Time Inc. v. Fortune500Global a/k/a MS. Fortune500Global
Claim Number: FA1011001360543
Complainant is Time Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, Washington D.C., USA. Respondent is Fortune500Global a/k/a MS. Fortune500Global (“Respondent”), represented by Fahim Safdar of MS. Fortune500Global, Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fortune500global.com>, registered with Name.com, LLC.
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.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 29, 2010; the National Arbitration Forum received payment on November 29, 2010.
On November 30, 2010, Name.com, LLC confirmed by e-mail to the National Arbitration Forum that the <fortune500global.com> domain name is registered with Name.com, LLC and that Respondent is the current registrant of the name. Name.com, LLC has verified that Respondent is bound by the Name.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 2, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 22, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@fortune500global.com. Also on December 2, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on December 20, 2010.
Complainant’s Additional Submission was received on December 22, 2010 in compliance with Supplemental Rule 7. The Panel has considered that Additional Submission in rendering the decision below. Likewise, the Panel has considered Respondent’s Additional Submission, which was received on December 27, 2010 in compliance with Supplemental Rule 7.
On December 27, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dennis A. Foster as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
- Complainant has used its FORTUNE trademark in business for more than 80 years. Complainant’s publications and services are utilized by millions of people around the world. Complainant has spent millions of dollars on advertising, over broadcast and cable television and radio and in print media, to promote its trademarks, including the well known FORTUNE 500 and FORTUNE GLOBAL 500 marks.
- Complainant has obtained registrations with the United States Patent and Trademark Office for, among others, the marks, FORTUNE, FORTUNE 500 and FORTUNE GLOBAL 500.
- Complainant has also registered the domain names, <fortune.com> and <fortune500.com>, to host websites that promote its trademarks, products and services. Substantial sales under the marks have established the high and uniform quality associated by the public with said products and services.
- The disputed domain name, <fortune500global.com>, is nearly identical and confusingly similar to Complainant’s trademarks.
- Respondent has no rights or legitimate interests in the disputed domain name. Respondent uses the name for a website that offers Internet users business news and services that compete directly with those offered by Complainant. Respondent is not authorized to use Complainant’s marks and is not commonly known by the disputed domain name.
- The disputed domain name was registered and is being used in bad faith. Due to the fame of Complainant’s marks, Respondent had actual knowledge of Complainant’s rights; and, in light of Complainant’s many trademark registrations, Respondent was on at least constructive notice of those rights. Moreover, Respondent’s website found at the disputed domain name contains links to the websites of Complainant’s competitors.
- Complainant contacted Respondent in an attempt to gain a transfer of the disputed domain name, but Respondent countered with an offer to sell the name to Complainant – further evidence of bad faith.
B. Respondent
- Complainant has not registered the trademark, FORTUNE 500 GLOBAL.
- Respondent’s website clearly indicates that it is not related to the Complainant in any way. Respondent also communicated the same message to Complainant directly.
- Respondent does not use the disputed domain name to offer goods or services, but for the personal and noncommercial purpose of sharing information with respect to the business world. On its website, the Respondent has posted a disclaimer that it is not a news or broadcast/provider service.
- Respondent uses Google-supplied links to third-party websites only to defray hosting and domain costs. The link to “Forbes” was unintentional and resulted from Google’s actions, not Respondent’s. In the future, Respondent will restrict such links if they lead to Complainant’s competitors.
- Respondent never intended or attempted to sell the disputed domain name. Only Complainant’s continual attempts to gain a transfer motivated Respondent to offer, at last, to sell the name.
- Respondent never attempted to disrupt Complainant’s business, and relied primarily on business lists derived from CNN, not Complainant.
C. Complainant’s Additional Submission
- The annexes to Respondent’s Response, which picture its websites, are truncated and omit substantial commercial activity and the links to third-party competitors of Complainant.
- By admitting its use of Google ads, Respondent contradicts its own claim that its website is noncommercial. Respondent offers no substantiating evidence that such ads cover only limited operating costs. Even if that is true, the Policy does not distinguish between different levels of commercial use.
- Inspection of Respondent’s website – offering information about various companies, industries and the global economy – belies the claim that it is noncommercial in nature.
- Respondent’s disclaimers are insufficient to avoid consumer confusion with respect to the disputed domain name.
D. Respondent’s Additional Submission
- Complainant has submitted a truncated version of Respondent’s website, which does not reveal that the “banner” advertisement is the standard Google advertisement.
- Google service does not necessarily mean that Respondent’s website is commercial, as indicated by Respondent’s use of an individual, as opposed to a business, account with Google. The slogan, “A Leading Market Information Resource,” does not imply commercial intent but is consistent with Respondent’s simple desire to disseminate personal views and the views of others.
