Global
Media Group, LTD v. Lorna Kang
Claim
Number: FA0202000104556
Complainant is Global Media Group, LTD., New York, NY
(“Complainant”) represented by Keith S.
Orenstein, of Orenstein &
Orenstein, LLC. Respondent is Lorna Kang, Perak, MALAYSIA
(“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at
issue is <ouimagazine.com>,
registered with 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.
PROCEDURAL
HISTORY
Complainant submitted
a Complaint to the National Arbitration Forum (the “Forum”) electronically on February
7, 2002; the Forum received a hard copy of the Complaint on February 7, 2002.
On February 7, 2002, DotRegistrar.com
confirmed by e-mail to the Forum that the domain name <ouimagazine.com> is registered with DotRegistrar.com and
that Respondent is the current registrant of the name. DotRegistrar.com has verified that
Respondent is bound by the 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 February 8, 2002, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of February 28, 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@ouimagazine.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 March 6, 2002
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
1. The <ouimagazine.com> name is confusingly similar to Complainant’s
OUI mark and identical to the title of Complainant’s publication “Oui
Magazine.”
2. Respondent cannot demonstrate that it has used the disputed domain
name in connection with a bona fide offering of goods nor can it demonstrate
that it has used <ouimagazine.com> in connection with a legitimate noncommercial or
fair use. Further, Respondent has not
been known by <ouimagazine.com>, therefore, Respondent cannot demonstrate its
rights and legitimate interests in <ouimagazine.com>.
3. Upon information and belief,
Respondent registered the disputed domain name primarily for purposes of
selling, renting, or otherwise transferring the disputed domain name to
Complainant for consideration in excess of out-of-pocket costs. Furthermore, the domain name was registered
to prevent Respondent from reflecting its mark in the corresponding domain name
and Complainant has engaged in a pattern of such conduct. Finally, Respondent has used the disputed
domain name to intentionally attempt to attract, for commercial gain, Internet
users to Respondent’s website, by creating a likelihood of confusion with
Complainant’s mark as to the source, sponsorship, affiliation, or endorsement
of Respondent’s website. Therefore,
Respondent has registered and used <ouimagazine.com> in bad faith.
B. Respondent
No Response was
Received.
FINDINGS
Complainant
is the publisher of the magazine “Oui Magazine.” Complainant owns two trademarks registered with the United States
Patent and Trademark Office for the OUI mark; Registration Number 2,184,194,
registered August 25, 1998; Registration Number 2,185,885, registered September
1, 1998. Until recently, Complainant
operated a website version of its magazine using the same domain name as the
one at issue <ouimagazine.com>.
Complainant
previously successfully challenged another party for the same disputed domain
at issue in this case. See Global
Media Group, Ltd. v Damir Kruzicevic, FA 96558 (Nat. Arb. Forum March 7,
2001). Through an oversight,
Complainant failed to forward the appropriate transfer forms to Register.com
and the registration for <ouimagazine.com> lapsed on November 14, 2001. Respondent registered <ouimagazine.com> on November 17, 2001. Currently, there is no website at the
disputed domain name.
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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights; and
(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
Complainant
has established its rights in the OUI mark through federal registration and
subsequent continuous use in connection with “Oui Magazine.”
Respondent
has registered a domain name that is identical to Complainant’s publication and
is confusingly similar to Complainant’s mark OUI. Because Respondent’s domain name incorporates a generic term
“magazine” along with Complainant’s OUI mark and the <ouimagazine.com>
domain name is identical to Complainant’s business, the Panel finds that the
domain name in dispute is confusingly similar to Complainant’s mark. See
Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001)
(finding that the <hoylecasino.net> domain name is confusingly similar to
Complainant’s HOYLE mark, and that the addition of “casino,” a generic word
describing the type of business in which Complainant is engaged, does not take
the disputed domain name out of the realm of confusing similarity); see also
Marriott Int’l v. Café au lait,
FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the Respondent’s domain
name <marriott-hotel.com> is confusingly similar to Complainant’s mark
“Marriott”); 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).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights
or Legitimate Interests
Respondent
has failed to file a Response in this matter.
Based on the Complaint and without a Response to the contrary, the Panel
may presume that Respondent
does not have rights or legitimate
interest in <ouimagazine.com>. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. &
D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights
or legitimate interests where no such right or interest was immediately
apparent to the Panel and Respondent did not come forward to suggest any right
or interest it may have possessed).
