National Arbitration Forum

 

DECISION

 

JES Publishing Corp. v. Brand Wellard

Claim Number: FA0707001036201

 

PARTIES

Complainant is JES Publishing Corp. (“Complainant”), represented by Nicole M. Deforge, of Van Cott, Bagley, Cornwall & McCarthy, 50 South Main, Suite 1600, Salt Lake City, UT 84144.  Respondent is Brand Wellard (“Respondent”), 1941 E Cedar Loop Dr., South Weber, UT 84405.

 

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <utahbrideandgroom.com>, registered with Godaddy.com, Inc.

 

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.

 

Jeffrey M. Samuels as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 13, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 16, 2007.

 

On July 16, 2007, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <utahbrideandgroom.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name.  Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 July 23, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 13, 2007 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@utahbrideandgroom.com by e-mail.

 

A timely Response was received and determined to be complete on August 13, 2007.

 

On August 20, 2007, Complainant filed a timely “Additional Submission.”

 

On August 20, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant has used the term UTAH BRIDE & GROOM since at least as early as 1997 on or in connection with its wedding-related magazine and publications.  Complainant asserts that, from 1997 to the present, it has spent approximately $45,000 annually in advertising and promotional expenses for the UTAH BRIDE & GROOM magazine. Additionally, from 2003 to the present, Complainant has spent approximately $11,000 per year on radio and TV advertising for its UTAH BRIDE & GROOM magazine.  Complainant’s total advertising expenses for its UTAH BRIDE & GROOM magazine exceeds $500,000.  From 1997 to the present time, Complainant has received advertising revenue in excess of $2 million for UTAH BRIDE & GROOM magazine from about 70 different advertisers per issue.  Complainant has sold about 100,000 copies of its magazine since 1997.

 

Complainant maintains that the disputed domain name <utahbrideandgroom.com> is identical to Complainant’s mark UTAH BRIDE & GROOM in sound, connotation, and commercial impression.  It notes that the only difference between the mark and the domain name is that Complainant’s mark uses the “&” symbol (the universally accepted abbreviation for the word “and”) while the domain name uses the word “and.”  Complainant points out that domain names cannot include the “&” symbol.

 

Complainant notes that the goods and services identified by the mark and the domain name are strongly related and the activities surrounding their marketing are such that confusion as to origin is likely.  Complainant’s mark identifies a magazine publication for the wedding industry in Utah.  Respondent’s domain name takes users to a website publication also targeted to the wedding industry in Utah.  Both of the publications provide planning resources and ideas for engaged couples, include articles about wedding planning, list bridal shows and events that might be of interest to couples, and include listing of vendors/advertisers catering to couples.   According to Complainant, its advertisers are the same as Respondent’s and it has received many telephone calls from advertisers expressing confusion about Respondent’s website.

 

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name.  Complainant indicates that, prior to registration of the disputed domain name, Respondent never used the name “Utah Bride and Groom” in connection with any goods or services.  In fact, Complainant asserts, Respondent was one of Complainant’s advertisers and knew that Complainant was using UTAH BRIDE & GROOM for many years.  Complainant alleges that, upon registering the domain name, Respondent approached Complainant and demanded $20,000 in cash or in kind to sell the domain name to Complainant.

 

Complainant further maintains that Respondent is not, and has never been, commonly known by the domain name and is not making a legitimate noncommercial or fair use of the name.  According to Complainant, Respondent registered the domain name with the intent to profit by selling the domain name to Complainant or by misleadingly diverting Complainant’s consumers and advertisers to Respondent’s website.

 

With respect to the issue of “bad faith” registration and use, Complainant contends that Respondent registered the domain name primarily for the purpose of selling the registration to Complainant.  Complainant indicates that Respondent registered the domain name on May 3, 2004, and in the summer of 2005 notified Complainant of such fact and demanded $20,000. 

 

Complainant also alleges that, by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, internet users to its web site, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such site or of the products and/or services on such site.

 

B. Respondent

Respondent asserts that the term “Utah Bride and Groom” is descriptive and not subject to trademark protection.  In response to Complainant’s contention that such term has acquired secondary meaning through substantially exclusive and continuous use, Respondent notes that there are many local wedding related services with the same generic, descriptive terms in their names, including “Utah Bride & Groom Gala,” “Utah Brides,” “Utah Valley Bride,” and “Utah Bride Guide.” In fact, Respondent indicates, advertisers catering to the wedding industry associate <utahbrideandgroom.com> exclusively with Respondent and his website.

