Dame Media, LLC v. D.A.M.E.S. Magazine LLC
Claim Number: FA1207001455854
Complainant is Dame Media, LLC (“Complainant”), represented by Tsan Abrahamson of Cobalt LLP, California, USA. Respondent is D.A.M.E.S. Magazine LLC (“Respondent”), Connecticut, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain nameat issue is <damesmagazine.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 27, 2012; the National Arbitration Forum received payment on July 30, 2012.
On July 30, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <damesmagazine.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 August 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 2012 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@damesmagazine.com. Also on August 6, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 29, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <damesmagazine.com> domain name is confusingly similar to Complainant’s DAME MAGAZINE mark.
2. Respondent does not have any rights or legitimate interests in the <damesmagazine.com> domain name.
3. Respondent registered and used the <damesmagazine.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses the DAME mark in its business as the publisher of a women’s magazine. Complainant also owns rights in its DAME MAGAZINE mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,330,572 registered November 6, 2007). Complainant owns rights in its DAME mark through its registration with the USPTO (Reg. No. 3,454,484 registered June 24, 2008).
Respondent registered the <damesmagazine.com> on November 11, 2011.
Respondent’s domain name resolves to a website pertaining to entertainment and talent agencies and competing with Complainant’s business.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., 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, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds that Complainant secured rights in both its DAME MAGAZINE and DAME marks pursuant to Policy ¶ 4(a)(i) by registering the marks with the USPTO. The panel in Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), stated that a complainant establishes rights in its trademark by registering the mark with the USPTO.
Respondent’s <damesmagazine.com> domain name is confusingly similar to its DAME MAGAZINE mark because the domain name differs only by adding the letter “s” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark, and deleting the space between the words of the mark. The Panel finds that the changes made in the <damesmagazine.com> domain name do not distinguish the domain name from Complainant’s DAME MAGAZINE mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent is not commonly known by the <damesmagazine.com> domain name. The WHOIS information related to the disputed domain name identifies “D.A.M.E.S. Magazine LLC” as the registrant. The panel in AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007), stated that, although the respondent registered the domain name under the registrant “AIM Profiles,” there was no further evidence on the record that demonstrates that the respondent was commonly known by the disputed domain name. The Panel here finds that, although the Respondent registered the <damesmagazine.com> domain name under the name “D.A.M.E.S. Magazine LLC,” Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) due to the lack of any supporting evidence.
Complainant argues in its Policy ¶ 4(a)(iii) section that Respondent is not affiliated with Complainant’s business and does not use the <damesmagazine.com> domain name in relation to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant contends that the content posted on Respondent’s website includes information related to entertainment and talent management in competition with Complainant. The Panel finds that Respondent’s use of the disputed domain name to feature services competing with Complainant’s services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Am. Tool & Machining, Inc. v. EZ Hitch Inc., FA 113961 (Nat. Arb. Forum July 16, 2002) (holding that Respondent lacks rights and legitimate interests in the domain name because “Respondent is competing in the same industry as Complainant, selling a product that is arguably identical to Complainant's product and under the same name”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s registration and use of the <damesmagazine.com> domain name is in bad faith because Respondent intentionally designed the website at the disputed domain to confuse and mislead customers away from Complainant’s website to its competing services. Respondent no doubt makes a commercial gain by attracting Complainant’s clients to its own website by creating a false association with Complainant’s business. The Panel thus finds that Respondent’s use of the <damesmagazine.com> domain name to attract and confuse Complainant’s customers in order to make a commercial profit is bad faith under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
The Panel finds that Complainant has satisfied 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 <damesmagazine.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 5, 2012
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