There
is no evidence that Respondent actually used the domain name in dispute other
than an attempt to sell it to Complainant.
This activity is not bona fide offering of goods and services in
connection with <ouimagazine.com> as outlined by Policy ¶
4(c)(i). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13,
2000) (finding no rights or legitimate interests where Respondent failed to
submit a Response to the Complaint and had made no use of the domain name in
question); see also Vestel Elektronik
Sanayi ve Ticaret AS v. Mehmet Kahveci, D2000-1244 (WIPO Nov. 11, 2000)
(finding that “…merely registering the domain name is not sufficient to
establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of
the Policy”).
Respondent
has not presented any evidence that it is commonly known as <ouimagazine.com>. Therefore,
Respondent has failed to satisfy Policy ¶ 4(c)(ii). See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb.
Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate
interests in domain names because it is not commonly known by Complainant’s
marks and Respondent has not used the domain names in connection with a bona
fide offering of goods and services or for a legitimate noncommercial or fair
use).
The
evidence put forward does not explain how Respondent used <ouimagazine.com>. Currently, it appears that the disputed
domain name is not in use, therefore, the Panel finds that this passive use is
not a legitimate noncommercial activity or fair use of <ouimagazine.com>. See
Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no
rights or legitimate interests where Respondent made no use of the infringing
domain names); see also Chanel,
Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or
legitimate interests where “Respondent registered the domain name and did
nothing with it”). Furthermore, because
the name is identical to the name of Complainant’s publication any use by
Respondent would be an attempt to benefit from Complainant’s good will and
therefore, would not be a legitimate or fair use as pursuant to Policy ¶
4(c)(iii). See Caterpillar Inc. v. Quin, D2000-0314
(WIPO June 12, 2000) (finding that Respondent does not have a legitimate
interest in using the domain names <caterpillarparts.com> and
<caterpillarspares.com> to suggest a connection or relationship, which
does not exist, with the Complainant's mark CATERPILLAR).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration
and Use in Bad Faith
Respondent
registered the disputed domain name three days after Complainant’s chance to
retain <ouimagazine.com> lapsed.
According to Complainant, Respondent has offered to to sell the disputed
domain name to Complainant for consideration in excess of out-of-pocket
costs. Such behavior is evidence that
Respondent has registered <ouimagazine.com>
with intent to sell it to
Complainant which is an act in bad faith as outlined in Policy ¶ 4(b)(i). See Cruzeiro Licenciamentos Ltda v. Sallen & Sallen Enter.,
D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain
name can qualify as bad faith if the domain name owner’s conduct creates the
impression that the name is for sale).
The
Policy outlined in ¶ 4(b) is not exclusive and the Panel can consider other
factors to determine whether Respondent has used the disputed domain name in
bad faith. See Educational Testing Serv. v. TOEFL,
D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy “[I]ndicates that its
listing of bad faith factors is without limitation”).
Complainant
has used its OUI mark in connection with the word “magazine” to promote its
product. Complainant has also used <ouimagazine.com> to reflect its magazine on the
Internet. Respondent has held the
disputed domain name for nearly four months and there is no evidence presented that
Respondent’s use was anything but passive.
Respondent’s passive use of a domain name that is obviously connected
with Complainant can be considered a use in bad faith. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228
(WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name
without active use can constitute use in bad faith); see also Telstra Corp. v. Nuclear Marshmallows,
D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain
circumstances, for inactivity by the Respondent to amount to the domain name
being used in bad faith”); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000)
(finding that the Respondent had made no use of the domain name or website that
connects with the domain name, and passive holding of a domain name permits an
inference of registration and use in bad faith). Furthermore, any actual use by Respondent would be an
opportunistic attempt to benefit from the Internet user confusion created by
the confusingly similar domain name. See
Sony Kabushiki Kaisha v. Inja,
Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use
where it is “inconceivable that Respondent could make any active use of the
disputed domain names without creating a false impression of association with
the Complainant”).
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 be hereby granted.
Accordingly,
it is Ordered that the domain name <ouimagazine.com>
be transferred from
Respondent to Complainant.
Sandra
Franklin, Panelist
Dated:
March 13, 2002
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