Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Findlay Publishing Company, Findlay, OH, USA ("Complainant") represented by Christopher D. Imlay, of Booth, Freret, Imlay & Tepper, P.C. The Respondent is K.C. Allen Creative Associates, Findlay, OH, USA ("Respondent") represented by C. Philip Baither, of Robinson, Curphey & O'Connell.

The domain name at issue is "findlaypublishing.com" registered with Network Solutions, Inc..

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

John J. Upchurch as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on April 6, 2001; the Forum received a hard copy of the Complaint on April 10, 2001.

On April 9, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name "findlaypublishing.com" is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 April 10, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 30, 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@findlaypublishing.com by e-mail.

A timely response was received and determined to be complete on April 30, 2001.

A timely additional submission was received from Complainant May 7, 2001.

On May 4, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

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

It is the finding of the Panel that the Complainant has met the burden of proof and that the domain name registration should be transferred from the Respondent to the Complainant.

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.

Complainant, The Findlay Publishing Company, uses its common law mark (THE FINDLAY PUBLISHING COMPANY) in connection with radio broadcast media, newspaper publishing, publishing of wedding and anniversary announcements, radio advertisement production, and certain Internet web design services. In addition, Complainant’s FINDLAY PUBLISHING COMPANY INTERNET SERVICES mark is registered with the State of Ohio and provides various web design services. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that ICANN Policy does not require that the Complainant have rights in a registered trademark and that it is sufficient to show common law rights); see also Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that complainant has a bona fide basis for making the complaint in the first place).

Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not licensed or otherwise authorized to use Complainant’s mark. See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding that Respondent is not commonly known by the mark contained in the domain name where Complainant has not permitted Respondent to use the NOKIA mark and no other facts or elements can justify prior rights or a legitimate connection to the names "Nokia" and/or "wwwNokia"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark or never applied for a license or permission from Complainant to use the trademarked name).

Moreover, Respondent is using the disputed domain name to "funnel" Complainant’s customers to its web site. See Kosmea Pty Ltd. v. Carmel Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights and legitimate interests where the Respondent diverted Complainant’s customers to his web sites).

Since Respondent was a resident of Findlay, it knew or should have known of Complainant’s well-known mark prior to registering the disputed domain name. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the Respondent demonstrated bad faith where the Respondent was aware of the Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names).

Further, Respondent registered the disputed domain name to intentionally attract Internet users to its competing web site via a likelihood of confusion with Complainant’s famous mark. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (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 web site that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s marks).

Finally, Respondent’s disclaimer does nothing to dispel initial interest confusion; and therefore, does nothing to negate bad faith. Accordingly, Respondent’s use of a disclaimer on its web site is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights." See Madonna v. Dan Parisi, D2000-0847 (WIPO, Oct. 12, 2000) (citing Brookfield Comm., Inc. v. West Coast Entertainment Corp., [1999] USCA9 225; 174 F.3d 1036 (9^th Cir. 1999).