WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

PRIMEDIA Magazine Finance Inc. v. Yelena M. Wright

Case No. D2001-1007

 

1. The Parties

The Complainant is Primedia Magazine Finance Inc. of 717 Fifth Avenue, New York, New York, 10022, United States of America. The Complainant is represented by Richard S. Mandel of Cowan, Liebowitz & Latman, P.C., of 1133 Avenue of the Americas, New York, New York 10036-6799, United States of America.

The Respondent is Yelena M. Wright of P.O. Box 34388, Las Vegas, Nevada, 89133, United States of America. The e-mail address of the Respondent is enigma@sierranv.net.

 

2. The Domain Name and Registrar

The disputed domain names are <teenbeatmagazine.com> and <tigerbeatmagazine.com> (the "Disputed Domain Name(s)"), both registered with Tucows Inc., of 96 Mowat Avenue, Toronto, ON M6K 3M1, Canada (the "Registrar").

 

3. Procedural History

Complainant filed a complaint (the "Complaint") with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") via e-mail on August 7, 2001.

The Center verified that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Uniform Policy"), the ICANN Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules"), and the WIPO Center Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), in accordance with paragraph 4(a) of the Rules, and paragraph 5 of the Supplemental Rules. The Administrative Panelist (the "Panel") is satisfied that the Complaint satisfied the Rules and Supplemental Rules.

A Request for Registrar Verification was issued by the Center to Tucows. Inc. on August 10, 2001, and a verification response by the Registrar was received by the Center that same day.

A Formal Notification of Complaint and Commencement of the Administrative Proceeding (the "Commencement Notification") was communicated by the Center to the Respondent by e-mail and courier on August 13, 2001. The Panel is satisfied that the delivery of the Commencement Notification is in conformity with the relevant requirements under Paragraph 2 and Paragraph 4 of the Uniform Rules and the relevant provisions of the Supplemental Rules.

Complainant, citing an agreement with the Respondent regarding transfer of the Disputed Domain Names, requested a suspension of proceedings by e-mail on August 16, 2001. The request was granted by the Center on August 17, 2001, in a Notification of Suspension of Administrative Proceeding (the "Suspension Notification") that suspended the proceeding until September 1, 2001.

Complainant, citing an inability to conclude an agreement with the Respondent as well as difficulties associated with the events of September 11, 2001, further requested, on September 12, 2001, an extension of the suspension of proceedings until October 1, 2001. This request was granted on September 13, 2001 by the Center in another Suspension Notification.

On September 28, 2001, Complainant, citing an inability to come to agreement with the Respondent, requested that the proceeding be reinstated on an expedited schedule. The Center reinstated the proceeding on October 1, 2001 and set the Response deadline as October 17, 2001.

No Response was received by the Center from Respondent on or before October 17, 2001, which was the last date for Respondent to submit a Response under Paragraph 5 of the Uniform Rules and the relevant provisions of the Commencement Notification. A Notification of Respondent Default (the "Default Notification") was communicated by the Center to Respondent by e-mail on October 24, 2001. The Panel is satisfied that the Default Notification was effectively delivered to Respondent as required by relevant provisions of the Uniform Rules and the Supplemental Rules.

Complainant has elected to designate a single-member Administrative Panel in accordance with Paragraph 3(b)(iv) of the Uniform Rules. By failing to submit a Response on time, Respondent waived the right to designate a three-member Administrative Panel under Paragraph 5(b)(iv) of the Uniform Rules. Based on a Statement of Acceptance and Declaration of Impartiality and Independence, duly signed by the Panelist and dated October 24, 2001, the Panel was duly appointed by the Center on October 25, 2001. A Notification of Appointment of the Panel and Projected Decision Date was communicated by the Center to both Complainant and Respondent on October 25, 2001. There have been no further submissions thereafter. The date scheduled for the issuance of the Panelís decision is November 8, 2001.

 

4. Factual Background

Under Paragraph 5(e) of the Uniform Rules, "[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the panel shall decide the dispute based on the complaint."

Since Respondent failed to submit a Response before the date of this decision, and in the absence of any exceptional circumstances, the Panel adopts here the following asserted facts in the Complaint as undisputed facts, and decides the dispute between Complainant and Respondent based on all evidence available, including the following undisputed facts:

(i) Complainant is a company that publishes special interest magazines and hosts web sites that are related to the magazines. Complainant and its predecessors have published the TIGER BEAT Magazine monthly since 1965 and TEEN BEAT Magazine monthly since 1976.

