DECISION

Gruner + Jahr Printing & Publishing Co. v. Azra Khan

Claim Number: FA0205000114436

PARTIES

Complainant is Gruner + Jahr Printing & Publishing Co., New York, NY, USA (“Complainant”) represented by Lisa Rosenburgh, of Salans Herzfeld Heilbronn Christy & Viener.  Respondent is Azra Khan, Rawalpindi, PAKISTAN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <familycirclemagazine.com>, registered with iHoldings.com, Inc.

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 Panelist in this proceeding.

James A. Carmody, Esq.,  as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 29, 2002; the Forum received a hard copy of the Complaint on May 31, 2002.

On June 4, 2002, iHoldings.com, Inc. confirmed by e-mail to the Forum that the domain name <familycirclemagazine.com> is registered with iHoldings.com, Inc. and that Respondent is the current registrant of the name.  iHoldings.com, Inc. has verified that Respondent is bound by the iHoldings.com, Inc. 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 June 4, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 24, 2002 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@familycirclemagazine.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 July 8, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., as 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 notice to Respondent.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

1. Respondent’s <familycirclemagazine.com> domain name is confusingly similar to Complainant’s FAMILY CIRCLE mark.

2. Respondent has no rights or legitimate interests in the <familycirclemagazine.com> domain name.

3. Respondent registered and used the <familycirclemagazine.com> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant owns eleven U.S. Patent and Trademark Office registrations for its FAMILY CIRCLE mark, including U.S. Reg. Nos. 617,878 and 676,725 registered October 22, 1968. Complainant also holds trademark registrations for the FAMILY CIRCLE mark in 28 foreign countries and the Commonwealth of Puerto Rico.

Complainant has used the FAMILY CIRCLE trademark as the title of an established magazine in the U.S. since at least as early as 1932. Complainant’s magazine is issued seventeen times a year with a circulation in the U.S. of over 5 million annually. 

Complainant has an active presence on the Internet. Complainant currently holds the registration for the following domain names: <familycircle.com>, <familycircle.net>, <familycircle.info>, <familycircle.biz>, <familycirclemagazine.info> and <familycirclemagazine.biz>.

Respondent registered the <familycirclemagazine.com> domain name on December 23, 2001. Respondent’s domain name resolves to a website at <magazines.com> where numerous magazines, including Complainant’s, are offered for sale. Complainant’s investigation has failed to yield any information concerning Respondent or its connection with the FAMILY CIRCLE moniker. Upon information and belief, Complainant believes the operator of the <magazines.com> website is Magazines.com, Inc.

DISCUSSION

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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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; and

(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

Complainant has established rights in the FAMILY CIRCLE mark through international registration and continuous use of the mark since 1932.

Respondent’s <familycirclemagazine.com> domain name is confusingly similar to Complainant’s FAMILY CIRCLE mark. Respondent’s domain name incorporates Complainant’s entire mark, and makes the inconsequential addition of the generic word “magazine.” The word “magazine” holds significant relevance in Complainant’s business, and is an industry-related word. See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business).

Additionally, the removal of a space between Complainant’s FAMILY CIRCLE mark fails to make Respondent’s domain name separate and distinct. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent failed to submit a Response in this proceeding. Therefore, the Panel may presume that Respondent has no rights or legitimate interests in respect of the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Furthermore, Respondent’s failure to respond allows all reasonable inferences made by Complainant to be deemed true. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

Respondent’s confusingly similar domain name resolves to <magazines.com>, a website that offers subscriptions to magazines, including Complainant’s. Respondent’s primary purpose in registering a domain name that incorporates Complainant’s entire mark was to benefit from the perceived affiliation its website has with Complainant’s mark. Respondent’s attempt to opportunistically trade on the goodwill associated with Complainant’s mark, while operating an unauthorized website offering Complainant’s goods, is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell Complainant’s goods without Complainant’s authority, as well as others’ goods is not bona fide use); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also Kosmea Pty Ltd. v. 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).

There is no evidence that suggests Respondent is commonly known by the <familycirclemagazine.com> domain name, or a corresponding “FAMILYCIRCLEMAGAZINE” mark. Complainant’s investigation has revealed evidence suggesting Respondent is incorporated under the name Magazines.com, Inc., or is affiliated with that entity. Also, due to the fact that Respondent registered such an established and well-known mark, a presumption is created that Respondent is not commonly referred to as Complainant’s FAMILY CIRCLE mark. Thus, Respondent fails to demonstrate its rights or legitimate interests in the <familycirclemagazine.com> domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); 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 and never applied for a license or permission from Complainant to use the trademarked name); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Complainant has continually used its FAMILY CIRCLE mark to promote its magazine since 1932. Due to the popularity of Complainant’s magazine, Complainant’s international registrations of its famous mark, Respondent’s conspicuous registration of a domain name that incorporates Complainant’s entire mark, and the fact that Respondent’s infringing domain name ultimately leads users to a website offering subscriptions to Complainant’s magazine, it can be inferred that Respondent had constructive notice of Complainant’s FAMILY CIRCLE mark. Respondent’s registration and use of the <familycirclemagazine.com> domain name, despite knowledge of its infringing behavior and Complainant’s preexisting rights, constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

Additionally, Respondent’s infringing domain name resolves to <magazines.com>, a website in competition with Complainant which offers identical goods and services. Respondent’s opportunistic motives represent bad faith because Respondent registered and used the domain name primarily for the purpose of disrupting the business of a competitor, as stated in Policy ¶ 4(b)(iii). See Mission Kwa Sizabantu v. Rost, D2000-0279 (WIPO June 7,2000) (defining “competitor” as "…one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also Gen. Media Comms., Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of Complainant registered and used a domain name confusingly similar to Complainant’s PENTHOUSE mark to host a pornographic web site).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby GRANTED.

Accordingly, it is Ordered that the <familycirclemagazine.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated: July 11, 2002

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