WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lammot Copeland, Jr. v. Computer Product Introductions
Case No. D2003-0823
1. The Parties
1.1. The Complainant is Lammot Copeland, Jr., The Crafts Report Publishing Company, Inc., Wilmington, Delaware, United States of America, represented by Young Conaway Stargatt & Taylor, LLP, United States of America.
1.2. The Respondent is Computer Product Introductions, Mercer Island, Washington, United States of America.
2. The Domain Name and Registrar
2.1. The disputed domain name <craftreport.com> is registered with BulkRegister.com.
3. Procedural History
3.1. The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 16, 2003. On October 17, 2003, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On October 20, 2003, BulkRegister.com transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
3.2. In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 23, 2003. In accordance with the Rules, Paragraph 5(a), the due date for Response was November 12, 2003. The Response was belatedly filed with the Center on November 17, 2003. In a November 21, 2003, letter, Complainant requested that the Panel give no consideration to the Respondentís late-filed Response. In a November 24, 2003, email, Respondent replied to Complainantís November 21, 2003, letter.
3.3 The Center appointed Gregory N. Albright as the sole panelist in this matter on November 19, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, Paragraph 7.
4. Factual Background
4.1 Complainant is the owner of the trademark THE CRAFTS REPORT, registered with the United States Patent and Trademark Office on April 20, 1993 (Registration No. 1,765,805). Complainant is also registrant of the <craftsreport.com> domain name, and publisher of The Crafts Report, a monthly periodical for the crafts industry.
4.2. Respondent is registrant of the disputed <craftreport.com> domain name. Respondent has from time to time used the <craftreport.com> domain name in connection with an Internet chat site.
5. Partiesí Contentions
Identical or Confusingly Similar
5.1. Complainant has made continuous use of its registered and incontestable mark, THE CRAFTS REPORT, since April 20, 1993; has spent much time, money and effort promoting the mark; and has established significant good will.
5.2. The disputed <craftreport.com> domain name incorporates Complainantís entire mark, and differs from Complainantís mark only in its use of the singular of "crafts". The disputed domain name is therefore confusingly similar to Complainantís registered, incontestable mark, and Complainantís domain name <craftsreport.com>.
5.3. The confusing similarity of the disputed domain name to Complainantís mark is evidenced by actual confusion, in that Complainantís customers have "inadvertently" and unsuccessfully tried to send email to Complainantís business at an email address ending in "craftreport.com" rather than "craftsreport.com."
Rights or Legitimate Interests
5.4. Complainant has never granted Respondent any rights to use Complainantís mark or any variant thereof.
5.5. Respondent has no rights or legitimate interests in the disputed domain name because, before Respondent had notice of this dispute, Respondent was not using the disputed domain name in connection with a bona fide offering of goods or services. Complainant first gave Respondent notice of this dispute in an April 24, 2000, letter from John W. Shaw to Richard Leeds. Respondent has used the disputed domain name for a website that contained a scrolling chat room (in which the chat was unrelated to crafts and at times include sexual conversations that tarnished Complainantís mark), a message post board for messages purporting to relate to crafts (but which were primarily advertisements), and "pop-up" advertisements unrelated to crafts.
5.6. Respondent also has no rights or legitimate interests in the disputed domain name, because Respondent has not been commonly known by the name "craftreport" or any variant of the disputed domain name. Respondent owns thousands of domain names, none of which are a common name for Respondentís business. Respondent has linked the disputed domain name to a commercial website affiliated with "www.klat.com", which is a commercial website that acts as an Internet portal for numerous chat forums. Respondent at one time used the disputed domain name to transfer Internet traffic to the domain name <craftinfo.com>.
5.7. Respondent also has no rights or legitimate interests in the disputed domain name, because Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish Complainantís mark. Respondent used the disputed domain name for commercial gain, because advertisements appeared on the website to which the domain name resolves. In addition, Respondent used the disputed domain name to misleadingly divert Complainantís customers; Respondent continued its use of the domain name after Complainantís request that Respondent cease and desist. Finally, the chat at Respondentís website was at times inappropriate, including sexual chat, which tarnished and diluted Complainantís mark and the good will associated with it.
Registered and Used in Bad Faith
5.8. Respondent has registered and is using the disputed domain in bad faith, as evidenced by Respondentís: (i) registration of the disputed domain name despite its constructive notice of Complainantís registered trademark; (ii) continued use of the disputed domain name after receiving cease and desist letters from Complainant; (iii) renewed use of the disputed domain name to transfer Internet traffic to a different domain name after receiving cease and desist letters from Complainant, and after telling Complainant that such use was inadvertent and would not happen again; and (iv) history of registering and using domain names that infringe trademark rights of others.
