Gruner + Jahr Printing & Publishing
Co. v. Azra Khan
Claim Number: FA0205000114436
PARTIES
Complainant
is Gruner + Jahr Printing &
Publishing Co., New York, NY, USA (“Complainant”) represented by Lisa Rosenburgh, of Salans Herzfeld Heilbronn Christy & Viener. Respondent is Azra Khan, Rawalpindi, PAKISTAN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <familycirclemagazine.com>,
registered with iHoldings.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.
James
A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on May 29, 2002; the Forum received a hard copy of the Complaint
on May 31, 2002.
On
June 4, 2002, iHoldings.com, Inc. confirmed by e-mail to the Forum that the
domain name <familycirclemagazine.com>
is registered with iHoldings.com, Inc. and that Respondent is the current
registrant of the name. iHoldings.com,
Inc. has verified that Respondent is bound by the iHoldings.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
June 4, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 24, 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@familycirclemagazine.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
July 8, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed James A. Carmody, Esq., 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. Respondent’s <familycirclemagazine.com>
domain name is confusingly similar to Complainant’s FAMILY CIRCLE mark.
2. Respondent has no rights or legitimate
interests in the <familycirclemagazine.com> domain name.
3. Respondent registered and used the <familycirclemagazine.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant owns eleven U.S. Patent and
Trademark Office registrations for its FAMILY CIRCLE mark, including U.S. Reg.
Nos. 617,878 and 676,725 registered October 22, 1968. Complainant also holds
trademark registrations for the FAMILY CIRCLE mark in 28 foreign countries and
the Commonwealth of Puerto Rico.
Complainant has used the FAMILY CIRCLE
trademark as the title of an established magazine in the U.S. since at least as
early as 1932. Complainant’s magazine is issued seventeen times a year with a
circulation in the U.S. of over 5 million annually.
Complainant has an active presence on the
Internet. Complainant currently holds the registration for the following domain
names: <familycircle.com>, <familycircle.net>,
<familycircle.info>, <familycircle.biz>, <familycirclemagazine.info>
and <familycirclemagazine.biz>.
Respondent registered the <familycirclemagazine.com>
domain name on December 23, 2001. Respondent’s domain name resolves to a
website at <magazines.com> where numerous magazines, including
Complainant’s, are offered for sale. Complainant’s investigation has failed to
yield any information concerning Respondent or its connection with the FAMILY
CIRCLE moniker. Upon information and belief, Complainant believes the operator
of the <magazines.com> website is Magazines.com, Inc.
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.
Complainant has established rights in the
FAMILY CIRCLE mark through international registration and continuous use of the
mark since 1932.
Respondent’s <familycirclemagazine.com>
domain name is confusingly similar to Complainant’s FAMILY CIRCLE mark.
Respondent’s domain name incorporates Complainant’s entire mark, and makes the
inconsequential addition of the generic word “magazine.” The word “magazine”
holds significant relevance in Complainant’s business, and is an
industry-related word. See Arthur
Guinness Son & Co. (Dublin) Ltd. v.
Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity
where the domain name in dispute contains the identical mark of the Complainant
combined with a generic word or term); see also Space
Imaging LLC v. Brownwell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where the
Respondent’s domain name combines the Complainant’s mark with a generic term
that has an obvious relationship to the Complainant’s business).
Additionally,
the removal of a space between Complainant’s FAMILY CIRCLE mark fails to make
Respondent’s domain name separate and distinct. See Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent failed to submit a Response in
this proceeding. Therefore, the Panel may presume that Respondent has no rights
or legitimate interests in respect of the disputed domain name. 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). Furthermore, Respondent’s failure to respond allows all
reasonable inferences made by Complainant to be deemed true. 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”).
Respondent’s confusingly similar domain
name resolves to <magazines.com>, a website that offers subscriptions to
magazines, including Complainant’s. Respondent’s primary purpose in registering
a domain name that incorporates Complainant’s entire mark was to benefit from
the perceived affiliation its website has with Complainant’s mark. Respondent’s
attempt to opportunistically trade on the goodwill associated with
Complainant’s mark, while operating an unauthorized website offering
Complainant’s goods, is not a bona fide offering of goods or services under
Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use of the
domain name pursuant to Policy ¶ 4(c)(iii). See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec.
10, 2000) (finding that domain names used to sell Complainant’s goods without
Complainant’s authority, as well as others’ goods is not bona fide use); 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); see also Kosmea
Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the
domain name where Respondent has an intention to divert consumers of
Complainant’s products to Respondent’s site by using Complainant’s mark).
There
is no evidence that suggests Respondent is commonly known by the <familycirclemagazine.com>
domain name, or a corresponding “FAMILYCIRCLEMAGAZINE” mark. Complainant’s
investigation has revealed evidence suggesting Respondent is incorporated under
the name Magazines.com, Inc., or is affiliated with that entity. Also, due to
the fact that Respondent registered such an established and well-known mark, a
presumption is created that Respondent is not commonly referred to as
Complainant’s FAMILY CIRCLE mark. Thus, Respondent fails to demonstrate its
rights or legitimate interests in the <familycirclemagazine.com> domain
name pursuant to Policy ¶ 4(c)(ii). See 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); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where Respondent was not
commonly known by the mark and never applied for a license or permission from
Complainant to use the trademarked name); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19,
2000) (finding that Respondent failed to demonstrate any rights or legitimate
interests in the <twilight-zone.net> domain name since Complainant had
been using the TWILIGHT ZONE mark since 1959).
Accordingly,
the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has continually used its
FAMILY CIRCLE mark to promote its magazine since 1932. Due to the popularity of
Complainant’s magazine, Complainant’s international registrations of its famous
mark, Respondent’s conspicuous registration of a domain name that incorporates
Complainant’s entire mark, and the fact that Respondent’s infringing domain
name ultimately leads users to a website offering subscriptions to
Complainant’s magazine, it can be inferred that Respondent had constructive
notice of Complainant’s FAMILY CIRCLE mark. Respondent’s registration and use
of the <familycirclemagazine.com> domain name, despite knowledge
of its infringing behavior and Complainant’s preexisting rights, constitutes
bad faith registration and use under Policy ¶ 4(a)(iii). See Victoria's Secret v. Hardin, FA 96694
(Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of
Complainants' famous marks, Respondent had actual or constructive knowledge of
the BODY BY VICTORIA marks at the time she registered the disputed domain name
and such knowledge constituted bad faith); see also Entrepreneur Media, Inc.
v. Smith, 279
F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an
alleged infringer chooses a mark he knows to be similar to another, one can
infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration).
Additionally, Respondent’s infringing
domain name resolves to <magazines.com>, a website in competition with
Complainant which offers identical goods and services. Respondent’s
opportunistic motives represent bad faith because Respondent registered and
used the domain name primarily for the purpose of disrupting the business of a
competitor, as stated in Policy ¶ 4(b)(iii). See Mission Kwa Sizabantu v. Rost, D2000-0279 (WIPO June 7,2000)
(defining “competitor” as "…one who acts in opposition to another and the
context does not imply or demand any restricted meaning such as commercial or
business competitor”); see also Surface
Prot. 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 Gen. Media Comms., Inc. v. Vine Ent., FA
96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of
Complainant registered and used a domain name confusingly similar to
Complainant’s PENTHOUSE mark to host a pornographic web site).
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 should be
hereby GRANTED.
Accordingly, it is Ordered that the <familycirclemagazine.com> domain name be
TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 11, 2002
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