WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Washington Magazine, Inc. v. dannyBOY, Inc.
Case No. D2002-0514
1. The Parties
The Complainant in this administrative proceeding is Washington Magazine, Inc. ("WMI"). WMI publishes the Washingtonian magazine and related on-line publications. WMI has used the trademark WASHINGTONIAN in commerce since 1965. WMI operates its official Internet web site at <washingtonian.com> where consumers can access information about WMI, its products and services and order subscriptions to the magazine.
Respondent registered itself with Tucows, Inc. as dannyBOY Inc., with an address at New York, New York, United States of America. The administrative contact was listed as Dan Carlson.
2. The Domain Name and Registrar
The domain name in dispute is <washingtonianmagazine.com> (the Domain Name). The registrar with which the domain name is registered is Tucows, Inc., 96 Mowat Avenue, Toronto, ON, M6K 3M1, Canada (the Registrar).
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complainantís Complaint in hardcopy on June 4, 2002. On June 4, 2002, the Center sent the Complainant an Acknowledgement of Receipt.
Also on June 4, 2002, the Center sent to the Registrar a Request for Registrar Verification. That same day, the Registrar transmitted to the Center a Registrar Verification Response confirming that the Domain Name was indeed registered with the company, that the Respondent is the current registrant of the Domain Name, and that the status of the Domain Name is "locked." The Registrarís Response provided contact information for the Respondent, and the Administrative, Technical and Billing Contact.
The Center then undertook a Formalities Compliance Review and on June 10, 2002 sent Complainant a Notification of Deficiency. Complainant remedied the technical deficiency on June 13, 2002. On June 14, 2002 the Center verified that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Uniform Rules), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the WIPO Supplemental Rules). Complainant made the required payment to the Center. Upon independent review, the Panel also finds that the Complaint satisfies the formal requirements of the Policy, the Uniform Rules and the Supplemental Rules.
On June 14, 2002, the Center transmitted to the parties, with copies to the Registrar and ICANN, a Notification of Complaint and Commencement of Administrative Proceeding, setting a deadline of July 4, 2002 by which Respondent could file a Response to the Complaint. Because the website at the Domain Name referred to another domain name (<abortionismurder.org>), the administrative contact for <abortionismurder.org> was also sent the Notification of Complaint and Commencement of Administrative Proceeding.
The e-mail Notification of Complaint and Commencement of Administrative Proceeding sent to the putative administrative contact for Respondent was returned as undeliverable. Delivery was then attempted by FedEx. On June 17, 2002, FedEx indicated that the address was not a correct address.
The administrative contact for <abortionismurder.org> disclaimed all responsibility in a communication to the Center dated June 17, 2002.
No response having been received, the Center sent a Notification of Respondent Default to Respondent on July 5, 2002.
In view of the Complainantís designation of a single panelist (but without prejudice to any election to be made by the Respondent), the Center invited Andrew S. Mansfield to serve as the panelist. On July 16, 2002, after receiving Mr. Mansfieldís Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date (July 30, 2002). The Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules.
The language of this proceeding is English.
4. Factual Background
Visitors to <washingtonianmagazine.com> enter a framed environment, whereby the framed website <affenpinschers.com> redirects to <www.christiangallery.com>. The end result is the display of anti-abortion material and information.
Complainant contacted Respondent on November 7, 2001. The listed administrative contact, Mr. Dan Carlson, responded by e-mail in several communications. Respondent demanded $650 for the transfer of the Domain Name.
5. Partiesí Contentions
Complainant, WMI, owns the trademarks, service marks, and trade names associated with its famous Washingtonian magazine and related online publications (the WMI Marks). Complainant is the current owner of several incontestable registrations issued by the United States Patent and Trademark Office (WMIís Trademark Registrations). The WASHINGTONIAN trademark and service mark has been used prominently in commerce since at least as early as 1965.
WMI alleged that it has not granted a license to Respondent for use of the WMI Marks. See, Yahoo! Inc. v. Yahoo-Asian Company Limited, WIPO Case No. D2001-0051 (finding unauthorized use of a famous mark suggests a lack of legitimate interest or right in the mark).
