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Generic Top Level Domain Name (gTLD) Decisions |
CMP Media LLC v. Auntminnie.com
Claim Number: FA0112000103045
PARTIES
The
Complainant is CMP Media LLC,
Manhasset, NY (“Complainant”) represented by Sandra Grayson. The
Respondent is Auntminnie.com,
Tucson, AZ (“Respondent”).
The
domain name at issue is <diagnosticimaging.biz>,
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.
James
Alan Crary as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual
Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel
and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on December 14, 2001; the
Forum received a hard copy of the Complaint
on December 14, 2001.
On
January 8, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of January 28,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance
with paragraph 2(a) of the Rules for
the Start-up Trademark Opposition Policy (the “STOP Rules”).
A
timely Response was received and determined to be complete on January 25, 2002.
Complainant’s
additional written statement was received January 30, 2002 in a timely manner
according to the Forum’s Supplemental
Rule 7.
On February 8, 2002, pursuant to STOP Rule 6(b), the
Forum appointed James Alan Crary
as the single Panelist.
The
Complainant requests that the domain name be transferred from the Respondent to
the Complainant.
A.
Complainant
The
disputed domain name was identical to a trademark which Complainant had used
since 1979. The trademark was registered with the
U. S. Patent and Trademark
Office in 1981. For more than 20 years, Complainant had been using DIAGNOSTIC
IMAGING as the title of
an internationally published magazine which was also
available on-line.
Complainant
maintained on information and belief that Respondent registered <diagnosticimaging.biz>
to create confusion in the market place and to trade off Complainant’s substantial
use of the mark over two decades and not because
Respondent made actual use of
diagnostic imaging mark
To
Complainant’s knowledge, Respondent had no right and/or interest in the title
DIAGNOSTIC IMAGING. Complainant believed Respondents
had filed for <diagnosticimaging.biz>
to create confusion in the marketplace and to trade off Complainant’s
substantial use. Respondent had not made any actual use of
the domain name.
Appended
to the Complaint was a copy of the certificate of registration issued by the
United States Patent and Trademark Office. Other
items documented how the
Complainant acquired the registration from the original trademark holder. There
was a copy of a page from
Complainant’s web site,
<diagnosticimaging.com>. There was also an on-line trademark search.
B.
Respondent
The
format of the Response was a business letter.
Respondent
asserted that it was a leading on-line resource that provided news, educational
content, and radiology information to the
medical imaging community. Fifty
thousand (50,000) members were said to belong, most of these were in the
medical/diagnostic imaging
profession in one way or another. Respondent’s
interest in the words “diagnostic imaging” was in the words as they relate to
and
are used by members of Respondents web site.
Despite
the fact that Complainant holds a trademark for the words “diagnostic imaging”,
the words were descriptive and generic as
used in the imaging world. A search
of “diagnostic imaging” on Yahoo yielded 72 items, only two of those were
related specifically
to the Complainant.
Respondent
began using the sponsor-match function of Yahoo in November 2000. It picked 24
terms related to the field of radiology
including “diagnostic imaging”. This
enabled those individuals who were searching for medical imaging information to
come to Respondent’s
web site so that they can find the information they
sought. The terms were of interest to Respondent because it was the
Respondent’s
business to provide a comprehensive on-line resource for radiology
information, education, news, and commerce for the medical imaging
community.
Respondent asserted that when the individuals type the words “diagnostic
imaging” in order to search the Internet they
are not necessarily doing so to
find the Complainant.
Respondent
maintained it had no interest in owning the trademark but in the descriptive
and generic use of the term “diagnostic imaging”.
While it was true that the
domain name was the same as the Complainant’s mark, it was inaccurate to
contend that at any time the
term was used descriptively or in a generic sense
that people are confused and assume they are referring to the Complainant. The
term “diagnostic imaging” was integral to the field which was the business of
Respondent’s members.
In
summary, Respondent maintained Complainant lacked any enforceable rights in the
term “diagnostic imaging” because the terms were
descriptive and generic.
Respondent had a legitimate interest in the domain name because the term was
used to lead to <auntminnie.com>,
it’s primary website. Finally, it was
stated that “warehousing descriptive domain names is not evidence of bad
faith”.
