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Generic Top Level Domain Name (gTLD) Decisions |
Gruner + Jahr Printing & Publishing Co. v. Lorna Kang
Claim Number: FA0209000124757
PARTIES
Complainant is Gruner
+ Jahr Printing & Publishing Co., New York, NY, USA (“Complainant”)
represented by Lisa Rosenburgh, of Salans Hertzfeld Heilbronn Christy
& Viener. Respondent is
Lorna Kang, Perak, MALAYSIA (“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue
is <ymagazine.com>, registered with iHoldings.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.
Honorable Paul A. Dorf (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a
Complaint to the National Arbitration Forum (the “Forum”) electronically on September
9, 2002; the Forum received
a hard copy of the Complaint on September 9, 2002.
On September 11, 2002, iHoldings.com
confirmed by e-mail to the Forum that the domain name <ymagazine.com>
is registered with iHoldings.com and that Respondent is the current registrant
of the name. iHoldings.com has verified
that Respondent is bound by the iHoldings.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 September 11, 2002, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”),
setting a deadline of October 1, 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@ymagazine.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 October 23, 2002,
pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed Honorable
Paul A. Dorf (Ret.) 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 <ymagazine.com>
domain name is confusingly similar to Complainant’s YM family of marks.
Respondent has no rights
or legitimate interests in the <ymagazine.com> domain name.
Respondent registered and used the <ymagazine.com>
domain name in bad faith.
B. Respondent
Respondent failed to
submit a Response in this proceeding.
FINDINGS
Since at least as early
as 1985, Complainant has continually used the YM mark in the United
States. Complainant uses the YM mark in
connection with a magazine with a target audience of young teenagers. Complainant’s related magazine is commonly
referred to as YM and/or YM Magazine. Throughout the publishing industry and the public at large the YM
mark has come to be regarded as offering quality goods and services.
Complainant holds the
following United States Patent and Trademark Office (“USPTO”) registrations for
the YM related marks (collectively
the “YM family of marks”):
·
YM YOUNG
MISS MAGAZINE, Registration No. 1,373,764 for “magazine published from time to
time.”
·
YM YOUNG
& MODERN, Registration No. 1,876,591 for “general interest magazines
directed to young women.”
·
YM,
Registration No. 2,343,150 for “general interest magazine directed to young
women.”
·
YM.COM,
Registration No. 2,416,469 for “computer service, namely providing online
general interest magazines directed toward young
women.”
Complainant’s magazine
base has grown over the years, and currently YM Magazine is issued
eleven times a year with a total audience of 9.1 million. Due to Complainant’s large consuming
audience, the YM family of marks have become an extremely valuable business
asset for Complainant.
Respondent registered
the <ymagazine.com> domain name on May 15, 2002. Upon entering the domain name in the web
browser, a pop-up screen appears where if one clicks on “OK” they are diverted
to a gambling
website, <mangocasinos.com>. When the pop-up screen is exited by clicking on “CANCEL” the main
website fully appears. This website is
<ownbox.com/treasure/magazines/html>, which lists the sale of multiple
magazines, including Complainant’s YM Magazine, at a discounted
price. Complainant attempted twice to
contact Respondent and give notice of the infringing domain name, however, Respondent never replied to Complainant’s
correspondences.
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 Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has
rights; and
(2) 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 its rights and legitimate interests in the YM family of marks
through proof of registration with the USPTO
and continuous use of the marks
since 1985.
Respondent’s <ymagazine.com>
domain name contains Complainant’s YM trademark combined with the majority of
the word “magazine,” namely, “agazine.”
At first glance the domain name appears to simply be the common name of
Complainant’s magazine, YM Magazine.
However, Respondent’s domain name is just a common misspelling of
“magazine” combined with Complainant’s YM mark. Respondent is merely taking advantage of a typographical error
and therefore the domain name is not considered distinct. Moreover, the <ymagazine.com>
domain name is confusingly similar to Complainant’s YM mark and YM family of
marks. See Dow Jones &
Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that
the deliberate introduction of errors or changes, such as the addition of a
fourth
“w” or the omission of periods or other such generic typos do not change
the Respondent’s infringement on a core trademark held by
Complainant); see
also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov.
18, 2000) (finding that, by misspelling words and adding letters to words, a
Respondent does not
create a distinct mark but nevertheless renders the domain
name confusingly similar to Complainant’s marks); see also 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).
The Panel finds that
Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate
Interests
Respondent failed to
come forward and challenge Complainant’s contentions. Complainant has alleged a prima facie case, including its
allegation that Respondent has no rights or legitimate interests in the <ymagazine.com>
domain name. Respondent’s failure to
answer that contention allows the Panel to presume that Respondent has no such
rights or legitimate interests. 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); see
also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc.,
AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests
where no such right or interest was immediately
apparent to the Panel and
Respondent did not come forward to suggest any right or interest it may have
possessed).
Furthermore, allowing
the Complaint to go uncontested permits the Panel to accept all allegations as
true and draw all reasonable
inferences in favor of Complainant. 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 Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it
appropriate for the Panel to draw adverse inferences from Respondent’s failure
to reply
to the Complaint).
Respondent primarily
uses the <ymagazine.com> domain name to divert Internet users to a
website that sells subscriptions to numerous magazines, including Complainant’s
YM Magazine. Respondent is
apparently profiting from its diversionary use of the domain name. The evidence that allows this conclusion is
that a pop-up screen appears for a gambling website, presumably creating
revenue for Respondent,
before an Internet user can fully view the magazine
soliciting website. Using the domain
name as a means to sell Complainant’s products does not constitute rights and
legitimate interests under Policy ¶¶
4(c)(i) and (iii). See Chanel, Inc. v. Cologne Zone,
D2000-1809 (WIPO Feb. 22, 2001) (finding that use of Complainant’s mark to sell
Complainant’s perfume, as well as other brands of
perfume, is not bona fide
use); see also 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).
Respondent is not
authorized to use any of Complainant’s YM related marks, and has no connection
with Complainant. There is no evidence
on record that Respondent is commonly known by the <ymagazine.com>
domain name. In fact, the only
information of Respondent’s name suggests that Respondent is known as Lorna
Kang. Therefore, Respondent lacks
rights or legitimate interests in the 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).
Accordingly, the Panel
finds that Respondent has no rights or legitimate interests in the <ymagazine.com>
domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in
Bad Faith
Respondent’s use of the <ymagazine.com>
domain is in direct competition with Complainant’s business services of
offering subscriptions to its YM Magazine. Complainant points out that Respondent need not use the domain
name to operate its magazine subscription website. The use of the confusingly similar domain name, however, evidences
an opportunistic attempt to draw a portion of a relevant consumer
audience to
Respondent’s commercial website. Since
the domain name is essentially a typographical error of Complainant’s YM
Magazine, the Internet user that is diverted to Respondent’s website is
highly likely to be confused as to Complainant’s sponsorship or
affiliation. Therefore, Respondent’s
registration and use of the domain name constitutes bad faith pursuant to
Policy ¶ 4(b)(iv). See Fossil
Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that
Respondent acted in bad faith by registering the domain name
<fossilwatch.com>
and using it to sell various watch brands); see also
Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000)
(finding bad faith where Respondent attempted to attract customers to its
website, <efitnesswholesale.com>,
and created confusion by offering
similar products for sale as Complainant).
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 <ymagazine.com> be transferred from
Respondent to Complainant.
Honorable Paul A. Dorf
(Ret.), Panelist
Dated: November 4, 2002
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