WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Time Out Group Ltd. v. Marc Jacobson

Case No. D2001-0317

 

1. The Parties

Complainant is Time Out Group Ltd., a United Kingdom company, with its principal place of business at 251 Tottenham Court Road, London, WIP OAB, England. Respondent is Marc Jacobson whose address is 3625 Ingomar Place NW, Washington DC 20015, U.S.A.

 

2. Domain Names and Registrar

The domain names in issue are <timeoutla.com>, <timeoutnyc.com> and <timeoutparis.com>.

The registrant and status of the domain names according to Network Solutions, Inc. is:

Marc Jacobson, whose address at the time of registration was 232 E 54th Street, 4D, New York, NY 10022, U.S.A. The status is active.

Network Solutions, Inc. (NSI), 505 Huntmar Park Drive, Herndon, VA 20170, U.S.A. is the registrar for the domain names <timeoutla.com>, <timeoutnyc.com> and <timeoutparis.com>.

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the Center) received Time Out Group Ltd.ís complaint on March 2, 2001, via email, and on March 6, 2001, in hard copy form. The Center has verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Time Out Group Ltd. has made the required payment to the Center. The formal date of the commencement of this administrative proceeding is March 13, 2001.

On March 8, 2001, the Center transmitted via email to NSI, a request for registrar verification in connection with this case. On March 12, 2001, NSI transmitted via email to the Center, it's Verification Responses, (1) confirming that the registrant of the domain names is as stated above, (2) identifying the administrative contact, (3) confirming that NSI's 4.0 Service Agreement is in effect with respect to the domain names, and (4) stating that the domain names are in ĎActiveí status.

On March 13, 2001, the Center transmitted Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint, to the Respondent via post and email to the addresses identified in the complaint, and also via post and e-mail to the postal address identified in the NSI verification response. The Center advised that (1) the Response was due by April 1, 2001, (2) in the event of default the Center would still appoint a Panel to review the facts and to decide the case, (3) the Panel may draw such inferences from Respondentsí default as it considers appropriate, (4) Time Out Group Ltd. had elected for the matter to be decided by a single panelist who would be appointed within five days of the date the response is due, (5) the fees for the administrative proceeding will be paid in their entirety by Time Out Group Ltd. unless the Respondent chooses to have the case decided by a three-person Panel, (6) the Panel will decide the case within 14 days of its appointment, and (7) the Center can be contacted at stated postal and email addresses, a stated telephone number, and a stated fax number.

On April 6, 2001, the Center transmitted to the parties via email a Notification of Respondent Default advising the Respondent that the Center would proceed to appoint a single-member Administrative Panel which would decide whether to consider a Response, if submitted later, in deciding the case.

On April 25, 2001, the Center transmitted to the parties via email Notification of Appointment of Administrative Panel and Projected Decision Date. The notification advised that Mr. Ross Carson had been appointed as the single panelist, and the decision was due May 9, 2001.

On April 25, 2001, the Center transmitted the file in the case via e-mail and courier to Mr. Carson.

 

4. Factual Background

The Trademarks

The Complaint (paragraph 12) is based on numerous trademark registrations and pending applications in the United States, United Kingdom and Europe for marks consisting in whole or dominant part of TIME OUT, including but not limited to TIME OUT, TIME OUT Plus Design, TIME OUT NEW YORK and TIME OUT NEW YORK Plus Design. The Complainant and its affiliate, Time Out Magazine Ltd. owns registrations or has applied for registration of the trademarks including TIME OUT as shown in Annex D to the Complaint. The TIME OUT mark has been used in commerce in connection with goods and services since at least as early as 1968 and has been in substantial and continuous use in commerce since 1968.

The TIME OUT mark is used in connection with printed and electronic publications featuring information articles, commentary and listings concerning entertainment, dining, theater, leisure, recreation, sports and/or arts activities as well as related information, advertising and electronic publishing services.

Complainant maintains websites located at <www.timeout.com>, <www.timeoutnewyork.com> and <www.timeoutny.com>. The website located at <www.timeout.com> provides information about entertainment and nightlife in cities around the world, including Washington, D.C., Los Angeles, California, New York, New York, and Paris, France. The websites located at <www.timeoutnewyork.com> and <www.timeoutny.com> provide information about entertainment and nightlife in the city of New York.

 

5. Partiesí Contentions

A. Complainant

(i) The Complainant submits that the domain names <timeoutla.com>, <timeoutnyc.com> and <timeoutparis.com> are virtually identical or confusingly similar to the Complainantís registered trademark TIME OUT.

(ii) The Complainant submits that the Respondent has no rights or legitimate interest in respect of the domain names <timeoutla.com>, <timeoutnyc.com> and <timeoutparis.com>.