C.
Additional Submissions
Complainant
noted that the Response was submitted in the form of a letter without the
certification required by STOP Rule 5 (c)(vi)
which requires that Respondent
certify to the best of the Respondent’s knowledge that the Response is complete
and accurate, not
presented for any improper purpose and that the assertions in
the Response were warranted under the STOP Policy and Rules. The Response
was
therefore wholly inadequate and should be disregarded. Judgment should be
entered on Complainant’s behalf by way of default.
Complainant
and Respondent were competitors in the same general field of use since both
provided news, educational content and radiology
information to the medical
imaging community. Complainant and Respondent had the same consumers and thus
Complainant and Respondent
were in direct competition. Any use of <diagnosticimaging.biz>
in connection with Respondent’s business would create a likelihood of confusion
and infringe on the Complainant’s trademark rights.
The
fact that Respondent intended to warehouse the disputed domain name confirmed
that Respondent had no legitimate interest in the
domain name and that it had
registered the domain name in bad faith.
Respondent
was attempting to divert customers away from Complainant’s web site to its
competing web site by using the sponsor-match
function with respect to the
words “diagnostic imaging”. This was evidence of infringement on Complainant’s
mark but had no bearing
on the determination of whether the Respondent had
rights or legitimate interests in the domain name or that there was
registration
of the domain name in bad faith.
Complainant
had spent considerable amount of time and money advertising and promoting
DIAGNOSTIC IMAGING publications. In the last
4 years Complainant had spent an
average of $174,790 on marketing expenses and $376,069 per year on circulation
expenses.
Complainant
had a valid and enforceable trademark in the mark “DIAGNOSTIC IMAGING” because
of it’s extensive use of the mark for more
than 20 years in connection with
it’s magazine. In addition to it’s United States registration for the mark
there were like registrations
for the Benelux Countries (2/84) Canada (1/81)
Denmark (12/84) and Sweden (5/86).
In
1999, a survey revealed that more people in the radiology and diagnostic
radiology profession read its magazine on a regular basis
than any of its
competitors. Advertising revenues and advertising pages contained in the
magazine were twice that of its closest
competitor. For the year 2001 it’s
DIAGNOSTIC IMAGING magazine earned over $4 million in advertising revenues. Its
nearest competitor
MEDICAL IMAGING earned $2 million. This made DIAGNOSTIC
IMAGING magazine the most regularly read and most successful magazine in
its
field.
A
.biz domain name could only be used for “bona fide business or commercial use”.
Complainant’s prima face showing that Respondent
lacked a legitimate interest
shifted the burden of production to Respondent to show use or preparation to
use the name in connection
with a bona fide business or commercial use.
Respondent had failed to satisfy its burden.
As
Complainant’s direct competitor Respondent must have been aware of
Complainant’s DIAGNOSTIC IMAGING publications. A trademark search
would have
revealed the trademark to Respondent since both Complainant and Respondent are
from the United States and since the Complainant’s
trademark registration was
issued by the United States Patent and Trademark Office it was fair to apply
the principle of constructive
notice of Complainant trademark rights.
The
domain names: <diagnosticimaging.info>, <diagnostic-imaging.info>,
<diaonline.info>, and <dimag.info>
had all been registered to the
Respondent in this case. All of the domain names are used to resolve to
Respondent’s web site at <auntminnie.com>.
This conduct constitutes
infringement on Complainant’s trademark rights.
The
Complainant owns domain names for <diagnosticimaging.com>,
<dionline.com>, and <dimag.com>. The primary web
site is
<diagnosticimaging.com> with the other domain names resolving to the main
web site. Complainant maintained that this
was compelling evidence of Respondent’s
attempts to divert consumers away from the Complainant’s web site. This was
particularly
the case with its registration of <dimag.info> since it
could only reasonably stand for DIAGNOSTIC IMAGING magazine.
1. The Complainant is the owner of the
trademark DIAGNOSTIC IMAGING, United States Patent and Trademark Office 1164236
issued August
4, 1981. It also possesses trademark registrations abroad
including Benelux registration number 395,583 (February 1984), Canada
registration
number 253,654 (January 1981), Denmark registration number 4146
(December 1984), and Sweden registration number 201,074 (May 1986).
