WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gruner + Jahr Printing & Publishing Co. v. Global Media Consulting
Case No. D 2000-1395
1. The Parties
Complainant is Gruner + Jahr Printing & Publishing Co ("G+J"), a Delaware partnership with its principal place of business at 375 Lexington Avenue, New York, New York 10017, U.S.A. Respondent is Global Media Consulting. ("Global Media"). According to the registration, the registrantís address is Box 425, Miami, Florida 33283, U.S.A., and its administrative contact is listed as "This Domain For Sale., Mike Torres," and the email address is email@example.com.
2. The Domain Name and Registrar
The domain name at issue is <familycircl.com> registered with Network Solutions, Inc. ("Network Solutions").
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of G+J on October 16, 2000, by email, and on October 18, 2000, in hardcopy. Complainant made the required fee payments. On October 17, 2000, the Center acknowledged the receipt of the Complaint to Complainantís authorized representative, and assigned Case No. D 2000-1395 to this matter.
On October 17, 2000, the Center requested Network Solutions to verify the registration data. By email of October 29, 2000, Network Solutions confirmed that it is the Registrar of the domain name registration and, inter alia, that Global Media is the current registrant.
Having verified that the Complaint satisfies the formal requirements of ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules" and "Supplemental Rules"), the Center on October 31, 2000, sent to Respondent, with a copy to Complainant, a notification of the commencement of the administrative proceeding, together with a copy of the Complaint. The formal date of the commencement of this administrative proceeding is October 31, 2000.
Respondent never filed a formal response to the Complaint and a notice of default was sent to it on November 27, 2000.
On December 14, 2000, after receiving a completed Statement of Acceptance and Declaration of Impartiality and Independence, the Center advised the parties that it had appointed Thomas L. Creel as a single panelist to resolve this dispute (the "Presiding Panelist").
This decision is based on the information contained in the above documents.
4. Factual Background
Complainant has registered the trademark FAMILY CIRCLE® and has used it as the title of a magazine in the United States since at least as early as 1932. FAMILY CIRCLE® magazine is issued seventeen times a year with a circulation in the United States of over five million annually. G+J currently holds at least thirteen United States trademark registrations for its family of FAMILY CIRCLE trademarks, under the following registration numbers: 858,969, 1,556,771, 1,834,866, 1,868,208, 1,926,008, 1,953,970, 2,013,718, 2,236,837, 2,236,886, 2,259,350, 2,321,312, 2,325,972, and 2,355,647. Complainant has also filed at least seven new applications to register the trademark FAMILY CIRCLE for a variety of goods and services, including general interest books, a general interest on-line magazine, decorative and kitchen items, and apparel. Complainant also holds trademark registrations for the mark FAMILY CIRCLE® in twenty-seven foreign countries and the Commonwealth of Puerto Rico.
Complainant has a significant presence on the Internet. Among the domain names that incorporate Complainantís trademark, currently registered and used by Complainant to promote and offer its products and services, are familycircle.com and .org, buyfamilycircle.com, familycircletravel.com, .net and.org.
On March 2, 2000, Respondent registered the domain name <familycircl.com> with Network Solutions. Respondentís registration information listed the Registrant of <familycircl.com> as Global Media Consulting (FAMILYCIRCL-DOM), Box 425, Miami, Florida 33283, U.S.A., and its administrative contact is listed as "This Domain for Sale., Mike Torres." The phone number is (305) 659-3157, and the email address is firstname.lastname@example.org.
5. Partiesí Contentions
Complainant has requested that the domain name be transferred to Complainant because:
(1) the domain name <familycircl.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests with respect to the domain name; and
(3) Respondentís domain name was registered and used in bad faith because, inter alia, Respondent has registered the domain name <familycircl.com> for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant or to a competitor of Complainant for valuable consideration in excess of its out-of-pocket costs directly related to the domain name.
6. Discussion and Findings
The policy is addressed to resolving disputes concerning allegations of abusive domain name registration.
Paragraph 4(a) of the Policy establishes three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which a complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondentís domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief. They will be addressed separately below, after first addressing jurisdiction.