(iii) The Complainant further submits that the Respondent registered and is using the domain names <timeoutla.com>, <timeoutnyc.com> and <timeoutparis.com> in bad faith for the purpose of selling or otherwise transferring them to Complainant and/or in order to disrupt the business of the Complainant.

(i) Respondentís Time Out Domain Names are Nearly Identical to Complainant's TIME OUT Trademark

Complainant is the owner of the TIME OUT Mark and name, which it has been using since at least as early as 1968 in connection with its business in association with printed and electronic materials as well as related goods and services, regarding events, dining, entertainment and nightlife in cities around the world, including but not limited to Washington, D.C.; Los Angeles, California; Paris, France; and New York, New York.

Complainant submits that it typically uses its TIME OUT Mark in conjunction with a particular city. A guidebook to events, entertainment and nightlife in Washington, D.C. is entitled "Time Out Guide Washington, D.C."; the guidebook on Los Angeles is entitled "Time Out Guide Los Angeles"; the guidebook on New York is "Time Out Guide New York"; the guidebook on Paris is entitled "Time Out Guide Paris". Complainant has also published other "Time Out" guidebooks. Complainant also publishes "Time Out Book of New York Walks", "The Time Out Book of New York Short Stories", "Time Out Book of Paris Walks" and "The Time Out Book of Paris Short Stories". Examples of the covers of these books as well as others using the TIME OUT Mark are attached to the Complaint as Annex E.

Complainant also publishes a weekly magazine featuring information and listings about events, entertainment and nightlife in the city of New York entitled "Time Out New York" (See Annex F). Time Out New York has a current circulation base of approximately 102,500 weekly and in 1999 sold over 5 million copies. Complainant also publishes an annual special edition magazine entitled "Time Out New York Eating & Drinking" (see Annex G).

Complainant also publishes a weekly English-language supplement entitled "Time Out Paris" that appears in the Parisian magazine "Pariscope".

Complainant submits that as a result of Complainantís longstanding and continuous use of the TIME OUT Mark and name, the TIME OUT Mark and name have become well-known in the relevant trade and by the public which identify Complainant as the source of the printed and electronic materials and related goods and services.

Complainant submits that Respondentís domain names are virtually identical to the TIME OUT Mark and name. The domain names <timeoutla.com>, <timeoutnyc.com> and <timeoutparis.com> consist of the TIME OUT Mark and also use the TIME OUT Mark in connection with a specific city on which Complainant provides information, namely la (Los Angeles), nyc (New York City) and Paris, in a manner virtually identical to that in which Complaint uses the TIME OUT Mark.

(ii) Lack of Rights or Legitimate Interest in Domain Names

Complainant asserts that the Respondent has no rights or legitimate interests in respect of the domain names <timeoutla.com>, <timeoutnyc.com> and <timeoutparis.com>. Complainant asserts that there is no evidence that Respondent uses or has used <timeoutla.com>, <timeoutnyc.com> and <timeoutparis.com> or any component thereof as his business name.

Complainant reiterates that Complainant has been using its TIME OUT Mark and name for over thirty years.

(iii) Respondent Has Registered and Is Using the Domain Names in Bad Faith

Communication with the Respondent

Upon discovering Respondentís ownership of the domain names in dispute <timeoutla.com>, <timeoutnyc.com> and <timeoutparis.com>, Complainant sent Respondent a cease and desist letter on May 23, 2000 to the address listed in NSIís WhoIs database requesting that Respondent transfer ownership of the domain names to Complainant. (Annex H to Complaint). The letter was returned marked "Unclaimed" on June 15, 2000.

Complainant commissioned an investigation on June 23, 2000 regarding Respondentís use of the domain names in dispute. The websites located at <timeoutla.com>, <timeoutnyc.com> and <timeoutparis.com> were listed as "under construction"

Complainant submits that the investigation also revealed that Respondent owns at least two other domain names that are identical or nearly identical to famous trademarks of third parties, namely <starwar2000.com> and <wwwibm2000.com>. Printouts of the WhoIs database search results and copies of the STAR WARS and IBM trademarks owned by Lucasfilm Ltd. and International Business Machines, respectively, are attached as Annex I to the Complaint.

Complainant submits that according to its investigation, Respondent stated that he has registered the domain names in dispute in order to work with Time Out in London and New York to deliver Time Out content over the Internet, which evidences Respondentís knowledge of Complainantís prior existing rights in and to the TIME OUT Mark and name prior to Respondentís registration of the domain names in dispute. Complainant submits that Respondent registered the domain names <timeoutla.com>,

<timeoutnyc.com> and <timeoutparis.com> expressly because of their association with Complainantís Mark. Complainant advises that Respondent indicated that he would be willing to sell the domain names in dispute <timeoutla.com>, <timeoutnyc.com> and <timeoutparis.com> to Complainant. Copies of the investigatorís reports are attached to the Complaint as Annex J.