Identical or Confusingly Similar
5.9. The disputed domain name is not similar to Complainantís trademark Ė THE CRAFTS REPORT Ė because the domain name <craftreport.com> does not include the word "the", and uses "craft" instead of "crafts".
5.10. Complainant does not have trademark rights that prohibit the use of the English language phrase "craft report", and its inclusion in a website name. The phrases "craft report" and "crafts report" are in common usage.
Rights or Legitimate Interests
5.11 Respondent has a legitimate right, and a legitimate interest, in using the disputed domain name as part of Respondentís established Internet portal. Respondent has provided a public forum at the disputed website, which allows users to "report" on different subjects, since 2001.
5.12 Since their launch, Respondentís forum sites have included the following disclaimer: "All trademarks are the property of their respective owners. This public forum website is not affiliated with the trademark owner(s)."
5.13 Respondentís websites are not pornographic in nature, and Respondent actively discourages and removes pornographic material placed by third parties in Respondentís public forums.
Registered and Used in Bad Faith
5.13 Respondent contends that there is no evidence of bad faith because: (i) there is no confusing similarity between Complainantís mark and the disputed domain name; (ii) Respondent is not in the business of selling, renting, or otherwise transferring domain name registrations; (iii) Respondent did not register the domain name to prevent Complainant from registering domain names; and (iv) Respondent and Complainant are not competitors, and Respondent did not register the domain name to interfere with or disrupt Complainantís business, or divert Complainantís customers or business.
Reverse Domain Name Hijacking
5.15. Complainant does not have the right to preclude others from using domain names that do not contain "The Crafts Report". Respondent requests that the Panel find this to be a case of reverse domain name hijacking.
6. Discussion and Findings
6.1. To succeed on its Complaint, Paragraph 4(a) of the Policy requires Complainant to prove all of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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.
6.2. A Respondent may demonstrate that the Respondent has rights or legitimate interests in respect of the domain name by proving those circumstances, "in particular but without limitation", identified in Paragraph 4(c) of the Policy.
6.3. Evidence of bad faith registration and use of a domain name may be proven by, among other things, the circumstances identified in Paragraph 4(b) of the Policy.
A. Respondentís Belated Response; Other Supplemental Filings
6.4. The Panel must decide, as a threshold matter, whether to consider the Respondentís belatedly-filed Response, Complainantís November 21, 2003, letter, and/or Respondentís November 24, 2003, email.
6.5. Respondent submitted the Response to the Center on November 17, 2003, five days after the November 12, 2003, deadline. Absent exceptional circumstances, Respondentís failure to timely submit its Response constitutes default. Rules, Paragraph 14(a).
6.6. The Panel did not request any further statements or documents from either of the parties; specifically, the Panel did not request Respondentís belated Response, the Complainantís November 21, 2003, letter, or Respondentís November 24, 2003, email. See Rules, Paragraph 12.
6.7. Paragraph 10(a) of the Rules gives the Panel broad discretion to conduct this proceeding. Paragraph 10(b) of the Rules also obligates the Panel to give each party "a fair opportunity to present its case". At the same time, the Panel must ensure that this proceeding take place "with due expedition", and extensions of time are to be granted only "in exceptional cases". Rules, Paragraph 10(c).
6.8. Respondent asks that its late Response be excused, because its representative, Richard Leeds, "was out of the office", traveling out of state, and the information in the Response is "material to the case". Respondent claims that it first received the complete Complaint, together with all of the exhibits thereto, when Mr. Leeds returned to his office on October 29, 2003. However, Respondent does not deny that he received the Complaint by email from the Center no later than October 17, 2003; Respondent sent an email to the Center regarding the Complaint on that date. Nor does Respondent deny that the Centerís October 23, 2003, email advised the Respondent of the November 12, 2003, deadline for a Response.
6.9. In his November 21, 2003, letter, Complainant asks that the Panel disregard the belated Response because the Respondent had sufficient notice, and adequate time and opportunity, to submit a timely Response.
6.10. Respondent has failed to show that this is an "exceptional case" that excuses Respondentís late Response. Nevertheless, in an abundance of caution, and in the interest of giving both parties a full hearing, the Panel has considered all of the partiesí submissions, and has drawn appropriate inferences from the tardiness of the Response. See Rules, Paragraph 14(b).
B. Identical or Confusingly Similar
6.11 Complainant has adequately proven that he has rights in the mark, THE CRAFTS REPORT. Specifically, Complainant has submitted evidence of the April 20, 1993, Registration Certificate, issued by the United States Patent & Trademark Office, for the mark THE CRAFTS REPORT, and evidence of Complainantís use of that mark in a sample of The Crafts Report magazine. (Complainant has not submitted evidence to support his additional claims that he has "spent much time, money and effort promoting his mark, and his efforts have established significant good will in the mark".)
