|
|
Home
| Databases
| WorldLII
| Search
| Feedback
Generic Top Level Domain Name (gTLD) Decisions |
PRIMEDIA Inc. v.
Yong Li
Claim Number:
FA0212000135613
PARTIES
Complainant is
PRIMEDIA Inc., New York, NY, USA (“Complainant”). Respondent is Yong Li,
Beijing, CHINA (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <nymagazine.com>, registered with iHoldings.com, Inc. d/b/a 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.
Complainant submitted a Complaint to the National
Arbitration Forum (the “Forum”) electronically on December 3, 2002; the Forum
received
a hard copy of the Complaint on December 4, 2002.
On December 11, 2002, iHoldings.com, Inc. d/b/a
DotRegistrar.com confirmed by e-mail to the Forum that the domain name <nymagazine.com> is registered
with iHoldings.com, Inc. d/b/a DotRegistrar.com and that Respondent is the
current registrant of the name. iHoldings.com,
Inc. d/b/a DotRegistrar.com has verified that Respondent is bound by the
iHoldings.com, Inc. d/b/a 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 December 11, 2002, a Notification of Complaint and
Commencement of Administrative Proceeding (the “Commencement Notification”),
setting a deadline of December 31, 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@nymagazine.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 January 8, 2003, 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’s
submission makes the following contentions:
1.
Respondent’s <nymagazine.com>
domain name is confusingly similar to Complainant’s NEW YORK registered mark
and New York Magazine publication.
2.
Respondent does not have any rights or legitimate interests in the subject
domain name.
3.
Respondent registered and used the subject domain name in bad faith.
A. Respondent failed
to submit a Response in this proceeding.
FINDINGS
Complainant,
PRIMEDIA Inc., is a “leading targeted content and integrated marketing
solutions company in both the consumer and business-to-business
sectors.”
Complainant represents the number one special interest magazine publisher in
the United States, the number one producer
and distributor of specialty video,
and the number one news and information group on the Internet.
Complainant is
the owner and publisher of New York Magazine,
a weekly publication and “one of the oldest city magazines in the United States”
founded in 1968. Complainant has invested
significant resources to market the
“New York” brand, including, for example, creating and circulating a periodic
companion entitled
New York Magazine
Shops that sponsors numerous events in the New York City metropolitan area.
Complainant’s New York Magazine hosts
many of the most popular magazine columns in New York City, including, inter alia: Intelligencer, Gotham, Best
Bets, Strictly Personals, The City Politic, and Cue. Complainant’s New York Magazine has an active
circulation of approximately 430,000 and reaches individuals throughout the
United States and abroad.
Complainant was
issued U.S. Patent and Trademark Office (“USPTO”) registrations for the
trademarks NEW YORK and NEW YORK (stylized).
More specifically, Complainant
holds the following registration numbers: 1,136,766 registered on June 10, 1980
for the NEW YORK mark;
and, 1,135,730 registered on May 20, 1980 for the NEW
YORK (stylized) mark. Complainant has also submitted trademark applications
for
another NEW YORK trademark and a NEW YORK MAGAZINE SHOPS (stylized) mark.
Complainant’s registrations relate to “publications
concerning life in the New
York City metropolitan area, namely, magazines, books and maps.”
In addition to
the print publication, Complainant conducts its operations from the following
domain names: <nymag.com>, <newyorkmagazine.com>
and
<newyorkmetro.com>. In October 2002, the New York Magazine website received approximately 5.53 million page
views and over 550,000 unique visitors, making it one of the top destinations
on the Internet for New York City related information.
Respondent
registered the <nymagazine.com> domain
name on June 9, 2002. Complainant’s investigation of Respondent’s use of the
subject domain name indicates that when entering
<nymagazine.com> as a domain name, Internet users are
automatically redirected to a website located at
<gotoo.com/treasure/NewYork.html>. The
redirected page is purportedly
operated by Usubscribe.com, a magazine subscription service that offers
subscriptions to Complainant’s
New York
Magazine. Complainant has never licensed or provided Respondent with
authorization to sell the New York Magazine.
Additionally,
Internet users who key Respondent’s domain name into the Internet browser are
confronted with pop-up advertisements
for “Virtual Reality Casino.” When
Internet users attempt to close the redirected page a series of additional
pop-up advertisements
are launched requiring the user to close additional
websites before exiting the redirected page, a technique commonly referred to
as mousetrapping.
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.
Complainant has
established rights in the NEW YORK mark regarding “publications concerning life
in the New York City metropolitan
area, namely, magazines, books and maps”
through successfully registering the mark with the USPTO. Complainant has
established rights
in the aforementioned mark through continuous use of the
mark to denote its magazine product since 1968.
Respondent’s <nymagazine.com> domain name is
confusingly similar to Complainant’s NEW YORK mark because Complainant’s mark
specifically denotes “publications. .
.namely, magazines, books and maps.”
