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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Clipper Magazine, Inc. v. American Digital Inc.
Claim Number: FA0012000096179
PARTIES
The Complainant is Clipper Magazine, Inc., Mountville, PA, USA ("Complainant") represented by Eric L. Winkle, of Byler, Goodley, Winkle, & Hetrick. The Respondent is Clipper Magazine, Inc., Ardsley, NY, USA (" Respondent") represented by David A. Menken, of Smith, Buss & Jacobs.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is "couponclipper.com", registered with Network Solutions.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.
The Honorable Richard DiSalle, Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on November 29, 2000; the Forum received a hard copy of the Complaint on November 29, 2000.
On December 5, 2000, Network Solutions confirmed by e-mail to the Forum that the domain name "couponclipper.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified t hat Respondent is bound by the Network Solutions 5.0 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 December 5, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 26, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Res pondent 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@couponclipper.com by e-mail. Each party filed a supplemental pleading.
On January 8, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed the Honorable Richard DiSalle as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. In 1989, Coupon Clipper, Inc., a Pennsylvania Corporation, registered "The Coupon Clipper" as its Service Mark (Registration No. 1,536,672, with the U.S. Patent and Trademark Office April 25, 1989,) and as its Trademark (Registration No. 1,543,49 2, June 13, 1989, with the U.S. Patent Office).
2. Complainant Clipper Magazine, Inc. is the legal successor of Coupon Clipper, Inc., after Coupon Clipper, Inc., merged with and into Clipper Magazine, Inc. in 1995. At the time of the merger, there was no change of ownership, assets, or business l ocation. Under both names, the business has centered on the sale of retail advertising in coupon magazines distributed free of charge as direct mail. Although the magazine is distributed in some areas as Clipper Magazine, it continues to be distributed an d known in many markets as The Coupon Clipper, and has expanded to include a third publication title, The Savvy Shopper.
3. Complainant has expanded its services to include on-line coupons from both local and national retailers through Internet sites such as "ClipperMagazine.com," "myClipper.com," "mylocalcoupons.com," and other related links. Complainant seeks to inc lude "CouponClippers.com" in its network of on-line sites.
4. Complainant continues to publish its direct mail magazine in many markets under the title "The Coupon Clipper." On its face, Respondent’s domain name, "CouponClippers.com" is almost identical to Complainant’s federally-registered Trademark and Se rvice Mark, the only difference being that Respondent’s domain name suggests the plural form or possessive form of Complainant’s Trademark and Service Mark.
5. Respondent has been using this domain name since only May of 1997, and has used that domain name throughout the time that Complainant has had a registered Trademark and Service Mark with the nearly-identical name; Complainant avers that this is a n unfair commercial use of the domain name. Complainant avers that Respondent has only an on-line identity, and does not conduct business under this name except in an on-line format; as such, there is no recognition of Respondent’s business identity apart from this domain name.
6. Respondent registered the subject domain name while Complainant had the nearly-identical name, Coupon Clipper, registered as both a federal Trademark and a federal Service Mark. Respondent’s web site offers free retail coupons, a service identica l in nature to that of Complainant’s off-line and on-line services. Complainant avers that Respondent has intentionally attempted to attract Internet users to its web site for commercial gain by using a domain name nearly-identical to Complainant’s Tradem ark and Service Mark, creating a strong likelihood of confusion.
7. Respondent admits that it is incorporated in the State of New York as "Coupon Clippers.com, Inc.," that it invites consumers to receive discount coupons by e-mail, and that it very recently entered into a contract with "E-bates.com" under the nam e CouponClippers.com.
B. Respondent
1. Complainant has not provided authority for the proposition that the Complainant’s rights to the name "The Coupon Clipper" in the two goods and services registered gives it the right to the exclusive use of the name "couponclippers.com" or the rig ht to enjoin the Respondent’s use of that name.