Complainant submits that having ascertained Respondentís new address through the investigator, Complainant re-sent its cease and desist letter to Respondent at the correct address. Respondent claimed he had no intention of using the domain names in dispute in "any way that relates to the content of the Time Out magazines nor in any that competes directly or indirectly with the business of Time Out" (Annex K to Complaint). Complainant submits that Respondent is founder and Chief Technology Officer of Barseen.com, The Nightlife Broadcasting Network, with a website at <www.barseen.com>. <Barseen.com> provides information on entertainment and nightlife in Washington, D.C., Los Angeles and New York. Copies of the webpages are attached as Annex L to the Complaint. Barseen.comís website states that it intends to offer information about nightlife in various cities around the world in the near future (Annex M to Complaint). Complainant submits that <Barseen.com> competes directly with the goods and services offered by Complainant under its TIME OUT Mark, contrary to the denial by Respondent in his letter attached as Annex K.

Complainant submits that Respondentís registration and use of the domain names in dispute <timeoutla.com>, <timeoutnyc.com> and <timeoutparis.com> prevent Complainant, Respondentís competitor, from establishing websites located at <www.timeoutla.com>, <www.timeoutnyc.com> or <www.timeoutparis com>, or from redirecting traffic from those sites to Complainantís established websites. As a result Respondentís registration and use of the domain names in dispute disrupts the business of Complainant.

B. Respondent

Respondent has not filed a Response, or any other formal document, with the Center.

 

6. Discussion and Findings

Paragraph 4.a of the Policy directs that Complainant must prove, with respect to the domain names in issue, each of the following:

(i) The domain names in issue are identical or confusingly similar to the TIME OUT trademark, and

(ii) Respondent has no rights or legitimate interests in respect of the domain names, and

(iii) The domain names have been registered and are being used in bad faith.

Paragraph 4.c of the Policy sets out three illustrative circumstances which, if proved by Respondent, shall demonstrate respondentís rights or legitimate interest to the domain name for purposes of Paragraph 4(a)(ii) above.

Paragraph 4.b of the Policy sets out four illustrative circumstances, which for purposes of Paragraph 4(a)(iii) above shall be evidence of the registration and use of a domain name in bad faith.

a. Identical or Confusing Similarity

Complainant has the burden of proving that the domain names in dispute are either identical to, or confusingly similar to, the Complainantís TIME OUT trademark. Respondentís failure to respond does not relieve Complainant of its burden of proof on this element or on either of the other two elements of Paragraph 4(a) of the Policy. However, Respondentís failure to deny any of Complainantís allegations and evidence permits this panel to take Complainantís allegations and evidence as true and to draw appropriate inferences.

On their face, the domain names in issue <timeoutla.com>, <timeoutnyc.com> and <timeoutparis.com> incorporate the term "TIME OUT" with an abbreviation of a city name or the city name as a suffix.

Confusing similarity turns on the inherent distinctiveness of the trademark, the extent of use of the trademark, the extent of time the trademark has been in use, the nature of the wares, services and business, the similarity in sound, appearance and idea suggested by the trademark and the domain name among other factors.

It is clear that the "TIME OUT" trademark has been used by Complainant in association with guide books and other books in Los Angeles, New York City and Paris and Complainant has provided figures showing the extent of sales of its weekly magazine featuring information and listings about events, entertainment and nightlife in the city of New York entitled "Time Out New York" (see Annex F).

Complainant also submits that its TIME OUT trademark is widely known among Internet users accessing Complainantís websites operated under the domain names <timeout.com>, timeoutnewyork.com and timeoutny.com..

Plainly, confusion is or would be likely in the minds of ordinary Internet users between the TIME OUT trademarks and service marks of the Complainant and the domain names <timeoutla.com>, <timeoutnyc.com> and <timeoutparis.com> in issue here.

This conclusion is reinforced by Respondentís pattern of conduct in registering at least two other trademark-related domain names. Respondentís only purpose in registering such trademark-related domain names must have been to trade on the good will and fame associated with those marks. Specifically, in light of the sale of guide books and other publications in Los Angeles, New York City, Paris and other cities and good will associated with Complainantís TIME OUT trademark and business name, Respondent must necessarily have expected to attract visitors to his website. Confusing similarity is what Respondent has been counting on.

