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Generic Top Level Domain Name (gTLD) Decisions |
eGalaxy Multimedia Inc. v. Complete
Digital Marketing
Claim Number: FA0203000105975
PARTIES
Complainant
is eGalaxy Multimedia Inc., Toronto,
Canada (“Complainant”) represented by David
Warga, of Warga Law Firm. Respondent is Complete Digital Marketing, Paddington, Australia (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <nakednewsworld.com>
and <nakededition.com>,
registered with Network Solutions, Inc. and
Melbourne IT, respectively.
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 March 21, 2002; the Forum received
a hard copy of the
Complaint on March 21, 2002.
On
March 25, 2002 and March 22, 2002, Network Solutions, Inc. and Melbourne IT
confirmed by e-mail to the Forum that the domain names
<nakednewsworld.com> and <nakededition.com>
are registered with Network Solutions, Inc. and Melbourne IT, respectively, and
that Respondent is the current registrant of the
names. Network Solutions, Inc. and Melbourne IT
have verified that Respondent is bound by the Network Solutions, Inc. and
Melbourne IT registration
agreements 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
March 25, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of April 15,
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@nakednewsworld.com and postmaster@nakededition.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
April 22, 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 names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
disputed domain names <nakednewsworld.com>
and <nakededition.com> are
confusingly similar to NAKED NEWS and NUDE NEWS, marks in which Complainant
holds rights. Both domain names include
the word “naked,” which is the dominant element in the NAKED NEWS mark. The words “world” and “edition” do not
distinguish the domain names from the mark.
The domain names strongly resemble Complainant’s marks in appearance,
sound, and idea suggested.
Respondent
has no rights or legitimate interests in respect of the disputed domain
names. Respondent is not a licensee of
Complainant, does not hold registered trademark rights in the domain names, and
is not commonly known
by NAKED EDITION or NAKED NEWS WORLD, or the respective
domain names. Respondent’s use of the
confusingly similar domain names to offer services in competition with
Complainant is not a bona fide offering
of goods or services
Respondent
registered and used the disputed domain names in bad faith by attempting to
prevent Complainant from registering domain
names reflecting its marks, by
disrupting Complainant’s business, and by attracting for commercial gain,
Internet users to Respondent’s
website through likelihood of confusion as to
source or affiliation of the site.
Additionally, Respondent was aware or should have been aware of
Complainant’s rights in its marks, and thus demonstrated bad faith
by
intentionally registering infringing domain names.
B.
Respondent
Respondent
did not file a Response in this proceeding.
FINDINGS
Complainant holds trademarks in NAKED
NEWS and NUDE NEWS, registered in Australia on November 19, 2001 as
Registration Nos. 855,415
and 855,416, respectively. Complainant uses the marks in association with its daily Internet
newscast, its internationally distributed television program “Naked
News TV!”
and its branded consumer products such as clothing, gift items and pre-recorded
media. Complainant also holds registration
of the <nakednews.com> domain name.
Respondent registered <nakednewsworld.com> on November
7, 2001, and <nakededition.com>
on December 18, 2001, and has used the domain names to provide naked news
services similar to or in competition with Complainant.
The webpage hosted at <nakededition.com>
includes in its hidden “meta-tags” the words “naked” and “news,” which
Complainant asserts will cause confusion among Internet users
searching for
Complainant’s website by keyword. The
domain names are also being used to redirect users to commercial pornographic
websites.
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 trademark
rights in NAKED NEWS through registration with the Australian trademark
registrar and continuous
subsequent use.
The <nakednewsworld.com>
domain name is confusingly similar to Complainant’s mark as it incorporates the
mark in its entirety and merely adds the term “world”
and “.com,” a generic top
level domain (“gTLD”). See Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word…nor the suffix ‘.com’ detract
from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY”); see also Net2phone Inc, v.
Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the
Respondent’s registration of the domain name <net2phone-europe.com> is
confusingly similar to complainant’s mark because "the combination of a geographic term with the mark does not prevent
a domain name from being found confusingly similar."); see also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000)
(finding that the domain name, <walmartcanada.com> is confusingly similar
to Complainant’s famous
mark).
As to <nakednewsworld.com>, the Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant has not, however, established
that it has enforceable rights with respect to <nakededition.com>.
