WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Martha Stewart Living Omnimedia, Inc. v. XC2
Case No. D2003-0944
1. The Parties
The Complainant is Martha Stewart Living Omnimedia, Inc., New York, New York, United States of America, represented by Kenyon & Kenyon, United States of America.
The Respondent is XC2, Hong Kong, SAR of China.
2. The Domain Name and Registrar
The disputed domain name <marthastewartkids.com> is registered with Namezero.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 26, 2003. On November 28, 2003, the Center transmitted by email to Namezero a request for registrar verification in connection with the domain name at issue. On December 10, 2003, Namezero 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").
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 December 11, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on January 6, 2004.
The Center appointed Peter G. Nitter as the sole panel in this matter on January 14, 2004. 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
Complainant is a publicly traded company, which employs approximately 580 employees, and in 2002 had revenues of USD 295 million. Complainant uses the brand name "Martha Stewart", emanating from its founder and current Chief Creative Officer, Martha Stewart. The brand name is used across four business segments Ė Publishing, Television, Merchandising and Internet/Direct Commerce Ė in which the Complainant is a provider of "how to" ideas, products and other resources for the home.
Complainant publishes several magazines, including Martha Stewart Living, Martha Stewart Weddings, Martha Stewart Baby and Martha Stewart Kids. The magazine Martha Stewart Kids has been published since 2001 and currently has a circulation of 200,000 to 220,000 per issue.
Complainant is the owner of several trademarks containing the designation MARTHA STEWART, such as MARTHA STEWART EVERYDAY, MARTHA STEWART LIVING, MARTHA STEWART HOME and MARTHA STEWART WEDDINGS (the "Martha Stewart Marks").
Both in the United States and in other countries such as Australia, Brazil, Canada, the countries of the European Union, Hong Kong, SAR of China, Japan and several others, the Complainant has registered several trademarks comprising the designation MARTHA STEWART. The first of these registrations, AT HOME WITH MARTHA STEWART, was registered 14 November, 1989.
5. Partiesí Contentions
The domain name is identical or confusingly similar to the trademarks and service marks in which the Complainant, Martha Stewart Living Omnimedia, Inc. ("MSLO") has long-standing rights.
The Complainant has rights in several marks containing the designation "Martha Stewart," thus they also have rights in the mark "Martha Stewart."
The Complainant publishes the magazine "Martha Stewart Kids" and thus has the right to the mark "Martha Stewart Kids."
The domain name at issue is identical to the magazine name "Martha Stewart Kids," and is nearly identical to the other Martha Stewart Marks that the Complainant holds and to Martha Stewart Living Omnimedia, the Complainantís well-known trade name.
The addition of a common, generic word such as "kids" does not reduce the likelihood of confusion. Hence, the domain name is identical or virtually identical to the name of MSLOís magazine "Martha Stewart Kids" and to the trademark and service mark registrations held by the Complainant.
The Respondent has no rights or legitimate interests in respect of the domain name.
The Respondentís intent is to divert Internet traffic to its own website for purposes of making a profit. Respondent uses the domain name to connect to websites offering goods and services not at all related to the Complainant or to Martha Stewart personally. Some of the links for topics like "Martha Stewart" and "Martha Stewart Kids Magazine" will take the user to websites that sell discounted magazines, most of which are competitors of the Complainantís own magazines.
Respondent is clearly using the domain name in bad faith.
By its website activities, the Respondent for commercial gain has attempted to attract Internet users who, being familiar with the Martha Stewart Marks and the magazine Martha Stewart Kids, would be confused as to the source, sponsorship or endorsement of the website or the products or services offered by the Complainant.
The Respondent is trying to confuse consumers and disrupt the business of a competitor. The Respondent is intentionally trying to redirect users to its website and thereby capitalizing on the confusion. Furthermore, the Respondent intents to trade on the goodwill of the Complainant. All of these circumstances are according to practice under the Policy, evidence of the Respondentís bad faith.
The bad faith is especially pronounced when the Respondentís website provides links to websites belonging to the Complainantís competitors.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has as far as the Panel can see no registered rights to the mark MARTHA STEWART KIDS. The Complainant has however registered rights to several marks containing the designation MARTHA STEWART. These numerous registered and used marks, combined with the fact that the designation is closely linked to the very famous founder of the company, Martha Stewart, that the Complainantís well-known trade name also comprises the designation, and that the Complainant is the proprietor of the domain name <marthastewart.com>, leads to the conclusion that the Complainant has rights in the mark MARTHA STEWART.
The Complainant also claims to have exclusive rights in the mark MARTHA STEWART KIDS. Those rights would have to be based on the markís strong notoriety.
According to the Complainant, the magazine Martha Stewart Kids has been published since 2001, and that each issue currently has a circulation of approximately 200,000 to 220,000 copies. The Panel cannot see that this definitely proves that MARTHA STEWART KIDS has such a strong notoriety that the Complainant has achieved exclusive rights to such a trademark.