I Jurisdiction and Procedure
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include giving a respondent notice of proceedings that may substantially affect its rights. The policy and the Rules establish procedures intended to assure that respondents are given adequate notice of the proceedings initiated against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).
Network Solutions identified Global Media as the registrant. WIPO mailed the Complaint to Global Media, Attention: Mike Torres, Box 425, Miami, Florida 33283, U.S.A. on October 31, 2000. WIPO e-mailed the Complaint to email@example.com, firstname.lastname@example.org, email@example.com, all of the e-mail addresses associated with this registration, on October 31, 2000.
Respondent was given an opportunity to tell its side of the story by formally responding to the Complaint. It did not do so and was notified that it was in default. It was informed of the consequences of the default. Namely, that the Panel would be informed of the default and would have sole discretion to consider Respondentís later response to the Complaint and that the Center, notwithstanding the default, would continue to send all case related communication to Respondent.
In this case, the Presiding Panelist is satisfied that WIPO took all steps reasonably necessary to notify Respondent of the filing of the Complaint, of initiation of these proceedings, and allowed sufficient opportunity to Global Media to respond. Formal notice was given to Global Media. Therefore, this Tribunal has jurisdiction to decide this dispute as presented.
II The Identity or Confusing Similarity of the Domain Name with the Trademark or Service Mark
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.
Complainantís mark, FAMILY CIRCLE®, is a registered trademark which has acquired secondary meaning nationwide.
Respondent has registered the domain name "familycircl.com." This domain name is identical to Complainantís trademark FAMILY CIRCLE®, except that (1) the domain name adds the generic top-level domain name ".com," (2) the domain name employs lower case letters, while the registered trademark is generally used in all capitals, and (3) the domain name omits the letter "e" at the end of the mark.
The addition of the generic top-level domain name ".com" is inconsequential because the use of a generic top-level domain name is required of domain name registrants, and ".com" does not serve to identify a specific enterprise as a source of goods or services. Insofar as domain names are not case sensitive, the Panel concludes that the use of lower case letters in "familycircl.com" does not change the fact that the domain name is similar to the trademark FAMILY CIRCLE®.
The term "familycircl" is very similar to "family circle" in its visual impression. Pronunciation of the two terms is identical, which makes them homonyms. The domain name "familycircl" could be a misspelling of the trademark FAMILY CIRCLE®. Other Administrative Panel decisions have held that domain names containing common misspellings of the trademarks of others to be confusingly similar to such trademarks. See Neuberger Berman Inc. v. Jacobsen, Case No. D2000-0323, (Neuberger Berman servicemark vs. newbergerberman.com domain name); Microsoft Corp. v. Microsof.com, Case No. D2000-0548, (Microsoft trademark vs. microsof.com domain name); Dow Jones & Co. v.Zuccarini, Case No. D2000-0578, (The Wall Street Journal trademark vs. wallstreetjounal.com and wallstreetjournel.com domain names); Estee Lauder Inc. v. estelauder.com, Case No. D2000-0869 (Estee Lauder trademark vs. estelauder.com and estelauder.net domain names). An Internet user or consumer viewing the term "familycircl" is likely to confuse it with FAMILY CIRCLE®.
Therefore, the Panel finds that Respondentís domain name <familycircl.com> is confusingly similar to Complainantís trademarks or service marks. Respondentís use is likely to cause confusion, mistake or deception as to the affiliation, connection or association between Complainant and Respondent and/or the sponsorship or endorsement of Respondentís website by Complainant. Therefore, the requirement of paragraph 4(a)(i) is met.
III Rights or Legitimate Interests in Respect of the Domain Name
Paragraph 4(c) of the Policy enumerates how a respondent may establish rights to and legitimate interests in a domain name. These include the following circumstances: (i) before any notice to Respondent of the dispute, Respondentís use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent has not filed a response to the Complaint. Complainant has alleged that Respondent has no legitimate rights or interests in the name. The Panel finds nothing in the record which would indicate that Respondent has any rights or legitimate interests in the domain name. Indeed, the Panel finds the record establishes it does not. The record shows that Respondent has not used the domain name in connection with any bona fide offering of goods or services, is not commonly known by the domain name, and has not made any legitimate noncommercial or fair use of the domain name.
