Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Clipper Magazine, Inc., Mountland, PA, USA ("Complainant") represented by Eric L. Winkle, Byler, Goodley, Winkle & Hetrick. The Respondent is Advanced Internet Marketing, Hesperia, CA, USA ("Respondent").

The domain name at issue is couponclipper.com registered with Network Solutions.

On January 29, 2001, pursuant to Complainantís request to have the dispute decided by a One Member panel, the Forum appointed James P. Buchele as Panelist. 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.

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 that 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 ICANNís 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 Respondent via e-mail, post and fax, to all entities and persons listed on Respondentís registration as technical, administrative and billing contacts, and to postmaster@couponclipper.com by e-mail.

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 January 10, 2001, Respondent submitted a Response to the Forum that was forwarded on that day to the 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 Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual and timely notice to Respondent." Since the Respondents Response was not timely made, 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. The Panelist reviewed the Response and concluded that it should not be considered and that if it were, the decision would not be changed.

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

A. Complainant

B. Respondent

In 1989, Coupon Clipper, Inc., a Pennsylvania corporation, registered "The Coupon Clipper" as its Service Mark (Registration No. 1,536,672, April 25, 1989) and as its Trademark (Registration No. 1,543,492, June 13, 1989).

Complainant 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 location. 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 and known in many markets as The Coupon Clipper, and has expanded to include a third publication title, The Savvy Shopper.

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 include "couponclipper.com" in its network of on-line sites.

Respondent registered the domain name in question on November 10, 1997.

Respondentís web site offers free retail coupons, a service identical in nature to that of Complainantís off-line and on-line services.

Complainantís use of the name Coupon Clipper preceded Respondents registration of the Domain Name.

Paragraph 15(a) of 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."

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

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.

Respondentís domain name, "couponclipper.com" is identical to Complainantís federally-registered marks. See Croatia Airlines v. Kwen Kijong, AF 0302 (eResolution Sept. 25, 2000) (finding that the domain name "croatiaairlines.com" is identical to the Complainant's trademark "Croatia Airlines").

Paragraph 4(a)(ii) of the ICANN Policy inquires as to whether or not the Respondent has any rights or legitimate interests vested in the domain name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has commonly been known by the domain name; and (iii) legitimate non-commercial or fair use of the domain name.

Even if it was the Respondent's intention to set up a bona fide web site in connection with a coupon service, the Panel is of the opinion that the Respondent would have used the web site to further financial gain by infringing upon the Complainantís established business. Using a domain name to infringe upon anotherís established mark and business rights is not a valid or bona fide use of a domain name. See North Coast Medical, Inc. v Allegro Medical, FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its website). Therefore, Respondent can make no claim of rights or legitimate use in the domain name, which totally embodies the Complainantís mark.

Pursuant to paragraph 4(a)(iii) of the ICANN Policy it is incumbent on the Complainant to prove that the Respondent has registered and is using the domain name in bad faith. Paragraph 4(b) of the ICANN Policy provides a number of circumstances which, if found to be present, are evidence of the registration and use of a domain name in bad faith.

The Panel finds that there is sufficient evidence of bad faith pursuant to paragraph 4(b)(iv) of the ICANN Policy, that by using the domain name the Respondent intentionally attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location. The Panel is of the opinion that under the circumstances the Respondent was aware of the Complainant and the Complainant's business and therefore the only conclusion that can be arrived at, if the Respondent was in fact intending to operate a web site offering coupon services, is that the Respondent was intending to create a likelihood of confusion with the Complainant. See Luck's Music Library v. Stellar Artist Mgmt., FA95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the Respondent had engaged in bad faith use and registration by linking the domain name to a website that offers services similar to Complainantís services, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainantís marks).

In the Panel's opinion the evidence shows bad faith registration and use on behalf of the Respondent.

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 couponclipper.com be transferred from the Respondent to the Complainant.