(ii) Complainant is the sole and exclusive owner of the following trademark registrations in the United States Patent and Trademark Office: TEEN BEAT, Reg. No. 1,113,590; TEEN BEAT ALL STARS, Reg. No. 2,348,184; TIGER BEAT, Reg. No. 2,263,039. Complainant also filed an application with the United States Patent and Trademark Office to register TIGER BEAT and Design on July 7, 1998. The application is still pending and the Serial Number is 75/514588.

(iii) Complainant and its predecessors began using the trademark TEEN BEAT over 25 years ago and the trademark TIGER BEAT over 35 years ago, both well before Respondent registered the Disputed Domain Names in November 2000.

(iv) On July 17, 2001, Complainant sent a protest letter to the Respondent stating Complainant owned the TEEN BEAT and TEEN BEAT ALL STARS marks and demanding that Respondent cease and desist from use of the Disputed Domain Names and surrender them to Complainant. Complainant received no response to the protest letter.

 

5. Partiesí Contentions

Complainant asserts:

(i) The Disputed Domain Names are identical or confusingly similar to Complainantís existing and pending marks.

The Disputed Domain Names, <teenbeatmagazine.com> and <tigerbeatmagazine.com>, have combined the exact marks used by Complainant by eliminating the space between the words TEEN BEAT and TIGER BEAT and adding the word "Magazine," which describes the product covered by Complainantís registrations and sold by Complainant under the TEEN BEAT and TIGER BEAT marks.

(ii) Respondent does not have any rights or legitimate interests in the Disputed Domain Names.

Respondent does not own a trademark or service mark registration that is identical, similar or in any way related to Complainantís TEEN BEAT or TIGER BEAT trademarks.

Neither TEEN BEAT, nor TIGER BEAT is Respondentís personal name, and Respondent does not actually engage in any business or commerce under the name TEEN BEAT or TIGER BEAT.

Respondent cannot show that it is using the Disputed Domain Names to make a bona fide offering of goods and services. Instead, the web sites associated with the Disputed Domain Names feature pornographic adult cartoons and a link directing users to another similar site (<adultcartoonmagazine.com>). This use of Complainantís registered trademarks is calculated to mislead consumers and tarnish Complainantís marks, and thus, does not constitute a bona fide offering of goods and services.

Respondent has no basis to assert that it has been commonly known by the Disputed Domain Name. Respondentís adult content on the websites associated with the Disputed Domain Names in no way justifies the use of the terms TEEN BEAT or TIGER BEAT within the domain names. Respondentís decision to use two different domain names containing marks used by the Complainant reflects a deliberate decision to use the fame and goodwill associated with these related publications.

The fact that Respondent registered two separate domain names corresponding exactly to Complainantís trademarks also constitutes proof that Respondent had actual knowledge of Complainantís superior rights. Respondent had, at a minimum, constructive knowledge of Complainantís trademarks by virtue of Complainantís United States registrations. A trademark search would have revealed Complainantís prior rights to the names used in the domain names.

Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant or its predecessors to use the trademarks TEEN BEAT or TIGER BEAT, or to register the <teenbeatmagazine.com> or <tigerbeatmagazine.com> domain names.

(iii) The Disputed Domain Names have been registered and are being used by Respondent in bad faith.

Respondent's use of domain names containing Complainant's identical marks is inherently deceptive and is likely to confuse Internet users as to the source, sponsorship, affiliation or endorsement of Respondent's site.

Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation or endorsement of Respondent's website. Respondent has deliberately and misleadingly sought to divert potential users of Complainant's site to Respondent's site, and has tarnished Complainant's goodwill by using confusingly similar names in order to furnish pornography.

There is no plausible good faith explanation for why Respondent would have registered two different domain names containing the precise names of related magazines published by Complainant. The only conceivable explanation is that Respondent wished to benefit from the public recognition and goodwill associated with those magazines for Respondent's own commercial benefit.

Complainant will suffer substantial damage as a result of the linkage of the confusingly similar domain names <www.teenbeatmagazine.com> and <www.tigerbeatmagazine.com> to a pornographic website. Such an association with a pornographic website can in and of itself constitute evidence of Respondent's bad faith.