6.12 Respondent does not dispute that Complainant has at least some rights in the mark THE CRAFTS REPORT. Instead, Respondent argues that "Complainant does not have trademark rights that prohibit the use of the English language phrase Ďcraft reportí and its inclusion in a website name". Respondentís argument misses the point. An order transferring the domain name <craftreport.com> to Complainant will not have the effect of granting Complainant an exclusive monopoly over the English language phrase "craft report". The issue is whether the disputed domain name is confusingly similar to the mark in which Complainant has acquired legally-recognized rights.
6.13 The disputed domain name <craftreport.com> is confusingly similar to Complainantís mark THE CRAFTS REPORT. Respondent contends that there is no confusing similarity because the disputed domain name does not contain the markís generic modifier "the", or an "s" after "craft", The Panel does not agree that these minor differences eliminate the confusion that results from the remaining similarities. Many persuasive decisions have found confusing similarity despite analogous differences between a disputed domain name and a trademark. See, e.g., Six Continent Hotels, Inc. v. Amjad Kausar a/k/a InterMos, WIPO Case No. D2003-0663 (November 5, 2003) (finding confusing similarity between Complainantís trademarks and misspellings thereof in disputed domain names); American Stores Co. v. Henry Chan, NAF Case No. FA0306000161567 (July 24, 2003) ("Respondentís <jewelsosco.com> domain name is confusingly similar to Complainantís JEWEL-OSCO mark because the disputed domain name merely replaces the hyphen in Complainantís mark with the letter Ďsí".); Board of Trustees of the Leland Stanford Junior University v. Computer Product Information a/k/a Richard Leeds, NAF Case No. FA0302000146571 (March 28, 2003) ("The addition of extra letters and generic terms does not create a distinct mark capable of overcoming a Policy Paragraph 4(a)(i) analysis".); Victoriaís Secret v. Zuccarini, NAF Case No. FA0010000095762 (November 18, 2000) ("Misspelling words and adding letters on to words does not create a distinct mark but is nevertheless confusingly similar with the Complainantís marks".).
6.14 The Panelís finding of confusing similarity is also supported by Complainantís evidence that Complainantís customers have mistakenly directed emails to an address ending in the disputed domain name. See, e.g., i2 Technologies, Inc. v. Richard Alexander Smith, WIPO Case No. D2001-0164 (June 4, 2001) (misdirected emails were "the proof of the pudding" that the disputed domain name was confusingly similar to Complainantís mark).
C. Rights or Legitimate Interests
6.15 Complainant has the initial burden to submit evidence tending to show that Respondent has "no rights or legitimate interests in respect of the [disputed] domain name". Policy, Paragraph 4(a)(ii). The burden then shifts to Respondent to demonstrate its rights or legitimate interests. Policy, Paragraph 4(c).
1. Bona Fide Use Of Domain Name Before Notice Of Dispute
6.16 Respondent may demonstrate rights or legitimate interests in respect of the disputed domain name by proving that, before the Respondent had notice of the dispute, the Respondent used or prepared to use the domain name (or a name corresponding thereto) in connection with a bona fide offering of goods or services. Policy, Paragraph 4(c)(i).
6.17 Complainantís evidence shows that Respondent registered the disputed domain name on January 16, 2000. Complainant has also submitted evidence that it gave Respondent notice of this dispute in an April 24, 2000, letter from Complainantís counsel which demanded, among other things, that Respondent cease using the disputed domain name and transfer it to Complainant.
6.18 Thus, the issue is whether Ė before April 24, 2000 Ė Respondent used, or prepared to use, the disputed domain name in connection with a bona fide offering of goods or services. The only evidence the Panel has found regarding Respondentís use of the disputed domain name during this critical time period is hearsay. Specifically, the April 24, 2000, letter to Respondent says that Complainant had at that time "recently learned" that Respondent was using the disputed domain name "to direct visitors to user forum [sic] on craft-related issues and topics".
6.19 Complainant also asserts that Respondent stopped using the disputed domain name after receiving Complainantís April 24, 2000, letter, and contends that this is evidence that Respondent lacked a bona fide purpose for the domain name. Again, the only evidence on this issue is hearsay, specifically a July 30, 2003, letter from Complainantís counsel to Mr. Leeds, which states that Respondent stopped using the disputed domain name after the April 24, 2000, letter. However, Respondent does not deny that it stopped use of the disputed domain name for some period of time after Complainantís April 24, 2000, letter, and thus implicitly admits the truth of Complainantís argument.
6.20 The Panel finds most compelling the Respondentís admission, in the belated Response, that it has made use of the disputed domain name for allegedly legitimate purposes "since 2001". Respondent argues: "Since 2001, Respondent has provided appropriate public forum Communities and Commerce related to the disputed site". Respondent also argues: "Respondent has maintained appropriate craft report and craft information websites with legitimate craft related postings since 2001 Ö.". Respondent does not argue, and has not submitted any evidence, that it used or prepared to use the disputed domain name for any legitimate purpose before April 24, 2000.
