DECISION

City News and Video v. Citynewsandvideo

Claim Number:  FA0403000244789

PARTIES

Complainant is City News and Video (“Complainant”), represented by J.P. Fernandez, of Hale & Wagner, S.C., 205 E. Wisconsin Ave., Suite 300, Milwaukee, WI 53202.  Respondent is Citynewsandvideo (“Respondent”), 275 W. Main St., Waukesha, WI 53186.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <citynewsandvideo.com>, <supervideo2.com>, and <selectivevideo.com>, registered with Domain Discover.

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.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 11, 2004; the Forum received a hard copy of the Complaint on March 11, 2004.

On March 12, 2004, Domain Discover confirmed by e-mail to the Forum that the domain names <citynewsandvideo.com>, <supervideo2.com>, and <selectivevideo.com> are registered with Domain Discover and that Respondent is the current registrant of the names. Domain Discover has verified that Respondent is bound by the Domain Discover 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 March 26, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 15, 2004 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@citynewsandvideo.com, postmaster@supervideo2.com, and postmaster@selectivevideo.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 26, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon 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 makes the following assertions:

1. Respondent’s <citynewsandvideo.com>, <supervideo2.com>, and <selectivevideo.com> domain names are identical to Complainant’s CITY NEWS & VIDEO, SUPER VIDEO 2, and SELECTIVE VIDEO marks.

2. Respondent does not have any rights or legitimate interests in the <citynewsandvideo.com>, <supervideo2.com>, and <selectivevideo.com> domain names.

3. Respondent registered and used the <citynewsandvideo.com>, <supervideo2.com>, and <selectivevideo.com> domain names in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant operates three stores that each sell “Adult Merchandise and Exotic Smoking Accessories throughout the South-Eastern Wisconsin area.”  Mark Phillips Affidavit at 2.  These stores are known as “City News & Video,” “Super Video 2,” and “Selective Video.” 

The City News & Video store has operated under the trade name and mark CITY NEWS & VIDEO since 1989.  The Super Video 2 store has operated under the trade name and mark SUPER VIDEO 2 since 1999 and the Selective Video store has been operating under the trade name and mark SELECTIVE VIDEO since 1993.

Complainant has undertaken advertising campaigns for each of the stores. 

Respondent registered the disputed domain name <citynewsandvideo.com> on January 3, 2003.  Respondent registered the disputed domain names <supervideo2.com> and <selectivevideo.com> on January 17, 2003.  The three disputed domain names are used to host a website that contains the words “CITY NEWS & VIDEO” in big and bold lettering.  The website contains information relating to an adult-oriented video store located in southeastern Wisconsin, presumably owned by Respondent. 

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 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 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 names registered by Respondent are 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 names; and

(3) the domain names have been registered and are being used in bad faith.

Identical and/or Confusingly Similar

Complainant has not registered its CITY NEWS & VIDEO, SUPER VIDEO 2, and SELECTIVE VIDEO marks with any governmental authority.  However, a mark need not be registered with a governmental authority for rights to be established in a mark under the Policy.  Unregistered marks are afforded protection under the Policy. 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 Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”).

For an unregistered mark to be afforded protection under the Policy, evidence must be presented by a complainant to show that the mark is distinctive.  Distinctiveness may either be inherent within a mark or distinctiveness may be established through the secondary meaning associated with the mark.  In this case, Complainant has asserted and has provided evidence to show that its businesses have all maintained a presence in southeastern Wisconsin for at least a period of five years.  In addition, Complainant has provided the Panel with evidence of the advertising associated with its various businesses and the goods and services connected therewith. Moreover, no evidence has been adduced to rebut these assertions by Complainant. Therefore, the Panel finds that Complainant has provided enough evidence to support its assertion that Complainant has rights in the CITY NEWS & VIDEO, SUPER VIDEO 2, and SELECTIVE VIDEO marks. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that Complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also Restatement (Third) of Unfair Competition § 13, pp. 37-38, and Comment a (Tent. Draft No. 2, Mar. 23, 1990) (An identifying mark is distinctive and capable of being protected if it either (1) is inherently distinctive or (2) has acquired distinctiveness through secondary meaning.).