Respondent also demonstrates bad faith because registration of the domain names <teenbeatmagazine.com> and <tigerbeatmagazine.com> postdates Complainant's use and registration of the trademarks TEEN BEAT and TIGER BEAT. U.S. trademark law provides that a person is charged with constructive notice of a registered trademark.

Moreover, Respondent was put on notice of Complainant's claim of prior rights in the TEEN BEAT name and mark, and of Complainant's concern as to the harm that would be caused to it by Respondent's use of the Disputed Domain Name <teenbeatmagazine.com> to provide pornographic content. Respondent did not respond to Complainant's protest letter, which demanded that Respondent cease and desist from using the domain name in the offending manner. Respondent continued to use the <teenbeatmagazine.com> domain name to provide pornographic adult cartoons despite Complainant's written protest.

Following the Complainant's delivery of a protest letter to the Respondent relating to the domain name <teenbeatmagazine.com>, Complainant learned that Respondent had also registered and used the domain name <tigerbeatmagazine.com> to direct users to the same pornographic website. This strengthens the showing of bad faith by proving that Respondent's actions were not mistaken or accidental, but part of a deliberate effort to ride on the success and fame of Complainant's publications. There is no credible explanation for how Respondent could have innocently chosen two different titles that correspond exactly to two related magazines published by Complainant, and chosen both of them for use in directing traffic to Respondent's pornographic site.

The Respondent failed to submit a timely Response. Pursuant to Paragraph 5(e) of the Uniform Rules, in the absence of a Response from the Respondent, "the Panel shall decide the dispute based on the complaint." The Panel will independently determine the merits of the Complaint on the basis of all evidence available.

 

6. Discussion and Findings

(i) The Disputed Domain Names are identical or confusingly similar to the trademarks in which Complainant has rights.

Paragraph 4(a)(i) of the Policy asks whether the Disputed Domain Names are identical or confusingly similar to the trademarks in which Complainant has rights. The Disputed Domain Names are identical or confusingly similar in their functional parts to Complainantís existing trademarks in TEEN BEAT and TIGER BEAT. The Disputed Domain Names, <teenbeatmagazine.com> and <tigerbeatmagazine.com>, have combined the exact marks used by Complainant by eliminating the space between the words TEEN BEAT and TIGER BEAT and adding the word "Magazine," which describes the product covered by Complainantís registrations and sold by Complainant under the TEEN BEAT and TIGER BEAT marks.

Thus, the Panel finds for the Complainant on the first element, that Respondentís domain name is identical or confusingly similar to the service mark in which the Complainant has rights.

(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.

Paragraph 4(a)(ii) of the Policy inquires as to whether or not the Respondent has any rights or legitimate interests vested in the Disputed Domain Names. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the Disputed Domain Names in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has commonly been known by the Disputed Domain Names; and (iii) legitimate non-commercial or fair use of the Disputed Domain Names.

Respondent has not submitted a Response and therefore, has not provided any evidence in support of a right or legitimate interest vested in the Disputed Domain Names. Pursuant to Paragraph 5(e) of the Uniform Rules, in the absence of a Response from the Respondent, "the Panel shall decide the dispute based on the complaint."

With respect to Policy Paragraph 4(c)(i), Respondent can possibly make a claim that it is using at least one of the Disputed Domain Names in connection with a bona fide offering of goods and services. According to the Complaint, both of the web sites associated with the Disputed Domain Names contain adult cartoon content and a link directing users to another site, <adultcartoonmagazine.com>. In the case of the Disputed Domain Name <teenbeatmagazine.com>, the domain name does not appear to be used in connection with a bona fide offering of goods and service, because the domain name, containing the word "teen," is actually directing users toward "adult" content. However, with regard to the Disputed Domain Name <tigerbeatmagazine.com>, the argument against a bona fide offering is more ambiguous. While the Complainant alleges that Respondent is attempting to use <tigerbeatmagazine.com> to mislead consumers and tarnish complainantís marks, the question to be analyzed, however, is whether Respondent has used the Disputed Domain Name with a bona fide offering of goods or services. It is possible that the argument could be made on behalf of the Respondent that the domain name <tigerbeatmagazine.com>, used to direct users to <adultcartoonmagazine.com> was, "apt for the adult entertainment advertising engaged in by Respondent." See Drew Bernstein and Kill City d/b/a Lip Service v. Action Advertising, Inc., WIPO Case No. D2000-0706 (domain name <lipservice.com> apt for web site that provides hyperlinks to adult entertainment sites), Grow.net, Inc. v. Walter Long d/b/a Domains.Com d/b/a Smile.com, WIPO Case No. D2001-0902 (domain name <grow.com> apt for web site that provides links to sex-related chat rooms). However, the Panel concludes that the inclusion of "beatmagazine" in each domain name significantly reduces the likelihood that either "teen" or "tiger" is being used in a manner that is "apt" in relation to the adult cartoon content to which it links and therefore does not support a claim that Respondent has used the Disputed Domain Names in a bona fide offering of goods and services under Policy Paragraph 4(c)(i).