However, this is not decisive in this matter. According to the Policy, paragraph 4(a)(i), it is sufficient if the domain name is confusingly similar to a trademark owned by the Complainant. The question can thus be formulated as to whether the domain name is confusingly similar to the mark MARTHA STEWART, in which the Complainant has rights.
The domain name consists of the mark MARTHA STEWART with the addition of the word "kids." Previous cases under the Policy have shown that simply adding a common or generic term, such as in this case the word "kids," to a famous mark is not sufficient to give the domain name an individual meaning and prevent the overall impression that the domain name has some sort of connection with the Complainant, see WIPO Cases Nos. D2001-0174, D2000-0022, D2000-0477 and NAF Case No. FA 95404.
As the Complainant sells a magazine called "Martha Stewart Kids," the said suffix is rather than having a segregating effect, quite fitted to strengthen the impression that the domain name belongs to, or is affiliated with the Complainant. It is highly likely that Internet users will be lead to believe that the domain name belongs to the Complainant.
This must especially be so when the trademark contains such distinct words as MARTHA STEWART, the mark is exceptionally well known and refers to a very famous physical person having the same name and being closely connected to the Complainant.
Hence, the Panel finds that the domain name in question is confusingly similar to a mark in which the Complainant has rights, and the prerequisite in the Policy, paragraph 4(a)(i) is fulfilled.
B. Rights or Legitimate Interests
The Panel has considered the assertion made by the Complainant as to the lack of rights or legitimate interests of the Respondent in respect of the domain name at issue.
The Complainant claims that the Respondent uses the domain name to divert users to its own website for commercial gain, by offering goods and services not connected with the Complainant on the site, and also having links to sites selling such goods and services, these often being goods and services provided by competitors of the Complainant.
The Panel has visited the "www.marthastewartkids.com" website, in order to investigate whether evidence could be found as to the Respondentís rights or legitimacy of interest in the contested domain name.
At present the site does not appear in the same form as it is presented in the Complaint, Exhibits E to H.
However, the website still contains links to other sites offering discounted magazines, both the Complainantís magazines and its competitorsí. Furthermore, the website still contains links to different sites offering other sorts of goods and services, under the heading "Popular Searches," with no relation to the Complainant. Topics under the heading are for example "Kids," "Crafts," "Recipes" and "Birthdays."
The Panel is of the opinion that the site, also as it now appears, is used to divert customers to sites offering goods and services with no affiliation to the Complainant.
There is nothing on the site indicating that the Respondent is offering the goods in bona fide. The Complainant is very well known all over the world and there is no reason to believe that the Respondent was not familiar with the company and the person Martha Stewart.
Neither is there any information on the site indicating that the Respondent has been commonly known by the domain name.
Thus, the panel has found nothing on or outside of the website as being evidence of the Respondentís legitimate interest in the domain name.
Hence, the Panel finds that the Respondent does not have rights or legitimate interests in the domain name, and the prerequisites in the Policy, paragraph 4(a)(ii) are therefore fulfilled.
C. Registered and Used in Bad Faith
According to the Policy, paragraph 4(b)(iv) it is to be regarded as evidence of bad faith if by using the domain name the Respondent, for commercial gain, intentionally attempts to attract Internet users to his website, by creating a likelihood of confusion with the Complainantís mark.
In this case it is clear that the Respondent is using the domain name in such a manner. The Respondent registered a domain name that is identical to the name of a magazine. The magazine is distributed by a company whose name comprises the distinct parts of the magazine and disputed domain name, originating from its famous founder, Martha Stewart. The Respondent must have been familiar with these facts when the domain name was registered.
The domain name is currently used for attracting Internet traffic to the website for again diverting the users to sites offering various goods and services. The Panel finds that this is done by intentionally confusing the users as to the source, sponsorship, affiliation or endorsement of the website, as most users will be familiar with Martha Stewart and the Complainantís business, and probably will believe the site is owned by the Complainant. Some of the goods and services offered originate from the Complainant, but most of what is offered does not. The Respondent is capitalizing on this confusion, something that in previous panel decisions under the Policy has been considered evidence of bad faith, see WIPO Case No. D2000-0326.
The Respondent is thus also making profit by exploiting the Complainantís goodwill as a widely known provider of goods and services, something that also is evidence of use in bad faith, see WIPO Case No. D2000-0654.
Finally, the question of use of a domain name in bad faith is especially clear if the site contains links to websites belonging to competitors of the Complainant, see WIPO Case No. D2002-0835. In this case the website for example contains links to magazines like "Better Homes and Gardens" and "Country Homes," which are in direct competition to the Complainantís products.
Hence, the Panel finds that the domain name is registered and used in bad faith by the Respondent, and the condition in the Policy, paragraph 4(a)(iii) is fulfilled.
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, <marthastewartkids.com>, be transferred to the Complainant.
Peter G. Nitter
Date: January 23, 2004