DECISION

Reiman Media Group Inc. v. Peter Carrington d/b/a Party Night Inc.

Claim Number: FA0212000135046

PARTIES

Complainant is Reiman Media Group Inc., Greendale, WI, USA (“Complainant”) represented by Nathan D. Jamison, of Quarles & Brady LLP.  Respondent is Peter Carrington d/b/a Party Night Inc., Amsterdam, THE NETHERLANDS (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <reimanpublishing.com>, registered with Key-Systems.

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.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 27, 2002; the Forum received a hard copy of the Complaint on December 2, 2002.

On December 6, 2002, Key-Systems confirmed by e-mail to the Forum that the domain name <reimanpublishing.com> is registered with Key-Systems and that Respondent is the current registrant of the name.  Key-Systems has verified that Respondent is bound by the Key-Systems 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@reimanpublishing.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 Tyrus R. Atkinson, Jr., 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

Complainant contends that Respondent’s <reimanpublishing.com> domain name is almost identical to its business name REIMAN PUBLICATIONS. 

Respondent has no rights or legitimate interests in the <reimanpublishing.com> domain name.

Respondent registered and used the <reimanpublishing.com> domain name in bad faith. 

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Reiman Media Group Inc., is the successor company to Reiman Publications LLC and continues to do business as Reiman Publications.  Complainant is in the business of publishing magazines, books and calendars.  Complainant also operates a retail store in Greendale, Wisconsin and sells merchandise through catalogs.  Complainant contends that it is “exceptionally well-known” for its magazines by way of the REIMAN PUBLICATIONS name. 

Complainant relies on its REIMAN PUBLICATIONS name in marketing its magazines to the relevant consuming public.  As a unique form of magazines, Complainant’s publications do not print paid advertising within the text of the magazines.  As a result, Complainant depends on its REIMAN PUBLICATIONS name in a cross-promotional effort among its various magazines.  Furthermore, Complainant’s REIMAN PUBLICATIONS business name “appears on the masterhead of all of its magazines.”  Thus, Complainant’s consumers associate all of its magazines with the REIMAN PUBLICATIONS name. 

Further support of Complainant’s interests in the REIMAN PUBLICATIONS name is evidenced by Complainant’s website located at <reimanpub.com>.  At this website, Complainant predominately displays its REIMAN PUBLICATIONS name to promote its various publications.  In addition, Complainant’s consumers subscribe to magazines with REIMAN PUBLICATIONS subscription forms and write checks payable to REIMAN PUBLICATIONS.

Respondent registered the <reimanpublishing.com> domain name on March 10, 2003.  Respondent is Party Night Inc. a/k/a Peter Carrington, who has been a frequent Respondent in past domain name disputes.  As was the case in a majority of Respondent’s prior domain name disputes, the current domain name diverts Internet traffic to <hanky-panky-college.com>, a pornographic website. 

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.

Identical and/or Confusingly Similar

Complainant has established a use in commerce of the REIMAN PUBLICATIONS business identity, enough to raise a claim against Respondent’s <reimanpublishing.com> domain name.  Complainant asserts that the REIMAN PUBLICATIONS name is well-known among the consuming public for a variety of uses associated with its assorted magazines.  This assertion is uncontested by Respondent and thus the Panel concludes that Complainant has sufficient rights in the REIMAN PUBLICATIONS moniker to challenge Respondent’s registration and use of the <reimanpublishing.com> domain name.  See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that Complainant has a bona fide basis for making the Complaint in the first place).

Respondent’s <reimanpublishing.com> domain name contains a variation of Complainant’s REIMAN PUBLICATIONS business name.  The <reimanpublishing.com> domain name substitutes “publishing” in place of “publication.”  This change is inconsequential as the two words are synonymous and the domain name contains the most unique feature of Complainant’s business name, REIMAN.  Using the most distinctive portion of another entity’s name in conjunction with a substituted word that carries the same or substantially the same meaning as the omitted portion of the name does not defeat a claim of confusing similarity.  Hence, Respondent’s <reimanpublishing.com> domain name is confusingly similar to Complainant’s REIMAN PUBLICATIONS moniker.  See 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 the domain name confusingly similar to Complainant’s marks); see also Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark).

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

Rights or Legitimate Interests

As previously mentioned, Respondent has not come forward to contest Complainant’s allegations.  Complainant has alleged a prima facie case and thus has dispensed its burden effectively shifting the burden on Respondent to articulate rights or legitimate interests in the disputed domain name.  Respondent’s failure to satisfy its minimal burden allows the Panel to presume Respondent has no such rights or legitimate interests in the <reimanpublishing.com> domain name.  See 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, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Furthermore, Respondent’s failure to challenge the Complaint permits the Panel to accept all allegations as true, and draw all reasonable inferences in Complainant’s favor.  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”); see also 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).

Respondent, Peter Carrington d/b/a Party Night, Inc., has been a defending party in multiple domain name disputes.  Respondent’s actions in past disputes are duplicated in the present matter; Respondent uses <reimanpublishing.com> to divert Internet traffic to its pornographic website located at <hanky-panky-college.com>.  Respondent presumably profits from the diversionary use of the disputed domain name.  Due to Respondent’s infringing actions, neither Policy ¶¶ 4(c)(i) nor (iii) establish rights or legitimate interests in Respondent’s favor.  See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish Complainant’s mark); 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).

Respondent is not commonly known by the <reimanpublishing.com> domain name and has no apparent interest in the REIMAN PUBLISHING name used in the second-level domain.  It is clear, from Respondent’s identity, that Respondent registered the <reimanpublishing.com> domain name only for the potential value it had in relation to Complainant’s REIMAN PUBLICATIONS moniker.  Respondent merely benefited from use of the REIMAN PUBLICATIONS name by connecting the disputed domain name to a commercial pornographic website.  Therefore, Respondent has no affiliation with the second-level domain that would establish rights or legitimate interests in the <reimanpublishing.com> 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).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the domain name; thus, Policy ¶ 4(a)(ii) has been satisfied. 

Registration and Use in Bad Faith

Respondent uses the <reimanpublishing.com> domain name to opportunistically divert Internet consumers, who are presumably searching for Complainant, to the pornographic <hanky-panky-college.com> website.  Respondent has not come forward to establish any interests in the <reimanpublishing.com> domain name, so it is clear the domain name was registered and used to trade off of the goodwill associated with the REIMAN PUBLICATIONS moniker.  Since the <reimanpublishing.com> domain name is confusingly similar to Complainant’s REIMAN PUBLICATIONS business name and Respondent has no independent interest in the second-level domain, Complainant’s consumers are likely to be confused by the resulting use of the domain name.  Therefore, Respondent’s actions with respect to the disputed domain name represent bad faith registration and use under Policy ¶ 4(b)(iv).  See CCA Indus., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (finding that “this association with a pornographic web site can itself constitute bad faith”); see also MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the association of a confusingly similar domain name with a pornographic website can constitute bad faith); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material).

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 <reimanpublishing.com> be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated: January 17, 2003

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