Complainant raises the additional argument that Registrantís registration of domain names corresponding to Complainantís marks is proof of Respondentís actual knowledge of Complainantís superior rights. Complainant further argues, citing CCA Industries, Inc. v. Bobby R. Dailey, WIPO Case No. D2000-0148, that Respondent had minimum constructive knowledge of Complainantís trademarks by virtue of Complainantís U.S. Registrations. Complainant cites Young Genius Software AB v. MWD, James Vargas, WIPO Case No. D2000-0591, for the proposition that a trademark search clearly would have revealed Complainantís prior rights. A finding of Respondentís constructive notice of Complainantís superior rights with respect to the TIGER BEAT mark used in <tigerbeatmagazine.com> is strongly supported by Complainantís July 17, 2001 protest letter to Respondent with regard to the use of Complainantís mark TEEN BEAT in the domain name <teenbeatmagazine.com>. The Panel concludes that the Respondent did have constructive notice of Complainantís marks by virtue of the U.S. trademark registrations of "TEEN BEAT" and "TIGER BEAT" and that the registration of domain names associated with Complainantís marks and type of product suggests that the client had actual knowledge of Complainantís superior rights.

Nothing presented in the complaint or elsewhere would suggest that, under Policy Paragraph 4(c)(ii), Respondent has commonly been known by one or both of the Disputed Domain Names. Additionally, there is no reason to conclude, under Policy Paragraph 4(c)(iii), that Respondent is making a legitimate non-commercial or fair use of the Disputed Domain Names. Respondent appears to be making commercial use of the Disputed Domain Names by virtue of the commercial solicitations, such as the hyperlinks to "CartoonCash.com," "Content CD Sales," and "Content Leasing," that are present on the web sites associated with the Disputed Domain Names, as demonstrated in Exhibit E of the Complaint.

For the reasons stated above, the Panel concludes that, under Policy Paragraphs 4(a)(ii) and 4(c), Respondent has no rights to or legitimate interests in the Disputed Domain Names.

(iii) The Disputed Domain Names have been registered and is being used in bad faith.

The Complaint supports a conclusion that Respondent has demonstrated bad faith, under Policy Paragraph 4(b)(iv), by using the Disputed Domain Names to intentionally attempt to attract, for commercial gain, Internet users to Respondentís web site or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of Respondentís web site or location or of a product or service on Respondentís web site or location. The fact that the two Disputed Domain Names registered by the Respondent each contain a different mark registered by Complainant along with the type of product (magazine) with which the marks is associated is sufficient to support such a finding. Additionally, Respondentís bad faith under Policy Paragraph 4(b)(iv) is also demonstrated by registering the domain name <tigerbeatmagazine.com>, containing Complainantís registered mark, after receiving a protest letter regarding the domain name <teenbeatmagazine.com>, also containing one of Complainantís registered marks.

 

7. Decision

For the foregoing reasons, the Panel concludes that the Disputed Domain Names registered by the Respondent, <teenbeatmagazine.com> and <tigerbeatmagazine.com>, (1) are identical and confusingly similar to trademarks in which Complainant has rights, (2) that Respondent has no rights or legitimate interests in the Disputed Domain Names, and that (3) the Respondent registered and used the domain names in bad faith. Accordingly, the Panel requires that the registration of the Disputed Domain Names, <teenbeatmagazine.com> and <tigerbeatmagazine.com>, be transferred to the Complainant.

 


 

Timothy D. Casey
Sole Panelist

Dated: November 8, 2001