 

Respondent further points out that <utahbrideandgroom.com> is a wedding planning site – its slogan being “Your Online Wedding Planner” - while UTAH BRIDE & GROOM is a wedding magazine.  Respondent indicates that, as part of a larger business strategy, it owns and operates over 100 domain names relating to the wedding industry, including <californiabrideandgroom.com>, <nevadabrideandgroom.com>, <coloradobrideandgroom.com>, and <texasbrideandgroom.com>.

 

Respondent contends that it purchased the disputed domain name in good faith for the sole purpose of developing a wedding planning website. He explains that he and his wife are owners of a wedding videography business.  Realizing the trends towards electronic advertising and the need for an online wedding resource, they determined to develop a wedding planning website.  They sought a name that was specific to the location and demographics they were targeting and the people that would visit the site.  The disputed domain name <utahbrideandgroom.com> was available and purchased on May 3, 2004, exclusively for developing a website for brides and grooms to plan their weddings and for vendors to advertise their services.  Initial designs for the site were developed in January 2005 and, after financing was secured and a business plan in place, major site development took place beginning in January 2006.  Respondent alleges that he has spent over $100,000 in site development and advertising.

 

Respondent further contends that he never purchased the domain name with the intent to sell.  “The domain was strictly purchased to develop a wedding planning website,” Respondent asserts.  According to Respondent, he was approached by Courtney Carver, a sales representative from Complainant’s magazine, in the summer of 2005 to advertise his videography business.  At the conclusion of the meeting, he indicated he was in the process of developing a wedding planning website under the domain name <utahbrideandgroom.com>.  He suggested that it might be beneficial to get together to develop a partnership or to collaborate.  Ms. Carver stated that Complainant was a magazine, not a website, and would probably not be interested in a joint venture. 

 

Respondent further argues that Diana Towsley, marketing director for Complainant, initiated contact with Respondent at the end of July 2005, regarding whether Respondent was open to selling the domain name.  Respondent indicates that he never made any financial demands on Complainant.  He did, however, indicate to Complainant that if it were interested in purchasing the domain, they could submit a proposal.  Ms. Towsley submitted a proposal via email on August 1, 2005.  The proposal was to trade a one page ad in Complainant’s magazine and a banner ad on Complainant’s website for one year.  Respondent declined this offer.  According to Respondent, he was later scheduled to meet with Complainant’s owners but such meeting was called off and no further contact took place between the parties until well after Respondent had developed and marketed the disputed domain name.

 

Respondent also maintains that he never attempted to attract internet users to his site with the intent of creating confusion.  He notes that all marketing to advertisers and to brides has been that <utahbrideandgroom.com> is a wedding planning site, as evidenced by the tagline “Your Online Wedding Planner.”  

 

C. Additional Submissions

In its “Additional Submission,” Complainant notes that it also has a wedding planning website identified by its UTAH BRIDE & GROOM mark and that there are many instances of actual confusion in the marketplace.

 

According to Complainant, “[i]t is undisputed that in June 2005, Respondent notified Complainant that he had acquired the domain name and said that if Complainant wished to acquire the domain name they should make an offer.”  Ms. Towsley then proposed to trade the domain name for advertising space in Complainant’s magazine.  Respondent later rejected this offer and instead demanded $20,000 in cash or in kind to sell the domain name to Complainant.  Complainant further argues that “[i]t is undisputed that Respondent, and not Complainant, initiated contact concerning the domain name and that Complainant simply responded to Respondent’s offer.”

 

Complainant further maintains that, prior to registration of the disputed domain name, Respondent had never used the name “Utah Bride and Groom” in connection with any goods or services.  At the time Respondent registered the domain name, he was well aware of Complainant’s use of the UTAH BRIDE & GROOM mark, as evidenced by his admission that he checked on the availability of the domain name utahbrideandgroom magazine.com but decided against registering it.  Complainant also points out that Respondent did not register his other “brideandgroom.com” names until nearly two years after he registered the disputed domain name <utahbrideandgroom.com>.

 

FINDINGS

The Panel finds that: (1) the disputed domain name <utahbrideandgroom.com> is identical or confusingly similar to UTAH BRIDE & GROOM; (2) Complainant has common law rights in the mark UTAH BRIDE & GROOM; (3) Respondent has no rights or legitimate interests in the disputed domain name; and (4) the domain name was registered and is being used in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

 

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;

(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

 

The Panel readily concludes that the disputed domain name <utahbrideandgroom.com> is, for intents and purposes, identical to the term “Utah Bride & Groom.”  As noted by Complainant, the only differences are that the domain name uses the ampersand symbol, as opposed to the word “and,” and includes the top level domain “.com.”  These are distinctions without legal significance.[1]  See, e.g. Pomellato S.p.A. v. Tonetti, D2000-0493 (WIPO July 12, 2000) (finding <pomellato.com> identical to complainant’s mark because the generic top-level domain “com” is not relevant); Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 9, 2000) (finding that the <wrightandlado.com> domain name is identical to complainant’s WRIGHT & LADO mark because the ampersand symbol is not reproducible in a URL).

