WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

International Data Group, Inc. v. The Applied Media Companies, Inc.

Case No. D2000-0191

 

1. The Parties

The Complainant is International Data Group, Inc., 5 Speen Street, Framingham, MA 01701, USA . According to Network Solutions, Inc.ís WHOIS database, the Respondent is Dennis Pierman and/or The Applied Media Companies, Inc., 243 Church Street, NW, Suite 300C, Vienna, VA. 22180, USA.

 

2. The Domain Name(s) and Registrar(s)

The domain name at issue is {publish.org} (the "Domain Name"), which Domain Name is registered with Network Solutions, Inc. (the "Registrar").

 

3. Procedural History

A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on March 21, 2000. On April 7, 2000, the Registrar confirmed by reply e-mail that the Domain Name is registered with the Registrar that the Respondent was the current registrant of the name and that the ICANN Uniform Domain Name Disputed Resolution Policy (the "Policy") is in effect. The reply also contained contact information for the Respondent.

The Panel finds that the Policy is applicable to this dispute.

No formal deficiencies having been recorded, on April 3, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent, setting a deadline of April 22, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses specified in the Registrarí Whois confirmation. In addition, the Complaint was sent by facsimile to the listed fax numbers and express courier to all available postal addresses. Having reviewed the communications records in the case file, the Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Uniform Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."

On April 25, 2000, having received no Response from the designated respondent, using the same contact details and methods as were used for the Commencement Notification, the WIPO Center transmitted to the parties a Notification of Respondent Default.

Having received this Panelís Statement of Acceptance and Declaration of Impartiality and Independence, on May 25, 2000, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date was June 8, 2000. The Sole Panelist finds that the Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules.

 

4. Factual Background

The Panel finds that the following facts appear from the Complaint and documents submitted with the Complaint and have not been disputed by that the Respondent.

Complainant is the owner of the PUBLISH trademark registered in the United States Patent and Trademark Office on August 13, 1996 (Registration Number 1993302) for a magazine for electronic publishing. Complainantís PUBLISH is a media publication specifically created for graphic design and Web Publishing professionals who use computer technology to produce print, online, interactive and multimedia documents. Complainant also has a web site that covers the same general subjects at www.publish.com and is the registered owner of publish.net.

The Domain Name has not been an active web site since it was registered on January 29, 1998. A certified letter was sent on September 18, 1998, by Complainant to Respondent demanding that it cease and desist use of the Domain Name. No response was received. No use of the Domain Name by Respondent is alleged by the Complainant.

 

5. Partiesí Contentions

A. Complainant

Complainant contends that Respondent has registered as a domain name a mark which is identical or confusingly similar to the trademarks registered and used by Complainant, that the Respondent has no rights or legitimate interests in respect to the Domain Name, and that the Respondent has registered and is using the Domain Name in bad faith.

B. Respondent

Respondent has not contested the allegations of the Complaint.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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." Since all parties are domiciled in the United States, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel will look to the principles of the law of the United States.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: "(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and, (ii) that the respondent has no legitimate interests in respect of the domain name; and, (iii) the domain name has been registered and used in bad faith."

It is not necessary for this Panel to decide whether the Domain Name violates Paragraph 4(a)(i) or 4(a)(ii) 1 of the Policy because Complainant has failed to allege a violation of Paragraph 4(a)(iii). To violate Paragraph 4(a)(iii) of the Policy that the Respondent must both register and use the domain name in question in bad faith. See, e.g., World Wrestling Federation Entertainment, Inc. v. Michael Bosman, Case No. D99-0001 (January 14, 2000). But the Complainant has not alleged facts constituting use in bad faith or, indeed, has alleged use in bad faith at all 2. Paragraph V (12) (3) of the Complaint, which is the only paragraph of the Complaint relevant to this issue, provides:

"If the Respondent had conducted an initial trademark search, he would have had discovered the Publish Trademark which was registered on August 13, 1996. In addition, the domain, PUBLISH.COM was registered on April 2, 1992. Both the trademark and domain registrations were made prior to the Respondentís registration of PUBLISH.ORG on January 29, 1998. Therefore, the Respondent registered his domain in bad faith. [emphasis added]"

Even if one gives the Complaint the benefit of the doubt, the facts most favorable to Complainant that can be gleamed from it is that Respondent has not used the Domain Name at all. While Paragraph 4(b) 3 of the Policy provides some guidance on Paragraph 4(a)(iii) of the Policy, it does not speak to the issue of whether non-use can constitute use in bad faith. That issue has been the subject of other proceedings. See Cellular One Group v. Paul Brien, Case No. D2000-0025 (March 10, 2000). But the facts here are substantially different from those in that case. Unlike the mark in that case, Complainantís trademark is not a coined word, nor was it registered a substantial time prior to Respondentís registration of the Domain Name, nor is it a particularly well know or famous mark, except perhaps in the narrow market segment Complainant serves. Importantly, Complainantís mark is a common English word that could also be used to refer to other products (for example non-electronic publishing) without infringing Complainantís rights.

 

7. Decision

For all of the foregoing reasons, the Panel decides that Complainant has not overcome its burden to prove that the Respondentís Domain Name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, Complainantís request that the registration of the Domain Name {publish.org} be transferred to the Complainant is denied.

 


 

Thomas D. Halket
Presiding Panelist

Dated: June 6, 2000


1. However, the Panel notes that, because of the nature of Complainantís mark, it is an open issue as to whether the Respondent has, or could have, any legitimate interests in respect of the Domain Name.

2. Given the Panelís conclusions on "use in bad faith," it is also not necessary for the Panel to determine whether the Respondent registered the Domain Name in bad faith. However, based on the entirety of the facts alleged in the Complaint, the Panel notes that it is far from clear whether the registration was in bad faith.

3. Certainly none of the criteria for bad faith registration and use given in Paragraph 4(b) are present here.