WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Primedia Specialty Group Inc. v. Vernon Pursley

Case No. D2007-0791

 

1. The Parties

Complainant is Primedia Specialty Group Inc., New York, New York, United States of America, represented by Donovan & Yee, LLP, United States of America.

Respondent is Vernon Pursley, Lake St. Louis, Missouri, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <jpmag.com> is registered with Wild West Domains, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2007. On June 1, 2007, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On June 2, 2007, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on June 11, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2007. The Response was filed with the Center on July 2, 2007.

The Center appointed Sandra J. Franklin as the sole panelist in this matter on July 18, 2007. 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 has been publishing a magazine under the name JP MAGAZINE since 1997. Respondent registered the domain name <jpmag.com> on March 1, 2004.

 

5. Parties’ Contentions

A. Complainant makes the following assertions as further discussed below:

(1) Respondent’s <jpmag.com> domain name is confusingly similar to Complainant’s JP MAGAZINE mark.

(2) Respondent does not have any rights or legitimate interests in the <jpmag.com> domain name.

(3) Respondent registered and uses the <jpmag.com> domain name in bad faith.

B. Respondent makes the following assertions as further discussed below:

(1) Complainant does not have trademark rights in JP MAGAZINE.

(2) Respondent intended to use the domain name <jpmag.com> in connection with a Japanese business group.

(3) Respondent was unaware of Complainant’s magazine when he registered the <jpmag.com> domain name.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the domain name at issue should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant does not have a registered trademark for JP MAGAZINE. Complainant states that, for over 10 years, Complainant has used the JP MAGAZINE mark throughout the United States, Canada, and the world in connection with a magazine dedicated to Jeep owners. Complainant further states that, as of 2003 (prior to Respondent’s registration of <jpmag.com>), JP Magazine enjoyed a monthly circulation of 90,000, with estimated readership of over 900,000. Complainant also has an active website at “www.jpmagazine.com”. Complainant further stated that the magazine is well-known through long use, extensive promotion, advertising and unsolicited publicity. The Panel notes, however, that Complainant did not submit any evidence of these contentions, and only submitted examples of its magazine covers and website pages.

Respondent likewise makes an unsupported assertion that there is another magazine called the “Jerusalem Perspective”, published since 1987, also known as “JP Magazine”.

The Panel notes that the Policy can apply to an unregistered trademark, provided the mark at issue has acquired sufficient distinctiveness through use and promotion to identify the source of the particular service with Complainant.

Paragraph 4(a)(i) of the Policy refers to a “trademark or service mark” in which the complainant has rights, and does not expressly limit the application of the Policy to a registered trademark or service mark. See for example The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; see also MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205; Emmanuel Vincent Seal trading as Complete Sports Betting v. Ron Basset, WIPO Case No. D2002-1058). This Panel affirms in this case that it is not necessary for Complainant to have a registered mark to establish rights for the purpose of the first element of the Policy.

Despite Respondent’s contention that many people use the acronym “JP”, Respondent did not offer any evidence to counter Complainant’s contention that it publishes a magazine widely known as JP MAGAZINE, with a large readership of 900,000 in 2003. The Panel is prepared to assume for the purposes of this case based on the submitted evidence and the fact that the Respondent has not contested this evidence, that Complainant has established sufficient distinctiveness in its field for the purpose of showing rights in a mark. This preliminary finding of trademark rights is without prejudice to any finding as to the strength of the mark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum August 7, 2000); see also Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum March 10, 2000), and Panthers BRHC L.L.C. v. Gregg Ostrick/GNO, Inc., WIPO Case No. D2005-0681.

Respondent’s <jpmag.com> domain name is confusingly similar to Complainant’s JP MAGAZINE mark pursuant to Policy 4(a)(i), as the domain name contains an obvious abbreviation of the mark and simply adds the generic top-level domain “.com”, not enough to distinguish the domain name from the mark. Respondent’s argument that Complainant is not commonly known by “JPMAG” is misses the point; Complainant’s magazine is commonly known by JP MAGAZINE and Internet users would very likely find JPMAG confusingly similar. See Compagnie de Saint-Gobain v. Saint Gobain Inc., WIPO Case No. D2006-1420, where the panel in that decision found that the abbreviation of “saint” to “st” in the domain name did not serve to distinguish the domain name from the mark.

The Panel finds that Complainant has satisfied Policy 4(a)(i).

B. Rights or Legitimate Interests

Under Policy 4(a)(ii), Complainant has the initial burden of proving that Respondent lacks rights or legitimate interests in the <jpmag.com> domain name. However, it is generally recognized by Panels that once Complainant has established a prima facie case, the burden shifts to Respondent to prove that it does have rights or legitimate interests with respect to the disputed domain name.

Complainant has stated, and Respondent did not contest, that Respondent is not commonly known by <jpmag.com>, nor does that name bear any relationship to any business of Respondent. Respondent’s alleged “original” intention of using the domain name in connection with a Japanese business group while not inherently unreasonable carries little weight to establish rights and legitimate interests; Respondent did not even mention, let alone document, any progress toward that goal, despite holding the domain name for over three years.

In the present situation, the Panel finds that Complainant has made a prima facie case under the Policy, and that Respondent has failed to meet his burden to show rights or legitimate interests. See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (August 21, 2000) (holding that once the complainant reasonably asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).

Respondent’s <jpmag.com> domain name resolves to a website featuring links to third-party websites. The Panel presumes that Respondent receives click-through fees from these links. Such use does not of itself qualify as either a bona fide offering of goods or services under Policy 4(c)(i) or a legitimate noncommercial or fair use under Policy 4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum October 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy 4(c)(i) or a legitimate noncommercial or fair use under Policy  4(c)(iii).”)

The Panel thus finds that Policy 4(a)(ii) has been satisfied.

C. Registered and Used in Bad Faith

The Panel finds that the record submitted is insufficient to make a finding of bad faith registration. As mentioned under paragraph A above, Complainant stated that its JP MAGAZINE is well-known in its field through long use, extensive promotion, advertising and unsolicited publicity; however, Complainant did not submit any evidence of these contentions, and only submitted examples of its magazine covers and website pages. The Panel found enough evidence for purposes of establishing Complainant’s rights in the mark JP MAGAZINE in this case, but not enough to clearly demonstrate that Respondent registered the domain name with the intent of trading off the value in Complainant’s mark. Complainant states “Respondent must undoubtedly have been aware of Complainant’s rights in the mark…”, but does not give any information on how or where its advertising appeared to the general public. Respondent’s explanation of its original intent is not on its face unreasonable but remains undocumented. However the bigger problem for the Complainant in this case given the absence of proof of Respondent’s actual knowledge is the provision of very limited evidence by the Complainant in relation to the renown of its mark.

Therefore, the Panel finds that Complainant has not satisfied Policy 4(a)(iii).

 

7. Decision

For all the foregoing reasons, the Complaint is denied.


Sandra J. Franklin
Sole Panelist

Dated: July 29, 2007