Hoboken Publications, LLC v. Hoboken411.com, LLC
Claim Number: FA1111001414530
Complainant is Hoboken Publications, LLC (“Complainant”), represented by William R. Samuels, New York, USA. Respondent is Hoboken411.com, LLC (“Respondent”), represented by Kerry Brian Flowers of Flowers & O'Brien, LLC, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hmag.com>, registered with Tucows.com Co.
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 7, 2011; the National Arbitration Forum received payment on November 7, 2011.
On November 8, 2011, Tucows.com Co. confirmed by e-mail to the National Arbitration Forum that the <hmag.com> domain name is registered with Tucows.com Co. and that Respondent is the current registrant of the name. Tucows.com Co. has verified that Respondent is bound by the Tucows.com Co. 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 November 9, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 2011 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@hmag.com. Also on November 9, 2011, 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.
An untimely Response was received and determined to be deficient on December 20, 2011.
On December 30, 2011, 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.
Preliminary Issue: Deficient Response
Respondent’s Response was received in electronic copy after the Response deadline, and without annexes separated from the response. Thus the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5. However, the Panel, at its discretion and so “that each Party is given a fair opportunity to present its case” per ICANN Rule 10(b), may choose whether to accept and consider this Response.
The Panel notes that the Response was received only one day late and before the Panel was appointed. Moreover, the Panel believes that the failure to provide separated annexes does not prejudice Complainant’s presentation of its case in any meaningful way. As a result, the Panel has decided to accept and consider the Response in its decision. See Board of Governors of the Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a panel may consider a response which was one day late, and received before a panelist was appointed and any adjudication made); see also Gaiam, Inc. v. Nielsen, FA 112469 (Nat. Arb. Forum July 2, 2002) (“In the interest of having claims decided on the merits and not by default and because Complainant has not been prejudiced in the presentation of its case by the late submission, Respondent’s opposition documents are accepted as timely.”).
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
- Complainant, Hoboken Publications, LLC, was founded in November 2009, and publishes hMAG, a high-end luxury magazine that reports on positive cultural information pertaining to the Hoboken, New Jersey area. The magazine is distributed extensively throughout Hoboken.
-Complainant also provides an online version of that print magazine at its domain name, <H-mag.com>.
- During the months preceding the launch of Complainant’s magazine and website, Carl Mazzanti (“Mazzanti”) learned of such launch. In reaction, Mazzanti obtained the disputed domain name from a third party. Said third party had offered to sell the disputed domain name to Complainant for USD$2,500. Subsequently, Mazzanti offered to sell the name to Complainant for an amount in cash and services worth USD$10,000 – a sum far in excess of Mazzanti’s out-of-pocket purchase price.
- After Complainant’s negotiations with Mazzanti failed to reach a satisfactory completion, Mazzanti transferred the disputed domain name to Respondent, a direct competitor of Complainant.
- Respondent, Hoboken411.com, LLC, has operated an online service since 2006 at the domain name, <hoboken411.com>, which provides magazine-like commentary on political, social and cultural events regarding the Hoboken area. However, Respondent has never used Complainant’s HMAG mark in connection with any products or services furnished by Respondent. Moreover, Respondent uses the disputed domain name to host a website that is almost identical to the website found at its <hoboken411.com> domain name, except for occasional differences in advertisements.
- Except for the “.com” portion of the disputed domain name, which is of no consequence, it is identical to Complainant’s HMAG trademark. The disputed domain name is also essentially the same as Complainant’s <h-mag.com> domain name.
- Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent is not affiliated with or a licensee of Complainant. Respondent has never been commonly known as the disputed domain name and is not using the name in a legitimate noncommercial or fair use manner.
- Respondent uses the disputed domain name to provide services similar to those provided by Complainant – a use that is inconsistent with “a bona fide offering of goods or services.” Respondent is driving Internet traffic to its website by deceptively associating that site with Complainant’s HMAG mark, and at the same time derogating that mark with the inferior content design found at the site.
- The disputed domain name was registered and is being used in bad faith. As a direct competitor of Complainant in the same market, Respondent is well aware of Complainant’s HMAG mark. Respondent is deemed to have registered the disputed domain name upon its acquisition, and the purpose of such acquisition was to disrupt Complainant’s business by using the name to market competing services.
- In bad faith, Respondent is benefiting commercially from misdirected Internet traffic.
B. Respondent
- A company owned by Mazzanti acquired the disputed domain name, a generic named asset, in early 2008 in order to promote an anticipated business opportunity. Because that opportunity failed to materialize, said company allowed the name to serve simply as a redirect to it’s main domain name and website.
- Mazzanti denies having had any knowledge of Complainant’s plans prior to acquiring the disputed domain name and asserts that the name itself, <hmag.com>, has no obvious connection to Hoboken, New Jersey.