- Respondent’s disclaimers are not likely to be ignored or misunderstood by Internet users, but are clear and easily understandable.
Complainant is a well known United States of America publishing company. Fortune magazine is one of Complainant’s publications, and it publishes annually lists of 500 companies that are at the top of their categories. Complainant owns USPTO trademark mark registrations for the marks FORTUNE (e.g., Reg. No. 634,608 issued September 18, 1956); FORTUNE 500 (e.g., Reg. No. 1,368,907 issued November 5, 1985); and FORTUNE GLOBAL 500 (e.g., Reg. No. 2,397,235 issued October 24, 2000).
The disputed domain name, <fortune500global.com>, is owned by Respondent, who registered the name on June 8, 2008. Respondent uses the disputed domain name to resolve to a website that contains information about worldwide business developments and advertisements for the goods and services of third parties, including competitors of Complainant.
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."
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 name registered by Respondent is 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 name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has furnished the Panel with hard evidence (Annex B) of Complainant’s USPTO trademark registrations for the marks, FORTUNE, FORTUNE 500 and FORTUNE GLOBAL 500. The Panel deems such evidence sufficient to establish Complainant’s rights in those marks. See Ticketmaster v. Nextnet Tech, D2008-1479 (WIPO Nov. 25, 2008) (“Complainant has established its rights in the TICKETMASTER mark by virtue of the evidence of its United States federal trademark registrations.”); see also Expedia, Inc. v. Elia Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the Expedia mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (“The Policy does not require that the mark be registered in the country in which the Respondent operates. It is sufficient that a complainant can demonstrate a mark in some jurisdiction.”).
The disputed domain name, <fortune500global.com>, does not match exactly any one of Complainant’s registered trademarks. However, the Panel cannot help but notice the similarity between the disputed domain name and all of the above-cited marks. Most particularly, the name contains all of the three terms found in Complainant’s FORTUNE GLOBAL 500 mark in a rearranged order. Dismissing Respondent’s contention to the contrary, the Panel believes that mere rearrangement of those terms does little, if anything, to mitigate the confusion that typical Internet users would experience when encountering the website placed at the disputed domain name. Those users would naturally assume some association with Complainant. Thus, the Panel determines that the disputed domain name is confusingly similar to that mark. See Bloomberg L.P. v. Herrington Hart, NIRT c/o Michael Herrington, FA 464790 (Nat. Arb. Forum June 1, 2005) (“The Panel finds that the use of transposed words, similar to transposed letters does not suffice to differentiate the disputed domain name from Complainant’s mark to create a separate and distinct mark.”); see also NCRAS Management, LP v. Cupcake City and John Zuccarini, D2000-1803 (WIPO Feb. 26, 2001) (finding the domain name <nationalrentalcar.com> confusingly similar to the mark NATIONAL CAR RENTAL and holding that “merely inverting the terms of a mark...is quite insufficient to dispel consumer confusion; the mark and the resulting domain name are simply too similar to each other”).
The Panel also dismisses as irrelevant the differences between the disputed domain name and Complainant’s FORTUNE GLOBAL 500 mark caused by both the absence of spaces between the three separate terms and the inclusion of the gTLD, “.com”, in the name. See Gurney's Inn Resort & Spa Ltd. v. Jay Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); see also Elenie Reese v. Eddie Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (“Of course, the mere addition of the generic top-level domain '.com' is insufficient to differentiate the disputed domain name from the mark.”).
Accordingly, the Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(i).
Complainant has demonstrated its rights in the mark FORTUNE GLOBAL 500, which arose prior to registration of the disputed domain name and to which that name is confusingly similar. Moreover, Complainant has asserted unequivocally that it has not authorized Respondent to use that mark in a domain name. In the view of the Panel, these circumstances constitute a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Thus, Respondent must come forward with clear evidence to establish said rights or interests. See Aetna Inc. v. Peter Carrington a/k/a Party Night, Inc., FA 154527 (Nat. Arb. Forum May 20, 2003) (“When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”); see also Go Daddy Software, Inc. v. Daniel Hadani, D2002-0568 (WIPO Aug. 1, 2002) (“Once a complainant has made this prima facie showing, the burden shifts to the respondent to show that the respondent has a legitimate interest in the domain name.”).
