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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Down East Enterprise Inc. v Countywide Communications
Claim Number: FA0102000096613
PARTIES
The Complainant is Down East Enterprise, Inc., Rockport, ME, USA ("Complainant"). The Respondent is Countywide Communications, Dover-Foxcroft, ME, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is "downeastmagazine.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.
R. Glen Ayers served as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on February 8, 2001; the Forum received a hard copy of the Complaint on February 12, 2001.
On February 12, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name "downeastmagazine.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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 16, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 8, 2001 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 Respondent’s registration as technical, administrative and billing contacts, and to postmaster@downeastmagazine.com by e-mail.
A timely response was received and determined to be complete on March 8, 2001.
On March 20, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed R. Glen Ayers as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts that since 1954 it has published "Down East, The Magazine of Maine" since 1946. The magazine allegedly has a circulation of about 100,000.
Complainant asserts that "downeastmagazine.com", the domain name registered by Respondent, "is identical to Down East Magazine the publication." (Emphasis in original.) Complainant asserts that the domain name is also "confusingly similar." Complainant asserts that the Respondent is making no use of the domain name, whether legitimate or otherwise.
Complainant states that, in 1998, after being contacted by Complainant, Respondent offered to sell the domain name for "$15,000.00 or $12,000.00 plus 12 full page advertisements in Down East Magazine..." Complainant also states that the domain name leads to a website at which there are links. On clicking the link entitled Down East Magazine, "the user is brought to a page where there is a link to a competitor’s website." (This is a link to the well known publication "Yankee Magazine.")
B. Respondent
Respondent has asserted that there is no confusing similarity. Respondent states, quite accurately, that "Down East, The Magazine of Maine" uses the full name in its literature. Numerous examples are provided. Respondent therefore asserts that there is no confusing similarity between "downeastmagazine.com" and "Down East, The Magazine of Maine." Respondent also asserts that there has been no confusion and that it had no interest in selling the name until contacted by Complainant and requested to sell the name. Respondent also asserts that "down east" is a common term used for many Maine businesses.
Respondent also denies various other allegations as asserted by Complainant.
FINDINGS
Complainant has established that it holds a common law mark, "Down East, The Magazine of Maine." Using this name for a magazine that has been published for over 46 years certainly has established the common law trademark. Complainant has also shown that the Respondent has no legal right or interest in that mark. Respondent’s price demands and linkage to a competitor are clear evidence of bad faith. This is true, notwithstanding Respondent’s statements that "Down East, The Magazine of Maine" and "Yankee" are not competitors. A magazine with a circulation of 100,000 or, as Respondent asserts, 50,000, certainly can compete with a magazine with a circulation well over a million.
The domain name, "downeastmagazine.com" is certainly confusingly similar to the common law mark held by Complainant, "Down East, The Magazine of Maine."
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
There is simply no evidence that Complainant has a trademark, common law or otherwise, in "Down East Magazine." However, it is clear that "downeastmagazine.com" is confusingly similar to "Down East, The Magazine of Maine," a phrase in which Complainant clearly has common law trademark rights See Anne of Green Gables Licensing Authority, Inc. v. Internetworks, AF 0109 (eResolution June 12, 2000). Even though the three words are each generic, in combination the words take on a specific meaning.
Rights or Legitimate Interests
Complainant has shown that Respondent has no rights or legitimate interest in the domain name. Respondent has offered no proof that it has rights or legitimate in the domain name. See Toronto Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001); American Online, Inc. v. Xianfeng Fu, D2000-1374 (WIPO Dec. 11, 2000).
Registration and Use in Bad Faith
Respondent’s conduct in providing a link from its website to that of a competitor of the Complainant is clear evidence of bad faith for such a link would direct legitimate traffic from Complainant’s business to the business of a competitor. Whether the Respondent stands to gain financially is not relevant. See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000).
Further, Respondent’s offers to sell, whether those offers were made by Respondent or solicited by Complainant, clearly indicate that Respondent is acting in bad faith by attempting to sell to Complainant a domain name which is confusingly similar to Complainant’s common law trademark. See Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000).
DECISION
The domain name downeastmagazine.com shall be transferred to Complainant.
R. Glen Ayers, Jr., Esq.
Arbitration
Dated: April 5, 2001
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URL: http://www.worldlii.org/int/other/GENDND/2001/706.html