WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Primedia Magazine Finance Inc. v. Next Level Productions
Case No. D2001-0616
1. The Parties
The Complainant is Primedia Magazine Finance Inc. of 717 Fifth Avenue of New York, NY 10022, United States of America.
The Respondent is Next Level Productions of 3172 7th Avenue Vancouver BC, V6K 2A1, Canada.
2. The Domain Name and Registrar
The domain name at issue is <tigerbeat.com>.
The registrar is Network Solutions Inc.
3. Procedural History
The Complaint was filed on April 30, 2001. WIPO verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The panelist is satisfied this is the case.
The Complaint was properly notified in accordance with Rules, paragraph 2 (a). No formal Response was filed by the Respondent who is in default. The administrative panel was properly constituted. The undersigned panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by WIPO or the Panel as a consequence of which the date scheduled for the issuance of the Panelís decision was June 18, 2001.
4. Factual Background
The Complainant is a publisher of special interest magazines and is the owner of TIGERBEAT magazine which has been published by the Complainant or its predecessors since 1965. The Respondent offers web site design services and was engaged by the Complainantís predecessor to design the web site for its TIGERBEAT magazine.
5. Partiesí Contentions
This Complaint stated:
The manner in which the domain name is identical or confusing.
Complainant is a leading publisher of special interest magazines and the host of related web sites. Complainant and its predecessors have published TIGER BEAT Magazine monthly since 1965. The complainantís TIGER BEAT Magazine features articles about fashion, beauty, health, careers, relationships, sports and entertainment.
Complainant's TIGER BEAT Magazine is oriented to teenagers and young adults and has a regular monthly readership of approximately 55,000 people. Gross revenue attributable to TIGER BEAT Magazine was almost U.S. $2 million in 2000, including advertising revenue of more than U.S. $160,000. Advertising revenue in 2001 is projected to be U.S. $805,000. Complainant spent almost U.S. $300,000 to advertise and promote TIGER BEAT in 2000 and is projected to spend approximately U.S. $1,050,000 for that purpose in the present year.
Complainant and its predecessors began using the trademark TIGER BEAT over 35 years ago, well before Respondent registered the <tigerbeat.com> domain name.
The relevant portion of Respondentís domain name <tigerbeat.com> is identical or confusingly similar to Complainantís registered trademark TIGER BEAT in that, other than the space between the two words, it is exactly the same as Complainant's registered trademark.
As set forth more fully below, Complainant has demanded that Respondent refrain from using the <tigerbeat.com> domain name and transfer the domain name to Complainant. Respondent has attempted to extract an exorbitant payment from Complainant for the domain name.
Why Respondent should be considered as having no rights or legitimate interest in the domain name
Complainant's predecessor, The Sterling/MacFadden Partnership ("Sterling/MacFadden"), hired Respondent as an outside contractor to design a web site for TIGER BEAT Magazine. Sterling/MacFadden provided Respondent with photographs and textual copy from TIGER BEAT Magazine. Respondent designed the web site for TIGER BEAT Magazine using the materials provided and displayed it at the URL address <www.tigerbeat.com>.
There were no agreements between Sterling/MacFadden and Respondent relating to ownership of the domain name. However, the domain name <tigerbeat.com> was specifically registered for use in connection with the web site for Sterling/MacFadden's TIGER BEAT Magazine. Respondent had no rights or interest in the TIGER BEAT trademark, which was owned at the time by Sterling/MacFadden. Respondent nevertheless registered the domain name <tigerbeat.com> listing itself as the Registrant, rather than Sterling/MacFadden.
Because Respondent registered the domain name for the ultimate use by Sterling/MacFadden, it was acting as an agent of Sterling/MacFadden and must be held to have registered the domain name on Sterling/MacFadden's behalf. See Kinko's, Inc. v. eToll, Inc., No. FA94447 (Nat'l Arb. Forum, May 27, 2000) (respondent had no rights or legitimate interest in domain name which it registered "for the ultimate use of the Complainant"); Nike Inc. v. Granger & Assoc., No. D2000-0108 (WIPO, May 2, 2000) (developer of "in-depth virtual and on-line marketing concept" that registered domain name in its own name did so "for an on behalf of the Complainant" and had no rights or legitimate interest in domain name), D; Fishtech, Inc. v. Rossiter, No. FA92976 (Nat'l Arb. Forum, March 10, 2000) (web site designer hired by complainant who registered domain name in his company's name did so "acting as an agent of" complainant and had no rights or legitimate interest in domain name).
In December 1998, Complainant acquired TIGER BEAT Magazine from Sterling/MacFadden. Complainant acquired all of Sterling/MacFadden's trademark rights in the TIGER BEAT name, and in the domain name <tigerbeat.com> and the TIGER BEAT web site as part of the asset purchase.
For approximately two years after Complainant purchased TIGER BEAT Magazine, Respondent displayed outdated content from the magazine on the <tigerbeat.com> web site. The web site displayed old articles, pictures and letters from the editor and had broken links on the home page. Despite a request from the editor of TIGER BEAT Magazine to take it down, Respondent continued to display the same out-of-date content, to the detriment of Complainant's reputation and famous TIGER BEAT trademark.
Respondent recently removed the outdated content from the <tigerbeat.com> web site. Respondent now uses the domain name <tigerbeat.com> to misleadingly divert consumers to its web site on which it advertises its Next Level online entertainment, web hosting and design services.
