DECISION

PRIMEDIA Specialty Group, Inc. v. Lorna Kang

Claim Number: FA0208000118185

PARTIES

Complainant is PRIMEDIA Specialty Group, Inc., New York, NY, USA (“Complainant”).  Respondent is Lorna Kang, Telok Intan Perka, MALAYSIA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dirtridermagazine.com>, registered with Dotregistrar.com.

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.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 13, 2002; the Forum received a hard copy of the Complaint on August 14, 2002.

On August 14, 2002, Dotregistrar.com confirmed by e-mail to the Forum that the domain name <dirtridermagazine.com> is registered with Dotregistrar.com and that Respondent is the current registrant of the name.  Dotregistrar.com has verified that Respondent is bound by the Dotregistrar.com 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 August 14, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 3, 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@dirtridermagazine.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 September 20, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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

The <dirtridermagazine.com> domain name is confusingly similar to Complainant's DIRT RIDER mark.

Respondent has no rights or legitimate interests in the disputed domain name.

Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Complainant uses the DIRT RIDER mark in relation to periodicals related to off-road bicycle and motorsports activities.  Complainant submitted a trademark application on October 31, 2001 (App. No. 76/331845) with the United States Patent and Trademark Office.  Complainant’s magazine currently has an active subscription of 146,000, with additional newsstand sales of over 43,000.  It is currently one of the world’s largest off-road magazines and it has become one of the most recognized brands in the motocross and off-road bike market.  Complainant operates a companion website to the DIRT RIDER publication at <dirtrider.com>.  The website is used to promote Complainant’s products and services.  Complainant’s website receives several thousand visitors a month.

Respondent registered the <dirtridermagazine.com> domain name in November of 2001.  Respondent does not have permission to use the DIRT RIDER mark.  Respondent’s website diverts Internet users to a pornographic website called “Hollywood Whores,” which purports to provide nude and pornographic pictures of celebrities.  When a user attempts to close out of Respondent’s website a series of additional pornographic web page pop-ups and browsers are launched, forcing the Internet user to close as many as five additional web pages.

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 that it has common law rights in the DIRT RIDER mark through its continuous use of the mark in relation to the Dirt Rider publication.  The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the Complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the policy.  McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).

Respondent’s <dirtridermagazine.com> domain name is confusingly similar to Complainant’s mark because it incorporates Complainant’s entire DIRT RIDER mark and merely adds the descriptive term “magazine” to the end.  The addition of a term that describes Complainant to the end of Complainant’s mark does not create a distinct mark capable of overcoming a claim of confusing similarity.  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark).

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

Rights or Legitimate Interests

Respondent has failed to come forward with a Response.  Therefore, the Panel is permitted to make reasonable inferences in favor of Complainant and to accept Complainant’s allegations as 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”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Furthermore, based on Respondent’s failure to respond, it is presumed that Respondent lacks rights and legitimate interests in the disputed domain name.  See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interest in the domain name because Respondent never submitted a Response nor provided the Panel with evidence to suggest otherwise).

Respondent is using the disputed domain name for a pornographic website.  Internet users looking for information about Complainant are led instead to a website entitled “Hollywood Whores,” then when they attempt to exit users are bombarded with even more pornographic pop-ups.  This type of use by Respondent is not considered to be in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Nat’l Football League Prop., Inc. v. One Sex Entm’t Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that Respondent had no rights or legitimate interests in the domain names <chargergirls.com> and <chargergirls.net> where Respondent linked these domain names to its pornographic website); see also MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish Complainant’s mark).

Respondent has not come forward with any evidence to suggest that it is commonly known as <dirtridermagazine.com> or DIRT RIDER MAGAZINE.  Therefore, the Panel has no proof that Respondent is commonly known by anything other than “Lorna King.”  As a result, Respondent has failed to establish that it has rights or legitimate interests in the disputed 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 Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

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

Registration and Use in Bad Faith

It can be inferred that Respondent is using Complainant’s mark in order to mislead Internet users and attract people interested in Complainant to Respondent’s pornographic website for Respondent’s commercial gain.  This type of behavior is evidence of bad faith use pursuant to Policy ¶ 4(b)(iv).  See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites).

Furthermore, Respondent’s use of a domain name confusingly similar to Complainant’s mark for a pornographic website infringes on Complainant’s goodwill and is therefore evidence of Respondent’s bad faith use and registration.  See Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith); see also CCA Indus., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (finding that “this association with a pornographic web site can itself constitute bad faith”); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well-known mark to provide a link to a pornographic site is evidence of bad faith registration and use).

It can be inferred that Respondent had knowledge of Complainant’s rights in the DIRT RIDER mark when it registered the disputed domain name, because Respondent registered the domain name in order to attract Internet users to its pornographic website.  Registration of a domain name infringing on Complainant’s mark, despite knowledge of Complainant’s rights in that mark, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See 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 Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding registration in bad faith based where there is no reasonable possibility, and no evidence from which to infer that the domain name was selected at random since it entirely incorporated Complainant’s name).

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 shall be hereby granted.

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

Tyrus R. Atkinson, Jr. , Panelist

Dated: October 4, 2002.

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