I find that the Respondentís domain names <timeoutla.com>, <timeoutnyc.com> and <timeoutparis.com> are confusingly similar to the Complainantís trademark TIME OUT.

b. Rights or Legitimate Interests

No formal Response has been filed by the Respondent with respect to the Complaint as to the fact that Respondent is not and has not been commonly known by the domain names in issue. The evidence is that the Respondent registered the domain names in dispute with knowledge of the Complainantís TIME OUT trademarks and publication business associated with such trademarks. The Respondent does not operate a business under a name that is identical or even remotely similar to the domain names in issue. The Respondent registered the domain names in dispute on June 22, 1999. On July 7, 2000 the Respondent advised the investigators that the websites were not developed and the domain names were not associated with a product.

With respect to the domain names in issue, by failing to file a Response to the Complaint, Respondent has failed to demonstrate Respondentís rights or legitimate interest to the domain names as set out in Paragraph 4.c of the Policy. The Respondent did not file any statements or evidence to establish:

(i) before any notice to Respondent of the dispute, Respondentís use of or preparations to use the domain name were in connection with a bona fide offering of goods or services,

(ii) Respondent or a related entity has been commonly known by the domain name, and

(iii) Respondent is making legitimate noncommercial or fair use of the domain names in issue, "without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue".

This record demonstrates that Respondent has no rights or legitimate interests in respect of the domain names <timeoutla.com>, <timeoutnyc.com> and <timeoutparis.com>.

c. Registration and Use in Bad Faith

The investigators for the Complainant in a report dated July 7, 2000 (Exhibit J) state that Marc Jacobson advised the investigator that he had registered the domain names in 1999, and attempted to work with Time Out Magazine, in London and New York. Mr. Jacobson advised the investigator that he had hoped that Time Out Magazine would partner with him and his company to deliver the time Out content via the Internet. Mr. Jacobson advised that websites for the domain names in dispute were not developed and that the domain names were not currently associated with any product being offered by Mr. Jacobson.

Mr. Jacobson is one of the founders and the Chief Technology Officer of Barseen.com, The Nightlife Broadcasting Network (<Barseen.com>). Through its website, Barseen.com provides information about entertainment and nightlife in Washington, D.C.; Los Angeles, Cal.; and New York City, New York. (Exhibit L). Mr. Jacobsonís company is in business providing information to locals and visitors as to the places to go and events to see in each of the cities. Mr. Jacobsonís company does not use any of the domain names in dispute in association with its business.

Marc Jacobson is also the registrant of "starwar2000.com" and "wwwibm2000.com". The evidence of registration of domain names incorporating well known registered trademarks of third parties is evidence of bad faith registration of third party trademarks. In a telephone call with the investigator recorded in the investigatorís Supplemental Report Mr. Jacobson advised that he would consider selling the domain names in dispute. Websites have not been developed by the Respondent for the domain names in dispute.

The Complainantís evidence disclosed that the Respondent registered the domain names in dispute with knowledge of the Complainantís business reputation and market in New York City, Los Angeles and Paris for guidebooks and associated publications relating to the cityscape. The Respondent has not developed any website for the domain names in dispute. The Respondent is carrying on a business of informing people in or visiting Washington, New York City and Los Angeles of night life activities in those cities, the same type of information provided by the Complainant through its periodicals and websites. The Respondent is using the domain names in dispute in bad faith by preventing the Complainant from registering the domain names incorporating the trademark and holding the confusing domain name registrations with the possibility of selling the domain names to others requiring the Complainant to conduct further litigation to protect its registered and common law rights in the trademark TIMEOUT used alone or as a suffix.

The Respondent has registered and has used the domain names <timeoutla.com>, <timeoutnyc.com> and <timeoutparis.com> in bad faith.

d. Conclusion

As submitted by Complainant and inferred from the undisputed facts as to Respondentsí conduct, the Complainant has proved each of the three elements required by Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy.

 

7. Decision

The panel has jurisdiction of this dispute. Respondent has received notice of the commencement of this proceeding, the Policy, the Complaint, and the consequences of Respondentís default. Respondent has been afforded due process.

With respect to the request for transfer of the domain names <timeoutla.com>, <timeoutnyc.com> and <timeoutparis.com> the Panel decides that Complainant has proved: (a) the domain names in issue here are confusingly similar to the Complainantís registered trademark, (b) Respondent has no rights and no legitimate interests in respect of the domain names in issue, and (c) the domain names in issue have been registered and are being used in bad faith by Respondent.

Accordingly, the Panel requires that the registration of the domain names <timeoutla.com>, <timeoutnyc.com> and <timeoutparis.com> be transferred to the Complainant.

 


 

Ross Carson
Panelist

Dated: May 7, 2001