2. The evidence submitted supports a finding
that Complainant’s trademark has acquired distinctiveness since first used in 1979.
Complainant
made substantially exclusive and continuous use of the mark for
more than 20 years and has spent considerable time, money, and advertising
to
promote the DIAGNOSTIC IMAGING mark in print and on-line media.
3. The Complainant’s magazine over its
approximate twenty-one year life has become the leading publication in the
field of medical imaging
in terms of number of subscriptions (31,000) and
advertising revenue, twice that of it’s nearest rival.
4. Complainant conducts its on-line magazine
efforts at its <diagnosticimaging.com> web site.
5. The Response to the Complainant did not
comply with mandatory requirements of STOP Policy Rule 5(a)(vi) since the
Response omits the
mandatory certification forth in the Rule. Response was
merely a letter.
6. Respondent has no rights or legitimate
interests in respect to the domain name <diagnosticimaging.biz>.
This domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order
that a domain name should be
transferred:
(1)
the domain name is identical 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 or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these
STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service
mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which
a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (TLD) in the
disputed domain name is not a factor for purposes of determining
that a
disputed domain name is not identical to the mark in which the Complainant
asserts rights.
Regarding
finding No. 3 above, Complainant sought that Respondent be treated as in
default because the required certification was
omitted from the Response. The
certification required of Respondents under STOP Rule 5 (c)(vi) is a mandatory
requirement, “The Response
shall … conclude with the following statement
followed by the signature of Respondent …”. Respondent certifies that the
information contained
in this Response … “is complete and accurate” … etc. A
similar certification is required of the Complainant, STOP Rule 3(c)(xiii).
But
the STOP rules do not direct the Panel as to what the sanction should be for
non-compliance by a Party.
The
Panel favored letting the Response be considered. Conceivably a person with no
legal training, unfamiliar with the STOP Policy
and Rules and otherwise
proceeding in good-faith might omit the certification called for by the Rule.
Default in such a situation
would be too drastic a remedy, since the Response
could otherwise be meritorious. However, since the Rule contains the mandatory
language “shall” certify that the Response is “accurate”, “complete”, “not
presented for an improper purpose”, the Panel concluded
that the appropriate
sanction called for by the Rules would be to give the Response little weight as
evidence. The Panel has discretion
to do so under STOP Rule 10(d).
The
certifications set forth by the STOP Policy and the Rules are the very basis on
which a dispute resolution process such as this
depends for its integrity. The
Panel was also guided by the principle that in administrative proceedings the
law favors determination
of the issues on the merits, rather than on technical
grounds, where possible.
The
Panel concluded that the evidence established that Complainant is the owner of valid
and subsisting trademark rights in the United
States, Canada, Benelux, Denmark,
and Sweden. This was amply documented in the exhibits submitted. The
Complainant has been engaged
in the publishing business since 1979 and is
publisher of DIAGNOSTIC IMAGING magazine. In more recent times Complainant has
developed
an on-line publishing presence.
The
DIAGNOSTIC IMAGING magazine has both the largest circulation and advertising
revenue both much greater in comparison to it’s nearest
competitor. Complainant
established that by it’s commercial activity in publishing over 20 years, it’s
continuous and exclusive use
of the mark and by the time and money spent to
advertise and promote the trademark that the mark has become distinctive.
Respondent’s
assertion that the trademark was purely generic and descriptive
was not supported by the evidence.
It
was reasonable for this Panel to conclude that the DIAGNOSTIC IMAGING mark has
become famous with in the narrow field of radiological
imaging publications.
The Respondent admits that its business is in direct competition by asserting
that it is a leading on-line
resource that provides news, educational content
and radiology information to the medical imaging community. Given Respondent’s
efforts
as competitor of Complainant, it was reasonable for this Panel to
conclude that Respondent registered and used the disputed domain
name with at
least constructive knowledge of the existence of Complainant’s trademark.
The Respondent offered no evidence nor
did it assert that it was the owner or beneficiary of a trade or service mark
that is identical
to the domain name Policy 4(c)(i). Respondent openly admits
Complainant holds a trademark for DIAGNOSTIC IMAGING.
