DECISION

 

Garrison Keillor, Minnesota Public Radio, Inc. v. Paul Stanton

Claim Number: FA0107000098422

 

PARTIES

Complainant is Garrison Keillor Minnesota Public Radio, St. Paul, MN (“Complainant”) represented by Linda M. Byrne, of Merchant & Gould.  Respondent is Paul Stanton, Norfolk, VA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <lakewobegone.com>, registered with TierraNet, Inc.

 

PANEL

On August 24, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist. 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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 25, 2001; the Forum received a hard copy of the Complaint on July 26, 2001.

 

On July 26, 2001, TierraNet, Inc. confirmed by e-mail to the Forum that the domain name <lakewobegone.com> is registered with TierraNet, Inc. and that Respondent is the current registrant of the name.  TierraNet, Inc. has verified that Respondent is bound by the TierraNet, 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 27, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 16, 2001 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@lakewobegone.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.

 

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

Complainant has used the LAKE WOBEGON trademark in the United States since February of 1973 in connection with a series of radio show segments containing humorous and human-interest news about the fictional town of Lake Wobegon, Minnesota.

 

Respondent’s domain name is confusingly similar to Complainant’s LAKE WOBEGON mark.

 

Complainant has been using the mark LAKE WOBEGON for over 28 years.  In contrast, upon information and belief, Respondent has never been commonly known by the "LAKEWOBEGONE" domain name, and any use by Respondent of the domain name constitutes trademark infringement of Complainant’s rights.

 

Although Respondent registered the domain name over two years ago, Respondent has not yet made any use of the domain name.  Respondent’s inaction is evidence of bad faith registration and use. 

 

B. Respondent

No Response was received.

 

FINDINGS

Complainant is the owner of a federal trademark registration for the trademark LAKE WOBEGON, U.S. Reg. No. 1,480,062.  In addition, Complainant is the owner of several other federal trademark registrations that include the words LAKE WOBEGON, including NEWS FROM LAKE WOBEGON (U.S. Reg. No. 1,468,056), LAKE WOBEGON MINN. GATEWAY TO CENTRAL MINNESOTA (U.S. Reg. No. 1,442,183), and LAKE WOBEGON WHIPPETS (U.S. Reg. No. 1,445,301).

 

Respondent registered the domain name on May 6, 1999.

 

On June 12, 2001, Complainant sent a letter to Respondent requesting that Respondent cease all use of the mark LAKE WOBEGON, and transfer the domain name <lakewobegone.com> to Complainant.  Respondent did not respond to the letter.

 

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.

 

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 domain name <lakewobegone.com> is confusing similar to Complainant’s distinctive, federally registered trademark LAKE WOBEGON.  The disputed domain name <lakewobegone.com> incorporates Complainant's distinctive trademark LAKE WOBEGON in its entirety.  In addition, one cannot escape similarity by using a domain name that is merely a misspelling of a famous mark and the addition of the most common commercial URL suffix, ". com".  See Hewlett-Packard Co. v. Cupcake Patrol, FA 95822 (Nat. Arb. Forum Nov. 20, 2000) (finding confusing similarity where the domain names, such as <hewittpackard.com>, are simply misspellings of Complainant's mark); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusing similar to the Complainant's mark "State Farm"); see also Encyclopaedia Brittanica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding confusing similarity where the domain names, such as <britannca.com>, are simply misspellings of Complainant's mark); see also Air Canada v. Zuccarini, FA 97162 (Nat. Arb. Forum June 6, 2001) (finding confusing similarity where the domain name, <aircanda.com>, was an apparent misspelling of the famous airline's name).

 

Accordingly, the first prong of Policy 4(a) has been satisfied.

 

Rights or Legitimate Interests

Respondent has no affiliation or relationship with Complainant and, therefore, has no legitimate reason for using Complainant's mark, or a misspelling thereof, as its domain name.  See American Airlines, Inc. v. Zuccarini, FA 95695 (Nat. Arb. Forum Nov. 6, 2000) (finding no rights or legitimate interest in the misspelled domain name <amaricanairlines.com> because Respondent was not authorized to use Complainant's mark).