Respondent does not own a trademark or service mark registration that is identical, similar, or in any way related to Complainantís TIGER BEAT mark or the <tigerbeat.com> domain name. TIGER BEAT is not Respondentís personal name and Respondent is not engaged in any business or commerce under the company name TIGER BEAT. Respondent is not a licensee of Complainant. Respondent has never been authorized by Complainant or its predecessors to register the <tigerbeat.com> domain name for Respondent's own benefit or to use Complainant's trademark in connection with Respondent's Next Level online entertainment, web hosting and design services.
Why the domain name should be considered as having been registered and used in bad faith
As alleged above, Respondent registered the domain name <tigerbeat.com> in its own name, rather than in the name of Complainant's predecessor, even though it knew the domain name was to be used in connection with the web site for TIGER BEAT Magazine, which Respondent had been hired to design for the benefit of Complainant's predecessor.
Upon information and belief, Respondent listed itself as the Registrant of the <tigerbeat.com> domain name and continues to use it because it is identical or confusingly similar to Complainant's famous TIGER BEAT mark, in order to divert Internet users to Respondent's web site for commercial gain at the expense of Complainant's trademark. See Kasparov v. American Computer Co., No. FA094644 (Nat'l Arb. Forum, May 30, 2000) (domain name registered and used in bad faith where respondent "registered and acquired the domain name . . . primarily for Complainants' purposes" and "for the benefit of Complainant," but used it as a "portal" to its own web site).
Complainant wrote to Respondent concerning the <tigerbeat.com> domain name on November 29, 1999. Respondent did not respond to the letter.
After repeated follow-up efforts from Complainant, Respondent's principal, Benny Doro, finally called complainant on December 28, 2000 and indicated a willingness to discuss the domain name. On February 8, 2001, Mr. Doro indicated that he would make an offer regarding the <tigerbeat.com> domain name.
On February 12, 2001, Mr. Doro sent an email to Complainant requesting "$400,000 cash or a lease of $5,000 a month" and stating, "Our company may be able to help you with your web efforts as well.".
Respondent's request for payment that far exceeds its out-of-pocket expenses associated with the <tigerbeat.com> domain name is strong evidence of Respondent's bad faith. See A.P. Moller v. Web Society, No. D2000-0135 (WIPO, April 15, 2000) (finding bad faith where respondent offered "to sell the disputed domain names to the complainant for sums in excess of its out-of-pocket costs related to the names"). The fact that Complainant, rather than Respondent, initiated the negotiations is not relevant to a determination that Respondent acted in bad faith. See Drew Kaplan Agency, Inc. v. Dak.com, No. FA94328 (Nat'l Arb. Forum, May 16, 2000), attached as Exhibit K; United States Olympic Committee v. MIC, No. D2000-0189 (WIPO, May 4, 2000) (finding bad faith where Respondent stated, "You can have this domain in no time if you come up with reasonable offer not 1000 dollars"). While Complainant would have been willing to consider some minimal payment to avoid litigation expenses, it never suggested or indicated a willingness to pay an exorbitant fee far exceeding Respondent's actual expenses.
Respondent's simultaneous offer to "help" Complainant with its "web efforts," an attempt to gain business from Complainant for its Next Level web hosting and design services, is further evidence of Respondent's bad faith. See Yageo Corp. v. OneWorld, No. FA95702 (Nat'l Arb. Forum, Nov. 13, 2000) (registration of domain name "in order to create an opportunity to discuss with Complainant an investment proposal" evidence of bad faith); Metallica v. Josh Schneider, No. FA95636 (Nat'l Arb. Forum, Oct. 18, 2000) (UDRP "was broadly constructed as to provide for relief when the infringing domain name holder seeks transfer of the domain name for something valuable other than money").
For all the foregoing reasons, Complainant asserts that the domain name <tigerbeat.com> registered by Respondent is identical or confusingly similar to a trademark in which Complainant has rights, that Respondent has no right or legitimate interest in or to the domain name, and that Respondent registered and is using the domain name in bad faith. Accordingly, Complainant respectfully requests that the registration of Respondent's domain name <tigerbeat.com> be transferred to Complainant.
The Respondent has not filed a formal Response and is in default.
6. Discussion and Findings
According to paragraph 4(a) of the Uniform Dispute Resolution Procedure Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Identical or confusing similarity
It is obvious that the Domain Name is virtually identical to the Complainantís TIGERBEAT mark and, therefore, that they are confusingly similar.
Rights or Legitimate Interest of the Respondent
The Respondent has not filed a Response and does not appear to have any rights or legitimate interest in the Domain Name.
Paragraph 4 (b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including
"[the Respondent] has registered or has 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 trade mark or service mark or to a competitor of that complainant for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name"; and
"by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on line location, by creating a likelihood of confusion with the Complainantís mark as to the source, affiliation or endorsement of [its] web site or location or of a product or service on [its] web site or location."
In the absence of a Response from the Respondent, there appears to be no explanation other than that the Respondent registered the Domain Name in bad faith with an intent to profit by eventual sale of the name to the Complainant or another third party for profit and/or to attract business to its web design services website by causing confusion on the Internet by use of the Complainantís TIGERBEAT mark. The Respondent has made no attempt to counter the Complainantís allegations that the Respondent was engaged by the Complainantís predecessor to design the web site for the Complainantís TIGERBEAT magazine and that the Respondent was entrusted with the task of registering the Domain Name for the Complainantís predecessor. Accordingly, the conclusion that must be drawn is that the registration by the Respondent in its own name was carried out in bad faith.
In the light of the foregoing, the panelist decides that the Domain Name is confusingly similar to the Complainantís trade mark and the Respondent has no rights or legitimate interests relating to the Domain Name which was registered and used in bad faith.
Accordingly, the panelist requires that the registration of the domain name <tigerbeat.com> be transferred to the Complainant.
Dated: June 18, 2001