DECISION

Global Media Group, LTD v. Lorna Kang

Claim Number: FA0202000104556

PARTIES

Complainant is Global Media Group, LTD., New York, NY (“Complainant”) represented by Keith S. Orenstein, of Orenstein & Orenstein, LLC.  Respondent is Lorna Kang, Perak, MALAYSIA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <ouimagazine.com>, registered with DotRegistrar.com.

PANEL

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

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 7, 2002; the Forum received a hard copy of the Complaint on February 7, 2002.

On February 7, 2002, DotRegistrar.com confirmed by e-mail to the Forum that the domain name <ouimagazine.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 February 8, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 28, 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@ouimagazine.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 March 6, 2002 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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. The <ouimagazine.com> name is confusingly similar to Complainant’s OUI mark and identical to the title of Complainant’s publication “Oui Magazine.”

2. Respondent cannot demonstrate that it has used the disputed domain name in connection with a bona fide offering of goods nor can it demonstrate that it has used <ouimagazine.com> in connection with a legitimate noncommercial or fair use.  Further, Respondent has not been known by <ouimagazine.com>, therefore, Respondent cannot demonstrate its rights and legitimate interests in <ouimagazine.com>.

3.  Upon information and belief, Respondent registered the disputed domain name primarily for purposes of selling, renting, or otherwise transferring the disputed domain name to Complainant for consideration in excess of out-of-pocket costs.  Furthermore, the domain name was registered to prevent Respondent from reflecting its mark in the corresponding domain name and Complainant has engaged in a pattern of such conduct.  Finally, Respondent has used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.  Therefore, Respondent has registered and used <ouimagazine.com> in bad faith.

B. Respondent

No Response was Received.

FINDINGS

Complainant is the publisher of the magazine “Oui Magazine.”  Complainant owns two trademarks registered with the United States Patent and Trademark Office for the OUI mark; Registration Number 2,184,194, registered August 25, 1998; Registration Number 2,185,885, registered September 1, 1998.  Until recently, Complainant operated a website version of its magazine using the same domain name as the one at issue <ouimagazine.com>.

Complainant previously successfully challenged another party for the same disputed domain at issue in this case.  See Global Media Group, Ltd. v Damir Kruzicevic, FA 96558 (Nat. Arb. Forum March 7, 2001).  Through an oversight, Complainant failed to forward the appropriate transfer forms to Register.com and the registration for <ouimagazine.com> lapsed on November 14, 2001.  Respondent registered <ouimagazine.com> on November 17, 2001.  Currently, there is no website at the disputed domain name.

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 its rights in the OUI mark through federal registration and subsequent continuous use in connection with “Oui Magazine.”

Respondent has registered a domain name that is identical to Complainant’s publication and is confusingly similar to Complainant’s mark OUI.  Because Respondent’s domain name incorporates a generic term “magazine” along with Complainant’s OUI mark and the <ouimagazine.com> domain name is identical to Complainant’s business, the Panel finds that the domain name in dispute is confusingly similar to Complainant’s mark.  See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s mark “Marriott”); 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 has failed to file a Response in this matter.  Based on the Complaint and without a Response to the contrary, the Panel may presume that Respondent does not  have rights or legitimate interest in <ouimagazine.com>.  See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, 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).

There is no evidence that Respondent actually used the domain name in dispute other than an attempt to sell it to Complainant.  This activity is not bona fide offering of goods and services in connection with <ouimagazine.com> as outlined by Policy ¶ 4(c)(i).  See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “…merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”).

Respondent has not presented any evidence that it is commonly known as <ouimagazine.com>.  Therefore, Respondent has failed to satisfy Policy ¶ 4(c)(ii).  See 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 evidence put forward does not explain how Respondent used <ouimagazine.com>.  Currently, it appears that the disputed domain name is not in use, therefore, the Panel finds that this passive use is not a legitimate noncommercial activity or fair use of <ouimagazine.com>.  See Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where Respondent made no use of the infringing domain names); see also Chanel, Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or legitimate interests where “Respondent registered the domain name and did nothing with it”).  Furthermore, because the name is identical to the name of Complainant’s publication any use by Respondent would be an attempt to benefit from Complainant’s good will and therefore, would not be a legitimate or fair use as pursuant to Policy ¶ 4(c)(iii).  See Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not have a legitimate interest in using the domain names <caterpillarparts.com> and <caterpillarspares.com> to suggest a connection or relationship, which does not exist, with the Complainant's mark CATERPILLAR).

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

Registration and Use in Bad Faith

Respondent registered the disputed domain name three days after Complainant’s chance to retain <ouimagazine.com> lapsed.  According to Complainant, Respondent has offered to to sell the disputed domain name to Complainant for consideration in excess of out-of-pocket costs.  Such behavior is evidence that Respondent has registered <ouimagazine.com> with intent to sell it to Complainant which is an act in bad faith as outlined in Policy ¶ 4(b)(i).  See Cruzeiro Licenciamentos Ltda v. Sallen & Sallen Enter., D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale).

The Policy outlined in ¶ 4(b) is not exclusive and the Panel can consider other factors to determine whether Respondent has used the disputed domain name in bad faith.  See Educational Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy “[I]ndicates that its listing of bad faith factors is without limitation”).

Complainant has used its OUI mark in connection with the word “magazine” to promote its product.  Complainant has also used <ouimagazine.com> to reflect its magazine on the Internet.  Respondent has held the disputed domain name for nearly four months and there is no evidence presented that Respondent’s use was anything but passive.  Respondent’s passive use of a domain name that is obviously connected with Complainant can be considered a use in bad faith.  See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the Respondent had made no use of the domain name or website that connects with the domain name, and passive holding of a domain name permits an inference of registration and use in bad faith).  Furthermore, any actual use by Respondent would be an opportunistic attempt to benefit from the Internet user confusion created by the confusingly similar domain name.  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that Respondent could make any active use of the disputed domain names without creating a false impression of association with the 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 be hereby granted.

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

Sandra Franklin, Panelist

Dated: March 13, 2002

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/383.html