 

In addition, Respondent has made no use of the domain name to date.  This is further evidence that Respondent has no rights or legitimate interest in the domain name.  See Valigene Corp. v. MIC, FA 94860 (Nat. Arb. Forum Aug. 1, 2000) (finding no rights or legitimate interest in the non-use of a domain name that was a misspelling of a famous mark).

 

Even if Respondent did begin using the <lakewobegone.com> domain name, however, the use could not be legitimate.  First, Respondent does not conduct any bona fide business under the name LAKEWOBEGONE.  See Oly Holigan, L.P. v. Private, FA 95940 (Nat. Arb. Forum Dec. 4, 2000) (finding no rights or legitimate interest in a misspelled domain name because Respondent did not provide any bona fide products in connection with the domain name). 

 

Second, because Complainant's LAKE WOBEGON mark is fully incorporated into the domain name, it would be reasonable for Internet users to assume that the <lakewobegone.com> domain name is operated or sponsored by Complainant, when in fact it is not.  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); see also The Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that Respondent's use of domain names confusingly similar to Complainant's mark to sell competing goods was an illegitimate use and not a bona fide offering of goods); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from the Complainant's site to a competing website). 

 

Third, the use of a domain name that is a misspelling of a famous mark cannot be a legitimate noncommercial or fair use of the famous mark.  See Encyclopaedia Brittanica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of Complainant's mark).  The only possible use of the domain name <lakewobegone.com> would be for diverting traffic from Complainant's authorized site.  This is an impermissible use of Complainant's mark.  See id.

 

Accordingly, the second prong of Policy 4(a) has been satisfied.

 

Registration and Use in Bad Faith

Respondent registered <lakewobegone.com> with the intention of attracting Internet users who are actually seeking <lakewobegon.com>.  There can be no other reason that Respondent registered a misspelling of Complainant's famous and distinctive mark LAKE WOBEGON.  See e.g., Dr. Karl Albrecht v. Eric Natale FA 95465 (Nat. Arb. Forum Sept. 16, 2000) ("The Respondent intentionally registered a domain name which uses the Complainant’s name.  There is no reasonable possibility that the name karlalbrecht.com was selected at random.  There may be circumstances where such a registration could be done in good faith, but absent such evidence, the Panel can only conclude that the registration was done in bad faith."); see also America Online Inc. v. Shenzhen JZT Computer Software Co. Ltd, D2000-0809 (WIPO Sept. 6, 2000) (finding that <gameicq.com> and <gameicq.net> are obviously connected with services provided with the world-wide business of ICQ and the very use by someone with no connection with the product suggests opportunistic bad faith). 

 

Policy 4(b) is met by registering a domain name that will, if the Respondent ever puts it in use, ultimately result in consumer confusion.  See Hewlett-Packard Co. v. Wieland, FA 95852 (Nat. Arb. Forum Dec. 6, 2000) (finding bad faith where any future use of the inactive website would result in consumer confusion); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding bad faith where any future use of the domain name would do nothing but cause confusion with the Complainant’s mark, except in a few limited noncommercial or fair use situations, which were not present).

 

When coupled with the long use and fame of the LAKE WOBEGON mark, Respondent's passive holding of the domain name can be nothing other than bad faith.  In addition, Respondent’s failure to respond to Complainant's June 12, 2001, letter further demonstrates Respondent's lack of good faith intent in registration and use of the domain name.  See CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) ("The Panel assumes that if the Respondent had a good faith intent in registration and use of the domain name, it would have responded either to the Complainant's letter and/or the Complaint, or actually used the domain name in some good faith manner").

 

Respondent's bad faith registration and use of <lakewobegone.com> satisfies the final prong of Policy 4(a).

 

DECISION

Having established all three elements under the ICANN Policy, the Panel concludes that the requested relief should be granted.

 

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

 

 

James P. Buchele, Panelist

 

Dated:  August 28, 2001

 

 

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