Therefore, the requirement of Paragraph 4(a)(ii) of the Policy has been fulfilled by Complainant.
IV Bad Faith
The third element Complainant must prove is in the conjunctive: the domain name "has been registered" and "is being used in bad faith."
The Policy provides in Para 4(b):
"b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name . . . ."
(ii) Complainant presented sufficient evidence of Respondent registering the domain name <familycircl.com> for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant or to a competitor of Complainant, for valuable consideration in excess of its out-of-pocket costs directly related to the domain name.
(iii) Complainant points out that Respondent owns a number of domain names that are common misspellings of well-known trademarks, e.g., <rayovacs.com>, <topperware.com>, <bestwestrn.com>, <hitashi.com>, <maxwelhouse.com>, <americanepress.com>, <marykaye.com>, <gatorades.com>, <packardbells.com>, and <bankofamericas.com>. Respondent currently offers many of these domain names for sale, including <familycircl.com>. In the Administrative Contact section of its registrations for <familycircl.com>, <topperware.com>, <bestwestrn.com>, <hitashi.com>, <maxwelhouse.com,> <americanepress.com>, <marykaye.com>, <gatorades.com>, <packardbells.com>, Respondent lists "This Domain for Sale., Mike Torres." The offer for sale of a well-known trademark, albeit not for a specified sum of money, means that the Respondent intended to sell the domain name to Complainant or its competitors for valuable consideration in excess of its out-of-pocket costs. See Gateway Inc. v. Bellgr, Inc., Case No. D2000-0129; Apple Computer, Inc. v. Domain-House.com, Inc., Case No. D2000-0341; Burlington Coat Factory Warehouse Corporation v. Naiyer Imam, Case No. D2000-0485. Moreover, registration of numerous domain names that incorporate well-known trademarks of parties not before the Panel, for which the registrant could not reasonably make legitimate use, are evidence of both a lack of legitimate interest and bad faith use and registration under the Policy. See Nabisco Brands Co. v. Patron Group, Inc., Case No. D2000-0032.
(iv) There has never been an active web site at familycircl.com. Respondent is not offering the sale of any goods or services under the name "family circl," nor has it conducted any business under the name "family circl."
(v) Respondent also failed to respond to a cease and desist letter sent by G+J on August 24, 2000 complaining about Respondentís registration of the domain name <familycirl.com> and requesting transfer of the domain name. See Mars, Incorporated v. Vanilla, Ltd., Case No. D2000-0586, wherein the Panel stated "Although a registrant has no obligation to respond to or acknowledge unsolicited inquiries from others about its domain name, a lack of response raises the possibility that the contact information is incorrect or that the registration was obtained for a bad faith purpose. Therefore, one expects that a good faith registrant would provide some reply to reasonable inquiries."
(vi) Finally, Global Media Consulting is not a legal entity, nor does it appear to be a registered name under which Respondent or its Administrative Contact is doing business. Respondentís provision of false contact information constitutes further evidence of Respondentís bad faith. See Telstra Corp. v. Nuclear Marshmallows, Case No. D2000-003; Quixtar Investments, Inc. v. Smithberger, Case No. D2000-0138; and Pharmacia & Upjohn Company v. Xanax Advocates, Case No. D2000-0817.
Considering all of the evidence, the Panel finds that the Respondent both registered and used the domain name in bad faith. Therefore, the requirements of paragraph 4(a)(iii) of the Policy have been established.
Complainant has proved the necessary elements that the domain name is identical or confusingly similar to its trademark or service mark, that Respondent has no rights or legitimate interests in the domain name, and that Respondent registered the domain name in bad faith and is using it in bad faith. Therefore, the remedy requested by Complainant is granted. Respondent is required to transfer the domain name <familycircl.com> to Complainant.
Thomas L. Creel
Dated: January 4, 2001