- In late 2009, Mazzanti’s company received a few offers from third parties to purchase the disputed domain name. Subsequently, that company and Complainant, at Complainant’s behest, engaged in negotiations regarding Complainant’s desire to obtain the disputed domain name. Those negotiations were ultimately unsuccessful, concluding in a threat from Complainant to harm said company and Mazzanti professionally for failure to transfer the name.
- After further threatening behavior by Complainant, the disputed domain was put up for public sale, and Respondent acquired it on or about October 24, 2011.
- Respondent is using the disputed domain name for legitimate business purposes based on its demonstrated ability when owned by Mazzanti’s company to attract Internet traffic in the Hoboken market.
- Complainant applied for trademark protection from the United States Patent and Trademark Office (“USPTO”), but abandoned that process. This is significant evidence that the HMAG mark is not sufficiently unique or important to Complainant.
- Complainant’s business offers no real products or services to the community, but serves only as an advertising page – providing no original content or carrying any distinctive brand, even in local commerce. Thus, Complainant should not qualify for common law protection of its unregistered mark.
- Complainant has failed to demonstrate that the disputed domain name was registered and is being used in bad faith. The name was acquired by Mazzanti’s company independently of any contact with Complainant, and intended for promotional use by that company.
- The disputed domain name was initially created in 2000, and, being generic in nature, is open for legitimate trade in Internet commerce. In any event, Mazzanti’s company did not offer to sell the name, but was solicited by others, including Complainant. It was only after Complainant’s use of unsavory negotiating tactics that the disputed domain name was sold to Respondent.
- The disputed domain name has always been acquired in good faith. It is now being used by Respondent, who is engaged in the same general field of business as is Complainant, but not with the intent to disrupt Complainant’s operations. Respondent is not attempting to steal business from Complainant through consumer confusion.
Founded in November 2009, Complainant is an American company that offers information to the public, through its print magazine and online, concerning various cultural aspects of the Hoboken, New Jersey area. Its print magazine, entitled “hMAG”, is delivered regularly to doorsteps, businesses and magazine racks throughout Hoboken.
Respondent owns the disputed domain name, <hmag.com>, having acquired it on or about October 24, 2011 from a company owned by Carl Mazzanti. Respondent uses the disputed domain name to host a website that resembles it’s main website, which provides information relating to cultural, social and political events about the Hoboken area – directly competing with the offerings 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.
The disputed domain name, <hmag.com>, contains, in order, exactly the same four letters that comprise Complainant’s mark, HMAG. In addition, the disputed domain name contains the gTLD, “.com”, but, as such additions are mandatory for domain names, they should be ignored when determining the identity or confusing similarity between a domain name and a trademark or service mark under the Policy. See Source Lake Holding Corp. v. Camp Pathfinder, LLC, FA 1015782 (Nat. Arb. Forum Aug. 9, 2007) (“The Panel accepts the consensus view of former panels that for the purposes of testing confusing identicality/similarity, the generic top-level domain (“gTLD”), “.com,” is to be ignored.”); see also Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). As a result, the Panel concludes that <hmag.com> is identical to Complainant’s HMAG mark.
Complainant has presented the Panel with no evidence that Complainant has registered its HMAG mark with any appropriate jurisdictional authority. However, as noted by countless previous Policy panels, unregistered marks may be accorded protection under the Policy under certain circumstances. See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000).
In this case, Complainant has contended implicitly that it has obtained common law rights in its HMAG trademark, resulting from that mark having acquired a secondary meaning linking it exclusively to Complainant. The Panel finds that Complainant has used the mark continuously in commerce, through print and online media, for little more than two years. Such limited longevity of use might generally dissuade the Panel from believing that Complainant had acquired such secondary meaning, but not so in this case.
Prior panels have held that recognition by the public that a mark relates uniquely to a complainant, even in a relatively small geographical area, is sufficient to sustain a finding of common law rights in that mark. See General Growth Props., Inc. v. Baker Ballantine, D2005-0919 (WIPO Nov. 14, 2005) (“. . . the fact that the secondary meaning of a name (as distinctive of the [C]omplainant or its goods or services) may only exist in a small geographic area does not limit the Complainant’s rights.”); see also Australian Trade Comm’n v. Reader, D2002-0786 (WIPO Nov. 12, 2002) (“Even if secondary meaning had been acquired only in a limited geographical area, Complainant would nevertheless have established sufficient common law trademark rights within the meaning of Paragraph 1(a)(i) of the Policy.”).