In fact, the Complainant’s argument that such registrations gives it the right to enjoin the Respondent’s use of the name "couponclippers.com" is incorrect for two reasons: (1) neither of the goods and services for which the Complainant has a registrat ion encompasses the use at issue, i.e., the operation of a web site for the distribution of coupons, and (2) the Complainant has constructively waived its right to complain of the Respondent’s use of the domain "couponclippers.com" because during the thre e and one half year period that the Respondent has used the domain name and operated its web site in an open and notoroius manner the Complainant has never once complained or given any notice to cease and desist to the Respondent.
2. The Respondent was using the disputed domain name in connection with a bona fide offering of goods or services many years prior to receiving any complaint or notice from the Complainant, and the "couponclippers.com" business is active and operati onal.
3. The Respondent registered the disputed domain name on May 10, 1997. On May 16, 1997, Edmund R. Szamborski, President of Respondent, incorporated "Couponclippers.com, Inc." as a for-profit corporation in the State of New York to operate an Interne t business utilizing the disputed domain name. That corporation is active and currently operated the "couponclippers.com" business on the Internet as an agent of the Respondent.
4. Respondent has operated a web site, actively, as an on-going business, and without intent to harm the Complainant or cause confusion with the Complainant’s web sites, since May, 1997.
5. Following its receipt of the Complaint, the Respondent placed on its web site a disclaimer which the Respondent considers to be a good faith effort to ensure that there is no confusion between the Respondent’s web site and the Complainant’s web s ites. The Respondent contends that confusion between its web site and those of the Complainant is as harmful to the Respondent as it is to the Complainant.
FINDINGS
(1) the domain name registered by the Respondent is 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.
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.
Identical and/or Confusingly Similar
The Complainant holds a U.S. trademark registration for THE COUPON CLIPPER. The Complainant contends that the Respondent’s addition of the letter "s" to Complainant’s mark causes a likelihood of confusion between the contested domain name and the m ark. See Blue Cross and Blue Shield Ass’n. v. InterActive Comm., Inc., D2000-0788 (WIPO Aug. 28, 2000) (finding that the domain names which merely add the letter ‘s’ are sufficiently similar to these marks as to cause a likelihood of confusion betw een the relevant users of the Complainant’s services and those who were to view a web site provided by the Respondent accessed through the contested domain names). The fact that the Respondent admits that the Complainant’s mark is harmful to it makes it o bvious that the marks are confusingly similar.
Rights or Legitimate Interests
Complainant contends that Respondent’s registration and use of the domain name in question forms an unfair commercial use of the domain name. UDRP Panels have held that using a domain name in connection with a website that offers competing services is not a bona fide use under ICANN Rules and Policy. See America Online, Inc. v. Xianfeng Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that "[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-s ite using a domain name which is confusingly similar to the complainant’s mark and for the same business).
Complainant also contends that the Respondent is not commonly known by the domain name in question because the Respondent only has an on-line identity.
Therefore, Complainant contends that since the Respondent is not using the domain name in connection with a bona fide offering of commercial goods and services under Policy ¶ 4(c)(i) and is not commonly known by domain name in question under Policy ¶ 4 (c)(ii), the Respondent has no rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
The Complainant contends that the Respondent registered and is using the domain name in bad faith.
Attracting Internet users to a website, for commercial gain, by causing confusion with the Complainant’s mark as the sponsorship, endorsement, affiliation, or source of the website is evidence of bad faith. Policy ¶ 4(b)(iv). Registering a domain name in order to disrupt the business of a competitor is also evidence of bad faith. Policy ¶ 4(b)(iii). See Southern Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Inte rnet users to website that competes with Complainant’s business); Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where the Respondent attempted to attract customers to its website, <efitnesswholesale.c om>, and created confusion by offering similar products for sale as the Complainant); EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where Respondent’s sites pass users through to Respondent ’s competing business).
CONCLUSION
(1) the domain name registered by the Respondent is 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.
DECISION
Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows: THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME couponclippers.com, registered by Respondent, be transferred to Complainant.
The Honorable Richard DiSalle, Panelist
Dated: January 22, 2000
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