Invoking by inference Policy ¶ 4(c)(iii) to validate its rights or legitimate interests in the disputed domain name, Respondent contends that he is using the name in a noncommercial manner to merely disseminate his views and the views of others on business issues. However, Respondent immediately puts this contention into question by admitting that he accepts funding from third-party advertising on his website to “defray hosting and domain costs.” This admission dovetails with Complainant’s claim that Respondent uses the disputed domain name to generate revenue by providing advertisement space for Complainant’s competitors. The Panel cannot give credence to Respondent’s contention because the Panel believes it highly unlikely that Respondent would innocently publish material on a website that is extremely similar to the material that Complainant publishes, just happening to use a domain name that is virtually the same as Complainant’s trademark to do so, while at the same time placing advertising spots for Complainant’s competitors and others on that website on a noncommercial basis to simply mitigate some minor costs. The Panel is not so gullible. Therefore, it dismisses the applicability of Policy ¶ 4(c)(iii) to this case.
Given that the Panel has determined that Respondent is engaged in commercial exploitation of the disputed domain name, the Panel, following a plethora of prior UDRP panels that have dealt with similar situations, finds that Respondent’s use of the name to publish material that mimics material published by Complainant fails to constitute a “bona fide offering of goods or services” per Policy ¶ 4(c)(i). See, e.g., Reed Elsevier Inc. and Reed Elsevier Props. Inc. v. Carlos M. Alvarez d/b/a IT Lexis, FA 98249 (Nat. Arb. Forum Aug. 20, 2001)(“Respondent is using the [disputed] domain name to promote its services within the same general field as Complainant. Using an infringing domain name to offer competing goods or services does not constitute a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i).”); see also Am. Online, Inc. v. Xianfeng Fu, D2000-1374 (WIPO Dec. 11, 2000) (“In the Panel's opinion it would be unconscionable to find that a bona fide offering of services [exists] in a respondent's operation of a web-site using a domain name which is confusingly similar to the complainant's mark and for the same business.”).
The Panel notes that Respondent used the company names, “Fortune500Global” and “MS. Fortune500Global,” to register the disputed domain name. While the similarity of these names to the disputed domain name might give rise to a claim that Respondent owns a company that is commonly known as the disputed domain name – per Policy ¶ 4(c)(ii) – Respondent does not make such a contention in his Response or Additional Submission. Moreover, the Panel also notices that both the Response and Additional Submission are captioned in Respondent’s name as an individual, Fahim Safdar. Thus, the Panel concludes that neither Respondent nor any company that he owns are commonly known as the disputed domain name, negating the applicability of ¶ 4(c)(ii) to this case.
Since Respondent has not mounted a creditable rebuttal to Complainant’s prima facie case, the Panel rules that such case prevails.
Accordingly, the Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
The Panel has determined above that the dispute domain name owned by Respondent is confusingly similar to Complainant’s registered trademark. The Panel has accepted as true Complainant’s contention that Respondent uses the disputed domain name for a website that presents business information – similar to that provided as a part of Complainant’s business – and advertisements by third parties, some of whom are competitors of Complainant. Respondent, himself, admits that he derives income from the advertisements. Thus, it would appear to the Panel that for commercial gain Respondent is intentionally attempting to lure Internet users to his website by creating the likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website and the information offered there. As such, the Panel concludes that Respondent has run afoul of the circumstance enumerated in ¶ 4(b)(iv) of the Policy, requiring a finding of bad faith registration and use of the disputed domain. See Ford Motor Co. v. Boomerang Enter. Inc., FA 1344311 (Nat. Arb. Forum Oct. 20, 2010) (“Respondent is using the [disputed] domain names to resolve to its own website which also promotes products for Complainant’s competitors featuring advertisements to Complainant’s competitors...the Panel considers that it may be presumed that Respondent commercially gains from Internet users’ confusion...and, therefore, the Panel may hold that Respondent’s use of the disputed domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Cont’l Airlines, Inc. v. Stanley Vartanian d/b/a MIG Travel, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Internet users searching for Complainant’s CONTINENTAL AIRLINES mark would easily be confused by the disputed domain name, which results in additional traffic to Respondent’s airline travel reservation system website. The Panel finds such confusion for commercial gain to be further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Respondent contends that he has posted disclaimers on his website sufficient to alert any potential Internet user that the site is not connected in any way to Complainant or its business. However, prior UDRP panels have ruled consistently that such disclaimers do not effectively mitigate bad faith registration or use of a domain name, and the Panel concurs. See Ford Motor, supra (“...the Panel finds accordingly that the disclaimer posted on Respondent’s website by Respondent is insufficient to prevent a finding of bad faith under Policy ¶ 4(a)(iii) since it does not prevent initial confusion and may be disregarded by Internet users.”); see also Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com”, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions.”).
Accordingly, the Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fortune500global.com> domain name be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster, Panelist
Dated: January 10, 2011
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