Although Complainant asserts that the word “naked” is the dominant part
of its NAKED NEWS mark, this, even if true, does not give
Complainant standing
to appropriate every domain name that includes the word “naked.” See Trump v. olegevtushenko a/k/a Oleg
Evtushenko, FA 101509 (Nat. Arb. Forum Dec. 11, 2001) (finding that
<porntrumps.com> does not infringe on Complainant’s famous mark TRUMP,
since Complainant does not have the exclusive right to use every form of the
word “trump”); see also Capt’n
Snooze Mgmt. v. Domains 4 Sale, D2000-0488 (WIPO July 10, 2000) (stating that
while “Snooze is an integral part of Complainant’s trademark registrations . .
. this
does not entitle the Complainant to protection for that word alone”).
Further, Complainant does not assert that
it holds any rights in the word “edition,” and outside the context of
Complainant’s NAKED
NEWS mark, the word “naked” is merely a generic term. See Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA
96457 (Nat. Arb. Forum Mar. 7, 2001) (finding that “seminar” and “success” are
generic terms to which Complainant cannot maintain
exclusive rights); see
also SOCCERPLEX, INC. v. NBA Inc., FA 94361 (Nat. Arb. Forum May 25, 2000) (finding that the Complainant
failed to show that it should be granted exclusive use of
the domain name
<soccerzone.com>, as it contains two generic terms and is not exclusively
associated with its business).
Because Complainant
has failed to demonstrate enforceable rights in the <nakededition.com> domain name, the Panel finds that Policy
¶ 4(a)(i) has not been satisfied as to this name.
Complainant has no enforceable rights in
the <nakededition.com> domain
name pursuant to Policy ¶ 4(a)(i); because claimants under the ICANN Policy are
required to fulfill all three elements under
Policy ¶ 4 in order to obtain
relief, the “rights and legitimate interests” and “bad faith” analyses will
only be applied to the
<nakednewsworld.com>
domain name. See CyberImprints.com,
Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding it
unnecessary to determine whether Respondent has rights or interests in a domain
name or whether it registered and used the name in bad faith when the
Complainant fails to establish rights under Policy ¶ 4(a)(i)).
Complainant has demonstrated its rights
to and interests in the NAKED NEWS mark.
Because Respondent has not submitted a Response in this matter, the
Panel may presume it has no such rights or interests in <nakednewsworld.com>.
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).
Respondent’s use of <nakednewsworld.com>, a confusingly similar domain name, to
provide services in competition with Complainant demonstrates an attempt to
confuse Internet
users that were seeking Complainant’s website and to redirect
them to Respondent’s site. This is
neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i),
nor a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct.
2, 2000) (finding no bona fide use where Respondent used the domain name to
divert Internet users
to its competing website); see also Big Dog Holdings, Inc. v. Day, FA 93554
(Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was
diverting consumers to its own website by
using Complainant’s trademarks).
There is no evidence to suggest that
Respondent is commonly known by <nakednewsworld.com> pursuant to
Policy ¶ 4(c)(ii); Respondent is only known to this Panel as Complete Digital
Marketing. See 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 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).
The Panel finds that Respondent has no
rights or legitimate interests in respect of <nakednewsworld.com>, and that Policy ¶ 4(a)(ii) has thus
been satisfied as to that name.
Registration and Use in Bad Faith
Respondent registered and is using the
confusingly similar <nakednewsworld.com>
domain name in order to trade on Complainant’s reputation and goodwill by
attracting Internet users that were seeking Complainant’s
website to the
website of Respondent. Because Internet
users will likely be confused as to the source or affiliation of Respondent’s
website, this behavior demonstrates
bad faith registration and use under Policy
¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent
registered and used an infringing domain name to attract
users to a website
sponsored by Respondent); see also Drs.
Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where the Respondent directed Internet users seeking the
Complainant’s
site to its own website for commercial gain).
Further, because Complainant and
Respondent offer competing services, Respondent’s use of the <nakednewsworld.com> domain name
to ensnare Complainant’s customers and disrupt Complainant’s business
demonstrates bad faith under Policy ¶ 4(b)(iii). See General Media
Communications, 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); see also S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting
Internet users to a website that
competes with Complainant’s business).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied as to <nakednewsworld.com>.
DECISION
Having failed to establish a necessary
element under the ICANN Policy, the Panel concludes that the requested relief
as to <nakededition.com> should be denied.
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
as to <nakednewsworld.com>
should be hereby granted.
Accordingly, it is Ordered that the <nakednewsworld.com> domain name
be transferred from Respondent to Complainant, and that the Complaint be
dismissed as to <nakededition.com>.
Sandra Franklin, Panelist
Dated: April 30, 2002
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