The domain name <citynewsandvideo.com> is identical to Complainant’s CITY NEWS & VIDEO mark because the name incorporates the mark in its entirety and the substitution of an ampersand symbol with its alphabetic spelling is irrelevant under the Policy. See Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to Complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL); see also McKinsey Holdings, Inc. v. Indidom, D2000-1616 (WIPO Jan. 31, 2001) (finding that the removal of the ampersand from “McKinsey & Company” does not affect the user’s understanding of the domain name, and therefore the domain name <mckinseycompany.com> is identical and/or confusingly similar to the mark “McKinsey & Company”).

The domain names <supervideo2.com> and <selectivevideo.com> are identical to Complainant’s SUPER VIDEO 2 and SELECTIVE VIDEO marks because the names incorporate the marks in their entireties and have merely added the generic top-level domains “.com” to the marks. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that the addition of a top-level domain is without legal significance).

Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Having failed to respond to the Complaint, Respondent has evidenced that it lacks rights and legitimate interests in the domain names. 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); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).

Although Respondent’s WHOIS information lists its name as “citynewsandvideo,” there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that Respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that Respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Web House USA, Inc. v. eDollarShop Hostmaster, FA 155180 (Nat. Arb. Forum June 10, 2003) (finding that Respondent was not “commonly known by” the <edollarshop.com> domain name, despite naming itself “eDollarShop,” because Respondent’s website was almost identical to Complainant’s “first in use” website and infringed on Complainant’s marks); see also Neiman Marcus Group, Inc. v. Neiman-Marcus, FA 135048 (Nat. Arb. Forum Jan. 13, 2003) (noting that “Complainant has established itself as the sole holder of all rights and legitimate interests in the NEIMAN MARCUS mark,” in holding that Respondent was not commonly known by the <neiman-marcus.net> name, despite naming itself “Neiman-Marcus” in its WHOIS contact information).

There is nothing in the record to indicate that Respondent is commonly known by the disputed domain names <supervideo2.com> and <selectivevideo.com> pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).

The evidence before the Panel indicates that Respondent and Complainant are both engaged in the same business within the similar geographic area. As a result, Respondent and Complainant are competitors.  Therefore, Respondent is not using the disputed domain name in connection with 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) because Respondent is using a competitor’s marks in identical corresponding domain names to direct Internet users to its own website. See Computerized Sec. Sys., Inc.  v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods).

Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent has registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(ii) because Respondent registered the domain names to prevent Complainant, the owner of the CITY NEWS & VIDEO, SUPER VIDEO 2, and SELECTIVE VIDEO marks, from reflecting its marks in corresponding domain names.  Respondent has engaged in a pattern of conduct as evidenced by Respondent’s multiple registrations of domain names identical to marks in which Complainant has rights. See YAHOO! Inc. v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two domain names incorporating Complainant's YAHOO! mark); see also Australian Stock Exch. v. Cmty. Internet, D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy ¶ 4(b)(ii) where Respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known businesses); see also Pep Boys Manny, Moe, & Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that, where Respondent registered many domain names, held them hostage, and prevented the owners from using them, the behavior constituted bad faith).

Respondent has also registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) because Respondent, as a competitor of Complainant, registered the domain names primarily to disrupt the business of Complainant.  Disruption is occurring as a result of Internet-user confusion as to the source of the content being offered at Respondent’s website.  See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); 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); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from Complainant's marks suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant's business).

In conjunction with the preceding, Respondent has also registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv) because it has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks.  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same services as Complainant via his website); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the domain name at issue to resolve to a website offering similar services as Complainant into the same market).

Complainant has established Policy ¶ 4(a)(iii).

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

Accordingly, it is Ordered that the <citynewsandvideo.com>, <supervideo2.com>, and <selectivevideo.com> domain names be TRANSFERRED from Respondent to Complainant.

Louis E. Condon, Panelist

Dated:  May 5, 2004

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