6.21 The Panel has given Complainantís hearsay evidence due weight, particularly in light of Respondentís admissions. See Rules, Paragraph 10(d). The Panel has also drawn adverse inferences from the Respondentís failure to file a timely Response, or submit any evidence in support of its arguments. See Rules, Paragraph 14(b). In sum, the Panel finds that Respondent has failed to demonstrate its rights or legitimate interests under Paragraph 4(c)(i) of the Policy.
2. Respondent Commonly Known By Domain Name
6.22 Complainant has submitted evidence that tends to prove that Respondent has not been commonly known by the name "craftreport" or any variant of the disputed domain name. See Policy, Paragraph 4(c)(ii). Specifically, Bulkregister.comís WHOIS information for Respondent indicates that Respondent is commonly known as "Computer Product Introductions", and/or "NeonGecko Inc.". Respondent makes no argument, and has presented no evidence, that it is commonly known by the name "craftreport", and therefore has failed to make the necessary showing under Paragraph 4(c)(ii) of the Policy.
3. Noncommercial Or Fair Use
6.23 Complainant has submitted evidence that Respondent has used the disputed domain name to divert Internet traffic to Respondentís website at <craftreport.com>, as well as another online location at <craftinfo.com>. Complainant has also submitted evidence that Respondent included posted and "pop-up" advertisements on the websites in question. It may be inferred that Respondent has derived a commercial benefit from these advertisements, and Respondent has not submitted any evidence to counter that inference. See Bank of America Corp. v. Islamic Bank of America a/k/a Hany Atchan, NAF Case No. FA036000164305 (July 25, 2003) (commercial benefit through "kick-backs" from website vendors linked to Respondentís advertisements). For these reasons, the Panel finds that Respondent has failed to show rights or legitimate interests under Paragraph 4(c)(iii) of the Policy. (The Panel therefore does not reach the issue of whether alleged non-party sexual or pornographic chat on the Respondentís website tarnished Complainantís mark.)
D. Registered and Used in Bad Faith
6.24 Paragraph 4(b) of the Policy is a non-exclusive list of circumstances that constitute evidence of bad faith. The Panel finds sufficient evidence that Respondent registered and is using the disputed domain name in bad faith, for the following reasons.
6.25. On April 20, 1993, Complainantís mark was registered on the Principal Register of the USPTO, long before Respondent registered the disputed domain name in January 2000. Respondent therefore had constructive notice of Complainantís claim of ownership of its mark when Respondent registered the disputed domain name. 15 U.S.C. ß 1072. This evidence permits an inference of bad faith that Respondent has not refuted.
6.26 Complainantís evidence shows that Respondent made use of the disputed domain name, and "reactivated" it, after receiving notice of Complainantís trademark rights. The Complaint discusses Respondentís claim that the "reactivation" was inadvertent, but Respondent has not submitted any evidence that it was, in fact, inadvertent. From the Respondentís failure to submit evidence on this issue, and the tardiness of the Response, the Panel infers that Respondentís continued use the domain name after notice of Complainantís trademark rights was not inadvertent, and was in bad faith.
6.27 Complainant has cited three decisions in UDRP domain name dispute proceedings, in which domain names registered by this Respondent were ordered transferred to the trademark owner. See Board of Trustees of the Leland Stanford Junior University v. Computer Product Information a/k/a Richard Leeds, NAF Case No. FA0302000146571 (March 28, 2003); Circuit City Stores, Inc. v. Richard Leeds d/b/a Neongecko Inc., NAF Case No. FA 0212000139662 (February 2, 2003); Pepsico, Inc. v. Richard Leeds d/b/a NeonGecko, Inc., NAF Case No. FA 0208000117870 (September 27, 2002). A pattern of registering infringing domain names is evidence of bad faith. See Big Dog Holdings, Inc. v. Day, NAF Case No. FA002000093554 (March 9, 2000).
6.28 In response to Complainantís evidence of bad faith, Respondent has merely stated its conclusions that the circumstances described in Paragraph 4(b) of the Policy are not present in this case. However, Respondent has not identified, or submitted evidence of, any facts that support its conclusions.
E. Reverse Domain Name Hijacking
6.29 For all of the reasons discussed above, the Panel will order the domain name <craftreport.com> transferred to Complainant. Thus, this is not a case of reverse domain name hijacking.
6.30 The Panel also denies Respondentís request for an advisory opinion concerning a domain name that would not infringe Complainantís trademark rights.
7.1 For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <craftreport.com> be transferred to Complainant.
Gregory N. Albright
Date: November 28, 2003