 

The more difficult question is whether Complainant has trademark rights in the term UTAH BRIDE & GROOM, as used for its magazine.  The Panel notes that Complainant, on January 30, 2007, filed an application (Serial No. 76/672,007) with the United States Patent and Trademark Office (“USPTO”) to register such mark.  An initial Office action, dated May 21, 2007, determined that the mark is not registrable on several substantive grounds, including that the mark is geographically descriptive.  As found by the examiner, the term “UTAH” is geographic and applicant’s magazines come from Utah.  Moreover, the examiner said, the wording “Bride & Groom,” when used in connection with magazines that deal with weddings and issues that affect “brides” and “grooms,” merely describes a feature of the goods.

 

The Panel agrees with this assessment by the USPTO.  Thus, the term UTAH BRIDE & GROOM, as used by Complainant, may be held a protectable mark only if it has acquired secondary meaning.  While the USPTO has not yet had the opportunity to rule on whether UTAH BRIDE & GROOM has obtained the required secondary meaning to be protectable,[2] the Panel concludes that, based on the evidence presented in the instant proceeding, UTAH BRIDE & GROOM has acquired secondary meaning.  As related above, such evidence includes use since 1997, total advertising expenses in excess of $500,000, and the sale of approximately 100,000 copies.  The evidence also includes affidavits from advertisers catering to the wedding industry testifying that they associate UTAH BRIDE & GROOM with Complainant and its magazine.

 

Rights or Legitimate Interests

 

The Panel finds that Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name.  Given the near identity of the mark and the domain name and the use of the domain name in connection with services related to those provided by Complainant, the Panel concludes that Respondent is not using the domain name in connection with a bona fide offering of goods or services.  See, e.g. Computerized Sec. Sys., Inc. v Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“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.”) Further, there is no evidence that Respondent is commonly known by the domain name. 

 

The Panel further concludes that Respondent is not making a legitimate fair use of the domain name, “without intent for commercial gain to misleadingly divert consumers,” within the meaning of paragraph 4(c)(iii) of the Policy.  It is uncontroverted that, prior to his registration of the disputed domain name, Respondent advertised in Complainant’s magazine.  From this and other evidence it is clear that Respondent was aware of Complainant’s use of UTAH BRIDE & GROOM for a wedding-related magazine prior to registration of the disputed domain name.  Further, by the time Respondent registered the disputed domain name in May 2004, Complainant’s publication was about seven years old and had been the subject of much advertising and promotion.  All of which is to say that this is not a case where a respondent is using merely descriptive words to describe his business without taking advantage of a complainant’s rights.[3]  

 

Registration and Use in Bad Faith

 

The Panel concludes that the disputed domain name was registered and is being used in bad faith.  The evidence indicates that by using the domain name <utahbrideandgroom.com>, Respondent intentionally attempted to attract, for commercial gain, internet users to his website by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of such site or of the products and/or services offered at such site, within the meaning of paragraph 4(b)(iv) of the Policy.[4]  The evidence includes a number of reported instances of actual confusion.  This is not surprising given the similarities between UTAH BRIDE & GROOM and <utahbrideandgroom.com> as well as the relatedness of the parties’ goods and services.

 

While Respondent emphasizes that he provides an online resource, the fact remains that his site is an online wedding planner and Complainant’s magazine is a wedding planner and resource directory.  The evidence also indicates that magazine publishers own related online sites.[5]  Under the facts of this case, it would be reasonable for the relevant consuming public to conclude that Respondent’s site and the services offered therein are sponsored by or affiliated with Complainant.

 

The Panel notes that Respondent has presented affidavits from several of his advertisers attesting to the lack of a likelihood of confusion and to the fact that Respondent never led them to believe he was affiliated with Complainant.  However, the relevant purchasing public in this case also includes the less sophisticated general wedding-age public.  Given the similarities between Complainant’s mark and the disputed domain name, as well as the relatedness of the goods and/or services, the Panel finds that such individuals would likely be confused.  The fact that Respondent never led advertisers to believe he was affiliated with Complainant, by itself, does not compel a determination that there is no likelihood of confusion.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <utahbrideandgroom.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Jeffrey M. Samuels, Panelist
Dated: September 11, 2007