The Respondent did not assert nor did the
evidence indicate use or demonstratable preparations for use of the disputed
domain name
in connection with a bona fide offering of goods and services prior
to notice of the dispute. Policy 4(c)(ii). Respondent admitted
it makes no use
nor has it plans to use the domain name, choosing to warehouse the domain
instead.
Finally, the Response does not assert nor
did the evidence in any way support a finding that Respondent had ever been
commonly known
by the domain name. Policy 4(c)(iii). This issue was not
addressed in Respondent’s letter.
It was therefore concluded by the Panel
that the Respondent had no rights or legitimate interests in the disputed
domain name.
The Respondent since November 2000 has
used the sponsor-match function to link the words “diagnostic imaging” and 23
other terms or
abbreviations common in radiology so that consumers searching
the Internet would be led to Respondent’s web site <auntminnie.com>.
Respondent makes no use of the disputed domain name choosing instead to
“warehouse” the name, asserting, “warehousing descriptive
domain names is not
evidence of bad faith”. The cases the Panel is aware of are to the contrary.
See Georgia Golf Corp. v. The Ross Group, D2000-0218 (WIPO, June 14,
2000).
By on the one hand warehousing the domain
name, which is also Complainant’s trademark, then on the other hand using the
sponsor-match
feature through Yahoo to link the words diagnostic imaging to the
web site, Respondent appropriated not only the words “diagnostic
imaging” but
Complainant’s mark as well. This was for the sole purpose of leading the public
seeking information to Respondent’s
competing web site. In the Panel’s opinion
these circumstances constituted bad faith use by Respondent.
Before leaving the subject of domain name
“warehousing” such conduct has been found to be evidence of bad faith. The
Panel finds that
warehousing <diagnosticimaging.biz> that is not
using the domain name to link net surfers to other locations is bad faith use
under the Policy in this case. See World Wrestling Federation Entertainment,
Inc. v. Ringside Collectibles, D2000-1306 (WIPO, Jan. 24, 2001); Telstra
Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO, Feb. 18, 2000); CMG
Worldwide, Inc. v. Naughtya Page, FA 95641 (Nat. Arb. Forum Nov. 8, 2000).
Respondent and Complainant are direct
competitors in the relatively narrow field of medical imaging publications.
Given the Complainant’s
stature in that field over more than two decades in
which the field has developed and the wide audience it’s publication enjoyed
within that community the Panel concluded that the Respondent had constructive
notice if not actual notice of the Complainant’s trademark
rights. See Kate Spade, LLC v. Darmstadter Designs, D2001-1384 (WIPO Jan. 3, 2002). STOP Policy
(2.) states “It is your (Respondent’s) responsibility to determine whether your
domain
name registration infringes or violates someone else’s rights”.
Despite
knowing of Complainant’s trademark rights, Respondent registered the domain
name for the sole purpose of “warehousing” it.
The Panel concluded that the
Respondent registered the domain name in order to prevent the Complainant from
using the domain name
Policy 4(b)(ii) and to disrupt the business of the
Complainant, it’s direct competitor Policy 4(b)(iii).
The Panel concluded there is
evidence of bad faith not specifically enumerated under Policy 4(b) subsections
(i) to (iv). Respondent
registered the domain name
<diagnosticimaging.info>, <diagnostic-imaging.info>, <dionline.info>,
and <dimag.info>.
These registrations in themselves were evidence of a
pattern of bad faith registrations aimed at diverting Complainants customers
and the public to Respondents competing web site, in violation of Complainant’s
trademark rights. All of the domain names are used
to resolve to Respondents
<auntminnie.com> web site which is in direct competition with
Complainant’s own on-line efforts.
It was the
Panel’s conclusion that the evidence supported findings in favor of the
Complainant on the required elements under the
STOP Policy.
DECISION
The Panel directs that the domain name
<diagnosticimaging.biz> be transferred to the Complainant.
No subsequent challenges under the STOP Policy against this domain name shall
be permitted.
James Alan Crary, Panelist
Dated: February 27, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/308.html