Krause Publications, Inc. v. Ali Aziz
The Complainant is Krause Publications, Inc., Iola, Wisconsin, United States of America, represented by Greenebaum Doll & Mcdonald PLLC, United States of America.
The Respondent is Ali Aziz, Karachi, Pakistan.
The disputed domain name <numismaticnews.com> is registered with DSTR Acquisition VII, LLC d/b/a Dotregistrar.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 4, 2008. On September 5, 2008, the Center transmitted by email to DSTR Acquisition VII, LLC d/b/a Dotregistrar.com a request for registrar verification in connection with the domain name at issue. On September 5, 2008, DSTR Acquisition VII, LLC d/b/a Dotregistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 16, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 6, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 7, 2008.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on October 9, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
1. The Complainant is a publisher of leisure-time magazines and books, including many titles on the subject of numismatics.
2. The Complainant (itself and through its predecessor in interest, Chester Krause) has used the trademark NUMISMATIC NEWS since 1953 in connection with magazines relating to coin collection.
3. The Complainant's trademark is the subject of U.S. Federal Trademark Registration No. 2,190,531 for use in connection with "magazines relating to coin collection" in international class 16. The registration dates from 1998 and claims a first date of use from 1953.
4. The Complainant has not licensed or otherwise permitted the Respondent to use the trademark or to register or use any domain name incorporating the trademark.
5. The Respondent registered the disputed domain name on January 20, 2002.
6. The disputed domain name redirects Internet users to the third party website, "www.magazines.com", which promotes subscriptions to a wide variety of magazines including Numismatic News.
7. The Complainant petitions the Panel to transfer the disputed domain name from the Respondent to the Complainant.
The Complainant asserts rights in the trademark NUMISMATIC NEWS and states that the disputed domain name is identical to the trademark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and used the disputed domain name in bad faith.
The detail of the Complaint is included where necessary in Part 6 of this Decision.
Applying the principles developed and now broadly accepted under the Policy, the disputed domain is identical to the trademark1. Moreover, the Complainant has rights in the trademark acquired through registration, if not also through use2.
The Panel has no hesitation in finding that the Complainant satisfies the first element of the Policy.
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the domain name. Nevertheless, it is well settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to demonstrate rights or legitimate interests3.
Notwithstanding the lack of a Response to the Complaint, Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has established its trademark rights. There is no evidence that the Respondent has similar rights, registered or not. The WhoIs data does not support any argument that the Respondent might be commonly known by the domain name. The Complainant has stated there to be no relationship between the parties.
The Respondent is not using, nor has it made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Rather, the Respondent is using the domain name to re-direct Internet users to a third party's site. Notwithstanding the fact that third party site offers subscriptions to the Complainant's own magazine, it is established by former decisions under the Policy that such action is not a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of the domain name4.
The Panel finds that the Complainant has succeeded in making out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent in failing to reply has not discharged the onus which fell to it as a result. The Panel finds that the Respondent has no rights or legitimate interests in the domain name and so the Complainant has established the second limb of the Policy.
Paragraph 4(b) of the Policy sets out the circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
What is noteworthy about paragraphs 4(b)(i) – (iv) is that they are cases of both registration and use in bad faith. Paragraph 4(b) is not exhaustive and other instances of bad faith might be in evidence but, in those instances, the Panel must be able to find both bad faith registration and bad faith use. It is therefore logical to first test the facts against the Policy itself.
Amongst other claims, the Complainant alleges that the Respondent's conduct falls under paragraphs 4(b)(ii) and (iv).
In relation to paragraph 4(b)(ii), the Complainant points to a previous panel decision of the National Arbitration Forum where this Respondent was ordered to transfer five domain names to that complainant5. It is not clear to this Panel whether a single decision against the Respondent under this Policy (notwithstanding that it related to multiple domain names) properly constitutes a pattern of bad faith conduct as required by paragraph 4(b)(ii). The Panel prefers to examine the Complainant's other, more compelling, submissions.
Paragraph 4(b)(iv) requires a use of the domain name creating a likelihood of confusion with the Complainant's mark as to the source of the online location to which Internet users are attracted. The Panel has already found the domain name to be identical to the trademark. The Panel finds that the likelihood of confusion as to source is therefore inevitable.
Paragraph 4(b)(iv) also requires an intention for commercial gain. What is required is proof that it is more likely than not, that intention existed; absolute proof is not required. The Complaint only carries bold assertions that the Respondent is benefiting financially by redirecting Internet traffic to "www.magazines.com". Nonetheless, the Panel is entitled to accept reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory6. Moreover, what is clear is that use of a domain name in this same manner is frequently for commercial gain7.
The Panel finds that the Complainant has shown the Respondent's use of the disputed domain name falls under Paragraph 4(b)(iv) and was therefore used and registered in bad faith. Accordingly, the Panel finds that the Complainant has satisfied the third and final limb of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <numismaticnews.com> be transferred to the Complainant.
Debrett G. Lyons
1 The differences between the disputed domain name and the Complainant's trademark are trivial and amount only to the elimination of the space between the two words, and the addition of the gTLD, ".com." The Panel follows the consensus view of panelists in earlier decisions under the Policy in holding that those differences do not prevent a finding of identicality. See Vin Diesel v. LMN a/k/a L.M. Nordell, NAF Case No. FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant's mark because "simply eliminat[ing] the space between terms and add[ing] the generic top-level domain ("gTLD") ".com" [is] insufficient to differentiate the disputed domain name from Complainant's VIN DIESEL mark under Policy ¶ 4(a)(i)"); see also Rollerblade, Inc. v. McCrady, WIPO Case No. 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).
2 See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Case No. FA 705262 (Nat. Arb. Forum June 19, 2006) ("Complainant's registrations with the United States Patent and Trademark Office of the trademark STATE FARM establishes its rights in the STATE FARM mark pursuant to Policy ¶ 4(a)(i)."); see also Mothers Against Drunk Driving v. phix, NAF Case No. FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that the complainant's registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant's rights in the mark for purposes of Policy ¶ 4(a)(i)).
3 See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Case No. FA 741828; AOL LLC v. Gerberg, NAF Case No. 780200.
4 See Bank of America v. Azra Khan, NAF Case No. FA124515 (finding that the respondent's diversionary use of the domain name to "www.magazines.com" was not a bona fide offering of goods or services, was not noncommercial use, and was not fair use); see also Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
5 Cingular Wireless II, LLC v. Ali Aziz, NAF Case No. FA892865.
6 See Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Case No. FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent's failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, WIPO Case No. D2000-0009 (WIPO Feb. 29, 2000) ("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.").
7 See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 (finding that redirecting users to the website "www.magazines.com" was for commercial gain and was bad faith registration and use); Ticketmaster Corporation v. Amjad Kausar, WIPO Case No. D2002-1018 (holding that "[t]he Respondent "is clearly acting in bad faith by using the Complainant's mark to profit in the form of commissions by linking of the Ticketsnow.com Affiliate Program"); Yahoo! Inc. v. DFI Inc., NAF Case No. FA147313 (holding that, because respondent participated in an affiliate program whereby it earned a commission for each user redirected from its infringing site, its ultimate goal was commercial gain and thus it was using the name in bad faith); and Showboat, Inc. v. Azra Khan, NAF Case No. FA125227 (redirecting users for a commission is using a confusingly similar domain name for commercial benefit, which is evidence of bad faith).