Marquis Who's Who LLC v. Lucora Corporation Limited c/o Dr. Mel Gill
Claim Number: FA0606000741771
Complainant is Marquis Who’s Who LLC (“Complainant”), represented by Lorin L. Reisner, of Debevoise & Plimpton LLP, 919 Third Avenue, New York, NY 10022. Respondent is Lucora Corporation Limited c/o Dr. Mel Gill (“Respondent”), 65 Munshi Abdullah Ave, Singapore, Singapore 788653, SG.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <whoswhoinamerica.com>, registered with 000Dom.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 28, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 29, 2006.
On June 29, 2006, 000Dom confirmed by e-mail to the National Arbitration Forum that the <whoswhoinamerica.com> domain name is registered with 000Dom and that Respondent is the current registrant of the name. 000Dom has verified that Respondent is bound by the 000Dom 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 6, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 26, 2006 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@whoswhoinamerica.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 31, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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." 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 <whoswhoinamerica.com> domain name is identical to Complainant’s WHO’S WHO IN AMERICA mark.
2. Respondent does not have any rights or legitimate interests in the <whoswhoinamerica.com> domain name.
3. Respondent registered and used the <whoswhoinamerica.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Marquis Who’s Who LLC, publishes a biographical reference guide of America’s leading professionals, celebrities and politicians. Complainant has continuously used the WHO’S WHO IN AMERICA mark since 1899, when it published the first edition of its book.
Complainant has registered the WHO’S WHO IN AMERICA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 378,389 issued June 11, 1940). Complainant also holds numerous other valid trademark registrations with the USPTO, including WHO’S WHO IN AMERICAN HISTORY (Reg. No. 769,205 issued May 5, 1964), WHO’S WHO (Reg. No. 991,399 issued August 20, 1974), WHO’S WHO IN THE WORLD (Reg. No. 931,159 issued March 21, 1972) and WHO’S WHO IN AMERICAN LAW (Reg. No. 1,529,670 issued March 14, 1989).
Respondent registered the <whoswhoinamerica.com> domain name on June 15, 2002. Respondent’s domain name resolves to a web directory containing various links to third-party websites, including a link to Biltmore Who’s Who, a competitor 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."
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.”).
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 established rights in the WHO’S WHO IN AMERICA mark by registering the mark with the USPTO. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Paisley Park Enterprises v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <whoswhoinamerica.com> domain name
is identical to Complainant’s WHO’S WHO IN AMERICA mark because the disputed
domain name contains the entire registered mark and merely eliminates the
spaces between words and punctuation marks.
In Daddy’s Junky Music Stores, Inc. v. Kausar, FA 140598 (Nat.
Arb. Forum Feb. 11, 2003), the panel stated, “The lack of an apostrophe in the
domain name is not a distinguishing difference because punctuation is not
significant in determining the similarity of a domain name and a mark.” Therefore, Respondent’s omission of the
apostrophe from Complainant’s mark in the domain name does not sufficiently
distinguish the disputed domain name from the mark and the Panel finds the <whoswhoinamerica.com>
domain name to be identical to the WHO’S WHO IN AMERICA mark under Policy ¶
4(a)(i). See Charles Jourdan Holding
AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding that the respondent’s
domain name <charlesjourdan.com> is identical to the complainant’s
marks).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant claims that Respondent has no rights or
legitimate interests in the <whoswhoinamerica.com> domain
name. Complainant has the initial
burden of proof in establishing that Respondent lacks rights or legitimate
interests in the domain name. Once
Complainant makes a prima facie case in support of its allegations, the
burden then shifts to Respondent to show it does have rights or legitimate
interests pursuant to Policy ¶ 4(a)(ii).
See Clerical Med. Inv.
Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding
that, under certain circumstances, the mere assertion by the complainant that
the respondent has no right or legitimate interest is sufficient to shift the
burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the
respondent has no rights or legitimate interests with respect to the domain,
the burden shifts to the respondent to provide “concrete evidence that it has
rights to or legitimate interests in the domain name at issue”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <whoswhoinamerica.com>
domain name. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”); see also Canadian Imperial Bank of Commerce v. D3M
Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the panel and the respondent did not come forward to suggest any
right or interest it may have possessed).
However, the Panel will now examine the record
to determine if Respondent has rights or legitimate interests under Policy ¶
4(c).
Additionally, Respondent is not commonly known by the <whoswhoinamerica.com> domain name, because the WHOIS information lists “Lucora Corporation Limited” as the registrant of the domain name, and there is no other evidence in the record suggesting that Respondent is commonly known by the disputed domain name. Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).
Moreover, Respondent’s <whoswhoinamerica.com> domain name, which is identical to Complainant’s WHO’S WHO IN AMERICA mark, resolves to a web directory featuring links to unrelated content and to one of Complainant’s competitors in the biographical reference guide business. In Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003), the respondent registered the <nicklausgolf.com> domain name, which included the complainant’s NICKLAUS mark, and used it to operate a search engine displaying links to third-party websites. The panel held that the respondent’s diversion of Internet users to websites unrelated to the complainant’s mark did not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Because Respondent is also diverting Internet users seeking Complainant’s products to a search engine containing links to third-party websites, and presumably earning click-through fees for each consumer it diverts to these websites, Respondent’s use of the disputed domain name provides evidence that it lacks rights and legitimate interests in the <whoswhoinamerica.com> domain name. See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has registered and is using the <whoswhoinamerica.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because the disputed domain name resolves to a website displaying links to various content, including a link to one of Complainant’s competitors in the biographical reference guide business. The Panel infers that Respondent profits from each consumer it diverts to other websites. Therefore, Respondent is taking advantage of consumer confusion as to the affiliation of Respondent’s <whoswhoinamerica.com> domain name with Complainant’s WHO’S WHO IN AMERICA mark, and profiting from the goodwill associated with the mark. Such registration and use constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
Furthermore, Respondent
has registered and used the <whoswhoinamerica.com> domain name for
the primary purpose of disrupting the business of Complainant. In DatingDirect.com Limited v.
Wayne Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005), the panel found
that the respondent’s diversion of Internet users to a competing business was
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). In this case, Respondent’s website at the
<whoswhoinamerica.com> domain name also includes a link to a
business competing with Complainant. As
a result, Respondent’s registration and use of the disputed domain name
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000)
(finding that the respondent has diverted business from the complainant to a competitor’s
website in violation of Policy ¶ 4(b)(iii)).
The Panel concludes 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 <whoswhoinamerica.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 11, 2006
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