WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

PRIMEDIA Magazine Finance, Inc. v. Richard Manzo

Case No. D2001-1258

 

1. The Parties

The Complainant in this administrative proceeding is PRIMEDIA Magazine Finance, Inc. whose principal place of business is located at 717 Fifth Avenue, New York, NY 10022, USA. The Respondent in this case is Richard Manzo whose address is 12735 63rd Lane North, West Palm Beach, FL 33412-2033, USA.

 

2. The Domain Name and Registrar

The domain names at issue are <powerandmotoryacht.com> and <powerandmotoryachts.com> which are registered with Register.com.

 

3. Procedural History

A Complaint was received by e-mail by the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on October 17, 2001.

On October 25, 2001, a Verification Response was received from Register.com which served to: (1) confirm that Register.com is the registrar of the domain names; (2) confirm that Richard Manzo is the current Registrant of the domain names; (3) provide the full contact details (i.e., postal address(es), telephone number(s), e-mail address(es)) available in the registrarís WHOIS database for the Registrant of the disputed domain names, the technical contact, the administrative contact and the billing contact; and (4) indicate that the Uniform Dispute Resolution Policy is applicable to the domain names in dispute.

On October 26, 2001, a Formal Requirements Compliance review was completed by the assigned WIPO Center Case Administrator. The WIPO Center determined that the Complaint is in formal compliance with the requirements of the Uniform Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "Supplemental Rules"). The required fees for a single member Panel were paid by the Complainant on time and in the required amount.

A Notification of Complaint and Commencement of Administrative Proceeding was sent by the WIPO Center to the Complainant (email) and Respondent (post/courier, facsimile, and email), dated October 26, 2001. The Notification set a deadline of November 15, 2001, by which the Respondent could make a Response to the Complaint. Respondent submitted a Response on November 15, 2001.

On November 29, 2001, the WIPO Center sent to the parties a Notification of Appointment of Administrative Panel naming Roderick Thompson as Panelist. Mr. Thompson submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the WIPO Center. The Projected Decision Date, as determined by the WIPO Center and transmitted to the parties on November 29, 2001, is December 13, 2001.

 

4. Factual Background

Complainant provided evidence that it is the holder of the following U.S. trademark registrations: POWER & MOTORYACHT, Reg. No. 1,650,102 for "magazines dealing with boating" and POWER & MOTORYACHT (Stylized), Reg. No. 2,133,647 for "magazines dealing with boating". Complainant is the publisher of POWER & MOTORYACHT Magazine, a monthly magazine that features articles about powerboats 24 feet and larger. Complainant and its predecessors have published POWER & MOTORYACHT Magazine monthly since December 1984.

Respondent is the current Registrant of the domain names <powerandmotoryacht.com> and <powerandmotoryachts.com> which were registered in May 1999. The domain names access web pages that state "This domain name is FOR SALE". Complainant hired a private investigator to contact Respondent to acquire the domain names. The investigator emailed Respondent requesting the price of the <powerandmotoryacht.com> domain name. Respondent initially replied that he had not yet determined the price and that he would contact the investigator once he determined the price. The investigator followed up by offering $1,000 for the name. Respondent did not respond until prompted by a second email. At that time Respondent indicated that the amount, although not yet determined, would "far exceed" the $1,000 offer. After being prompted two more times by the investigator for a price range that Respondent was seeking, Respondent indicated that he was thinking of a number in the $50,000 price range. The investigator offered $5,000 as a final offer, but Respondent did not respond.

 

5. Partiesí Contentions

Complainant

Complainant claims that the disputed domain names are essentially identical to Complainantís registered trademark POWER & MOTORYACHT with the only differences being the use of the word "and" in place of the "&" symbol and the use of the plural in one of the domain names.

Complainant asserts that the term POWER & MOTORYACHT is a distinctive designation within the marine field clearly identifying Complainantís publication. According to Complainant, that particular combination of words is not generally used in the industry other than as the name of Complainantís publication. Instead, Complainant alleges that the commonly used term for the overall subject matter of Complainantís publication is "powerboat". Therefore, according to Complainant, it is only as a result of Complainantís use that the combined terms "power" and "motoryacht" have developed name recognition specifically identifying Complainantís publication.

Additionally, Complainant asserts that Respondent has no rights or legitimate interest in the domain names in question. According to Complainant, Respondent does not own a trademark or service mark registration corresponding to the domain names, is not a licensee of Complainant or otherwise authorized by Complainant to use the mark, and Respondent is not using the domain names in connection with a bona fide offering of goods or services.

Further, Complainant claims that Respondent has registered the domain names for the purpose of selling them for profit, as evidenced by the sale offer announced at the corresponding web pages. Complainant asserts that Respondentís solicitation of bids for the domain names, and his express attempt to sell <powerandmotoryacht.com> for a value far exceeding any out-of-pocket expenses associated with registering the domain name, constitute strong evidence of Respondentís bad faith.

Respondent

Respondent contends that the term "Power and Motoryacht" was derived from the yacht brokerage industry in the mid 1980s and was not created by and is not unique to Complainant. Respondent claims that Complainant has no interest in the term "Power and Motoryacht" because Complainant did not seek protection for that term, but instead focused on the term "Power & Motoryacht" with an ampersand.

Respondent contends that he has not registered, and is not using, the domain names in bad faith. He notes that the web sites located using the disputed domain names include links to other URLs and that the first link takes a user to the Royal Yacht and Ship site where boats are offered for sale. Thus he asserts that the domain names are being used in connection with a bona fide offering of goods or services and that the intent of the web pages is to sell boats, not domain names.