Complainant has contended, without contradiction from Respondent, that Complainant has continuously circulated its print magazine, bearing its HMAG trademark, throughout the city of Hoboken for at least two years. Moreover, during the same period, as asserted by Complainant with no objection from Respondent, Complainant reinforced recognition of that mark by use of an Internet version of the magazine carrying the same trademark. Thus, the Panel believes that Complainant’s mark is widely recognized in the greater Hoboken area and that it has established common law rights in that mark, if only pertaining to said geographical area. This is of particular relevance because Respondent is located in the same area and also engaged in the same general business as that of Complainant. Thus, the Panel is convinced that Respondent is well of aware of Complainant’s use of and rights in the HMAG mark. See Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006); see also Realmark Cape Harbour L.L.C. v. Lewis, D2000-1435 (WIPO Dec. 11, 2000) (“The Panel is satisfied by the evidence in this proceeding that Complainant has established common law trademark rights in "Cape Harbour" for use in . . . a geographical area at least encompassing the area in which Respondent principally conducts its . . . activities . . . .”).
For the reasons cited above, the Panel finds that Complainant has proven that the disputed domain name is identical to a trademark in which Complainant has rights.
With no counter from Respondent, Complainant has asserted to the Panel that Respondent is neither affiliated with nor a licensee of Complainant with respect to use of its HMAG trademark. As Complainant has also proven to the Panel that the disputed domain name is identical to that mark, Complainant has advanced successfully a prima facie case that Respondent has no rights or legitimate interests in that name. Confronted with a prima facie case that it has no rights or legitimate interests in the disputed domain name, Respondent must furnish the Panel with convincing rebuttal evidence. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006): see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 23, 2000).
In reply to said prima facie case, Respondent, “Hoboken411.com, LLC”, does not claim that it has been commonly known by the disputed domain name, <hmag.com>, and the Panel finds no other evidence in the record to invoke Policy paragraph 4(c)(ii) in Respondent’s favor.
Respondent does contend that it has engaged the disputed domain name for legitimate use in its business operations. This contention negates any finding of rights or legitimate interests in the name in compliance with Policy paragraph 4(c)(iii), because such use could not be considered “noncommercial or fair use.”
Moreover, as those business operations are in direct competition with those of Complainant – i.e., both Complainant and Respondent gain advertising revenue based on readership of their information concerning affairs and events occurring in and around Hoboken – the Panel determines that such use of the disputed domain name does not constitute “a bona fide offering of goods or services” per Policy paragraph 4(c)(i). See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
Respondent contends also that the disputed domain name, <hmag.com>, is composed of a generic or descriptive term, and thus open to legitimate acquisition and use by anyone who first registers it. However, the Panel is inclined to disagree. The Panel can determine no common meaning for the term, “hmag”. Certainly, “mag” might be recognized as an abbreviation of the word “magazine”, but adding the prefix, “h”, renders the full term non-descriptive of any common thing, service, person, action, etc. To consider the letter, “h”, alone as a separate term is invalid, for obviously any domain name can be broken down into a sequence of letters (or other approved symbols), all of which are common or generic, without making that domain name a common or generic term.
Accordingly, the Panel rules that Complainant has demonstrated that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that the disputed domain name was registered and is being used in bad faith. Respondent counters with a misplaced argument that the disputed domain name was registered initially in good faith by third parties, including the third party from whom Respondent acquired the name – a company owned by Carl Mazzanti. The Panel finds that such prior ownership and registration is not a relevant consideration in this proceeding. As Respondent is the current owner of the disputed domain name, the date that it acquired the name is the sole pertinent registration date for purposes of bad faith analysis under the Policy. See HotCam, Ltd. v. RNIS Telecomm. Inc., FA 1273417 (Nat. Arb. Forum Aug. 24, 2009) (“The relevant date for assessing bad faith registration is the date upon which the domain name was initially registered or acquired by the respondent . . .”) (emphasis added); see also Surcouf v. Shen Kaixin, D2009-0407 (WIPO June 2, 2009) (“Acquisition of a domain name license by way of transfer or assignment is treated under the Policy as a new registration . . .”).
All relevant evidence presented to the Panel indicates that Respondent, operating in the same limited Hoboken geographical area and in the same general business as Complainant, must have had actual knowledge of Complainant and its HMAG mark relative to print and online services. In seeking to own the disputed domain name, identical to Complainant’s mark, and attaching a website at the name that generates advertising revenue – the same sort of revenue sought by Complainant – Respondent surely intended to divert such revenue from Complainant (i.e., disrupt Complainant’s business) and gain commercially from the likelihood of Internet user confusion with respect to the source, sponsorship, affiliation or endorsement of Respondent’s website. As a result, the Panel finds that Respondent registered and is using the disputed domain name in bad faith according to Policy paragraphs 4(b)(iii) and (iv). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy paragraphs 4(b)(iii) and (iv) by using the disputed domain names to operate websites that compete with the complainant’s business); see also Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001).
Therefore, the Panel determines that Complainant has shown that the disputed domain name was registered and is being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hmag.com> domain name be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster, Panelist
Dated: January 13, 2012
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