Respondent’s domain name incorporates a common geographical abbreviation for
Complainant’s NEW
YORK mark, namely, “NY.” Precedent has determined that common
abbreviations of established marks and geographical locations fail
to create
distinguishing characteristics for the purpose of a Policy ¶ 4(a)(i) analysis. See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001)
(finding the domain name <ms-office-2000.com> to be confusingly similar
even though the mark
MICROSOFT is abbreviated); see also Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum
Apr. 2, 2001) (finding that the <mnlottery.com> domain name is
confusingly similar to Complainant’s
MINNESOTA STATE LOTTERY registered mark).
Respondent’s <nymagazine.com> domain name
incorporates the word “magazine,” which, as stated, holds particular relevance
to Complainant and the NEW YORK mark. Complainant’s
NEW YORK mark and
registration specifically denote Complainant’s established magazine product and
corresponding service. Therefore,
Respondent’s addition of a word that has an
obvious relationship to Complainant’s business and NEW YORK mark fails to
distinguish
the domain name; thus, Respondent’s domain name is rendered
confusingly similar. See Marriott Int’l
v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that
Respondent’s domain name <marriott-hotel.com> is confusingly similar
to
Complainant’s MARRIOTT mark); 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).
Additionally,
because top-level domains (such as “.com”) represent a required feature in
domain names, their presence is inconsequential.
See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000)
(finding <pomellato.com> identical to Complainant’s mark because the
generic top-level domain
(gTLD) “.com” after the name POMELLATO is not
relevant).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond, thereby leaving Complainant’s evidence and assertions
uncontested. Because Complainant has submitted
a prima facie case to the Panel and fulfilled its initial burden
presented by Policy ¶¶ 4(a)(i) – (iii), the responsibility of demonstrating
rights
and legitimate interests shifts to Respondent. By failing to submit a
Response, Respondent has failed to present circumstances that
would demonstrate
that it has a legitimate interest in the <nymagazine.com>
domain name. Therefore, all reasonable inferences enunciated in the
Complaint will be accepted as true. See
Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat.
Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences
of fact in the allegations of Complainant
to be deemed true); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that
Respondent has no rights or legitimate interests in
respect of the domain name,
the burden shifts to Respondent to provide credible evidence that substantiates
its claim of rights and
legitimate interests in the domain name).
Uncontested
evidence indicates that Respondent utilizes the infringing domain name to
ensnare unsuspecting Internet users, and subsequently
redirects the Internet
users to a commercial website. Additionally, Internet users who attempt to exit
the redirected location are
barraged with pop-up advertisements, some of which
offer gambling and casino services. Respondent’s diversionary use of
Complainant’s
mark in its domain name fails to constitute a bona fide offering
of goods or services under Policy ¶ 4(c)(i). Further, because Respondent
presumably benefits from its use of pop-up advertisements through commissions
or other typical forms of compensation, its commercial
use of Complainant’s
mark does not qualify for protection under Policy ¶ 4(c)(iii). See MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where Respondent attempted to
profit using Complainant’s
mark by redirecting Internet traffic to its own website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat.
Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal
to suck surfers into a site sponsored
by Respondent hardly seems legitimate”).
No evidence
before the Panel indicates that Respondent, Yong Li, is commonly known by the <nymagazine.com> domain name or
the “NYMAGAZINE” second-level domain. Complainant’s investigation of Respondent
indicates that the redirected page
is purportedly operated by Usubscribe.com, a
magazine subscription service. Complainant maintains that Respondent is making
unauthorized
use of the NEW YORK mark in selling Complainant’s product on the
infringing website. Therefore, Respondent fails to establish rights
or
legitimate interests under 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 Policy ¶ 4(a)(ii) has been satisfied.
Complainant’s
submission indicates that Respondent registered and used the subject domain
name in bad faith under Policy ¶ 4(b)(iv).
The aforementioned circumstances
illustrate Respondent’s intentions to opportunistically benefit from
Complainant’s NEW YORK mark
and New York Magazine
product. Respondent not only uses Complainant’s mark in a confusingly similar
domain name for diversionary purposes, but
also utilizes the technique of
mousetrapping in forcing Internet users to address numerous pop-up
advertisements. Such use warrants
a finding of bad faith under the Policy
because Respondent has intentionally attempted to attract, presumably for
commercial gain,
Internet users by creating a likelihood of confusion with
Complainant’s mark. See G.D. Searle &
Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that Respondent registered and used the domain name in bad faith
pursuant to
Policy ¶ 4(b)(iv) because Respondent was using the confusingly
similar domain name to attract Internet users to its commercial website);
see also Kmart v. Kahn, FA 127708 (Nat.
Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its
diversionary use of Complainant's mark when
the domain name resolves to
commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent
is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be hereby GRANTED.
Accordingly, it
is Ordered that the <nymagazine.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Sandra Franklin,
Panelist
Dated: January
14, 2003
WorldLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/43.html