Further, although Respondent acknowledges that the web sites state that the names are available for sale, he claims that "[n]one of these domain names are seriously for sale." He goes on to note, however, that "everyone knows that everything is for sale at the right price". As evidence that he was not interested in selling the names, Respondent notes that he did not immediately respond to the investigatorís inquiry regarding the price of the <powerandmotoryacht.com> domain name. Instead, the investigator had to follow up with Respondent several times. Respondent claims that he was not interested in selling the domain name and so "decided to give [the investigator] a number that would send him away permanently."

 

6. Discussion and Findings

Applicable Rules and Principles of Law

Paragraph 15(a) of the Rules instructs this Panel as to the principles the Panel is to use in rendering its decision: "A Panelist 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."

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

- that the domain name registered by the Respondent is identical or confusingly similar to a trademark in which the Complainant has rights;

- that the Respondent has no rights or legitimate interests in respect of the domain name; and,

- that the domain name has been registered and used in bad faith.

Application of Paragraph 4(a) to the Facts

Identical or Confusingly Similar to Trademark

Complainant is required under Paragraph 4(a)(i) of the Policy to prove that the domain name is identical or confusingly similar to a trademark in which Complainant has rights. Complainant has demonstrated that it has U.S. trademark rights to the name POWER & MOTOR YACHT for boating magazines. The only distinction between the domain name <powerandmotoryacht.com> and the trademark is the elimination of spaces and the use of the term "and" in place of the ampersand in Complainantís mark. Likewise, the only distinction between the domain name <powerandmotoryachts.com> and the trademark is the elimination of spaces, the use of the term "and" in place of the ampersand, and the addition of an "s" at the end of the name. Although Respondent believes that the use of the term "and" in place of the ampersand is significant, the Panel does not agree. In this case, the term "and" and the ampersand are essentially equivalent. The differences between the mark and the domain names do not significantly distinguish the two. The Panel finds, therefore, that Complainant has shown that the domain names are confusingly similar to a trademark in which Complainant has rights.

Respondentís Rights and Legitimate Interests in the Domain Names

Paragraph 4(c) of the Policy sets out circumstances that demonstrate the Registrantís rights or legitimate interests in the name. One such circumstance is use of the name in connection with the bona fide offer of goods or services. Respondent claims that the domain names have been and are currently being used in connection with the bona fide offer of goods and services. In support of this claim, Respondent notes that one of the links on his web site connects to a site at which boats are offered for sale. This link, however, leads to an unrelated site run by the Royal Yacht and Ship Brokerage, Inc. Respondent is not actually offering any goods or services at <powerandmotoryachts.com> and <powerandmotoryacht.com>, but simply provides a link that redirects users to an unaffiliated web site. Merely including a link to an unrelated commercial site does not constitute use of the disputed domain names in connection with a bona fide offering of goods or services.

Respondent indicates that the "redirects were only being used until [he] had the time and motivation to set up a permanent website for the domain names in dispute." Despite this assertion, Respondent does not provide any information about the website he claims he will develop or provide any further evidence of legitimate interest in the domain names. The Panel therefore finds that Complainant has shown that Respondent does not have a legitimate interest in the domain names.

Registration and Use in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant show that the domain names have been registered and used in bad faith. Complainant alleges that Respondentís solicitation of bids to purchase the domain names, and his express attempt to sell <powerandmotoryacht.com> for a value far exceeding any out-of-pocket expenses associated with registering the domain name, constitute strong evidence of Respondentís bad faith.

Although Respondent claims that he is not interested in selling the domain names, it is clear from the web sites that the domain names were being offered for sale. The primary focus of the page is the offer of the domain names for sale. The first thing one sees at the web sites is prominently placed text in large, bold lettering offering the domain name for sale. This contradicts Respondentís claim that he was not interested in selling the domain names, as does his concession that "everyone knows that everything is for sale at the right price".

Respondent claims that his non-responsiveness to the investigatorís inquiries regarding the domain names also constitutes evidence that he did not intend to sell the names. Although it appears that Respondent was not overly eager to communicate with the investigator, Respondent never indicated in the email correspondence that he was not interested in selling the names, which would have been the easiest way to dissuade the investigatorís inquiry. Instead Respondent simply indicated that the price was not yet determined. Considering Respondentís clear offer for sale at the web site, it appears that Respondent did contemplate sale of the domain names.

Paragraph 4(b) of the Policy sets forth examples of behavior that constitutes bad faith, while clearly indicating that other circumstances may also act as evidence of bad faith. One of the enumerated circumstances includes the registration of the domain name primarily for the purpose of selling the name to the owner of the mark or to a competitor for valuable consideration in excess of registration costs. While there is no evidence that Respondent attempted to sell the name directly to Complainant or to a competitor, Respondent clearly offered the name for sale to anyone, suggested a price that is considerably in excess of registration costs, and has indicated a willingness to sell "at the right price". Under the circumstances of this case, the Panel finds that Respondentís behavior constitutes bad faith.

 

7. Decision

This Panel finds that Complainant has shown that Respondent does not have a legitimate interest or right in the domain names, that Respondent registered and used the names in bad faith, and that the domain names are confusingly similar to a trademark in which Complainant has rights. Accordingly, pursuant to Paragraph 4(i) of the Policy, this Panel requires that the registration of the domain names <powerandmotoryacht.com> and <powerandmotoryachts.com> be transferred to Complainant.

 


 

Roderick M. Thompson
Sole Panelist

Dated: December 13, 2001