DECISION

Hearst Communications, Inc. and the Hearst Corporation v. Raveclub Berlin

Claim Number: FA0205000113293

PARTIES

Complainant is Hearst Communications, Inc. and The Hearst Corporation, New York, NY (“Complainant”) represented by Nancy J. Mertzel, of Brown Raysman Millstein Felder & Steiner LLP.  Respondent is Raveclub Berlin, Cherry Hill, NJ (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <popularmachanics.com>, registered with Joker.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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 8, 2002; the Forum received a hard copy of the Complaint on May 9, 2002.

On May 10, 2002, Joker.com confirmed by e-mail to the Forum that the domain name <popularmachanics.com> is registered with Joker.com and that Respondent is the current registrant of the name.  Joker.com has verified that Respondent is bound by the Joker.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 May 10, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 30, 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@popularmachanics.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 June 21, 2002 Complainant filed an untimely additional submission.  The Panel declines to consider the additional submission.

On June 19, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (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 <popularmachanics.com> domain name is confusingly similar to Complainant's POPULAR MECHANICS 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’s POPULAR MECHANICS trademark is registered with the United States Patent and Trademark Office as Registration Numbers 2,072,889; 1,987,712; 1,934,363.  Complainant has used the mark since 1914 and currently owns an entire family of marks incorporating its POPULAR MECHANICS mark.  Complainant uses the mark in relation to its well known POPULAR MECHANICS magazine, buyers guides, online magazines, hand tools, and numerous other products.  The POPULAR MECHANICS magazine is one of the most widely circulated magazines in the United States.  Its average circulation in 2001 was 1.2 million copies.  Complainant holds the registration and uses <popularmechanics.com> in relation to the sale of its goods and services.

Respondent registered the disputed domain name on September 17, 2000.  Respondent is using <popularmachanics.com> in order to divert Internet traffic to <amateurvideos.nl> a website that offers advertisements for pornography websites, online gambling and prescription drugs.  Respondent RaveClub Berlin is also known as John Zuccarini, a notorious typosquatter.  Respondent has registered thousands of domain names that are misspellings of famous marks.

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 through longstanding use and registration that it has rights to the POPULAR MECHANICS mark.  Furthermore, Respondent’s <popularmachanics.com> domain name is confusingly similar to Respondent’s mark because it incorporates the entirety of Complainant’s mark and merely replaces the “e” in “mechanics” with an “a.”  The replacement of one letter in a well known mark does not create a distinct mark capable of overcoming a claim of confusing similarity.  See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); 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 it confusingly similar to Complainant’s marks).

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

Rights or Legitimate Interests

Respondent has failed to come forward with a Response and therefore it is presumed that Respondent has no rights or legitimate interests in the disputed domain name.  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).

Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all 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”).

Respondent is using the disputed domain name in order to divert Internet users to its website that features advertisements for pornography, and online gambling.  The use of a domain name confusingly similar to Complainant’s famous mark in order to divert Internet traffic to Respondent’s website is not considered to be a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).  See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); 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 that Respondent is commonly known as anything other than John Zuccarini and RaveClub Berlin.  Therefore Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); 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).

Respondent is using a misspelling of Complainant’s famous POPULAR MECHANICS mark in order to divert Internet traffic to its website.  This is not considered to be a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).  See Encyclopaedia Brittanica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of Complainant's mark); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).

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

Registration and Use in Bad Faith

Respondent has engaged in a pattern of registering domain names that are misspellings of registered trademarks.  Respondent’s registration and use of <popularmachanics.com> is evidence of bad faith registration and use under the Policy.  See Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding a bad faith pattern of conduct where Respondent registered many domain names unrelated to its business which infringe on famous marks and websites); see also Budget Rent a Car Corp. v. Cupcake City, D2000-1020 (WIPO Oct. 19, 2000) (finding a pattern of conduct in registering domain names that infringe upon others’ marks where the Respondent has registered over 1,300 domain names).

Respondent is using the disputed domain name in relation to a commercial website that advertises pornography and online gambling.  It can be inferred that Respondent is using the <popularmachanics.com> domain name in order to attract Internet users to its commercial website and therefore is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where the Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material); 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).

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 <popularmachanics.com> be transferred from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: June 25, 2002

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