panelist

Dated: June 22, 2001