WMI also provided evidence that it is known throughout the United States as a provider of high-quality magazines and related online publications. Since at least as early as 1965, WMI has prominently used the WMI Marks in connection with its magazine and, later, in connection with its related online publications. WMI has established and maintains high standards of quality for its goods and services. Throughout decades of use, the WMI Marks have become well-known and favorably viewed by consumers throughout the United States. The WMI Marks have been marketed to the purchasing public throughout the United States on an extensive and frequent basis via a variety of advertising media including newspapers, magazines, radio, trade publications, the Internet, as well as various other media.
WMI also demonstrated that the WMI Marks have been continuously and widely used by WMI since their inception and are currently used throughout the United States. The WMI Marks are readily recognizable with the public as originating from WMI. As a result, the WMI Marks and the goodwill developed and associated therewith are of inestimable value to Complainant. WMI believes that the WMI Marks have become famous and distinctive in the minds of the purchasing public. Several of WMIís trademark registrations have become "incontestable" under United States legal principles.
WMI operates its official Internet web site at <washingtonian.com>. Consumers can access information about WMI, its products and services, as well as order subscriptions to its famous magazine.
Respondent filed no Response.
6. Discussion and Findings
Complainant must prove three distinct elements in order to prevail on its claim for transfer of the Domain Name. These elements are set forth in Paragraph 4(a) of the Policy:
- The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the Domain Name; and
- The Domain Name was registered and is being used in bad faith.
Complainant must prove all three elements. The Policy is not designed to resolve trademark and fair use issues, whether subject to United States law or that of some other state. Instead, the Policy is intended to provide a rapid and cost-effective remedy against "cyber-squatters."
(A) Identity or Confusing Similarity of Domain Name and Trademark
The evidence shows that the Domain Name is confusingly similar to various trademarks and service marks held by Complainant. In particular, <washingtonianmagazine.com> is a logical location for the Washingtonian magazine and may, therefore, be the subject of speculative Uniform Resource Location ("URL") entry. Such Internet users would expect to find the publication of Complainant at the Domain Name.
(B) No Legitimate Interest in the Domain Name
By failing to submit a Response, Respondent provides no evidence that it has any rights whatsoever in the Domain Name.
(C) Bad Faith Registration and Use of the Domain Name
Paragraph 4(b) of the Policy sets forth four examples of bad faith, which are not exclusive, but which "shall be evidence of registration and use of a domain name in bad faith." Those are:
(i) circumstances indicating that Respondent registered or 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 Respondentís documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent intentionally attempted to attract, for commercial gain, Internet users to Respondentís web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís web site or location or of a product or service on the Respondentís web site or location.
The fact that the Domain Name is used in an entirely non-commercial manner requires careful examination of the element of "bad faith." Complainant has presented no evidence that paragraph 4(b)(ii) is applicable. Paragraphs 4(b)(iii) and 4(b)(iv) necessarily require that Respondent is making commercial use of the Domain Name or is otherwise a commercial enterprise.
Complainant alleges that bumperstickers and other items are sold on the framed web site. The Panel does not find any such commercial use. The content of the framed web site refers visitors to a third-party web site for such commercial transactions.
However, Respondent made the decision of this simpler in that Respondent clearly demanded compensation in excess of its out-of-pocket expenses. If Respondent had maintained its contact information, Respondent might have demonstrated that its demand for $650 was not in excess of such expenses. However, the Panel finds that the amount is in excess of typical out-of-pocket expenses for such a redirection web site.
If this demand had not been made, the Panel would have been required to look outside of the four examples of bad faith provided in the Policy. If such had been required, the Panel would have followed Altavista Company v. Andrew Krotov, WIPO Case No. D2000-1091. It appears that the only possible reason that Respondent registered and used the Domain Name was to capture users who were looking for Complainantís web site and expose them to unrelated political messages. Such a variation of what United States law terms "initial interest confusion" evidences bad faith.
This is not a case where a complaint, commentary or criticism web site about a company is located at a domain name identical or confusingly similar to a trademark or service mark of that company. Such web sites are clearly proper under the well-reasoned opinion in Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, WIPO Case No. D2000-0190.
For all of the foregoing reasons, it is the decision of the Panel that the Complainant has proved the essential elements of a valid claim under the Policy. The Complainantís claim for transfer of the Domain Name <washingtonianmagazine.com> is therefore granted.
Andrew S. Mansfield
Dated: July 22, 2002