WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services
Case No. D2007-1743
1. The Parties
The Complainant is Advance Magazine Publishers Inc. d/b/a Condé Nast Publications, New York, New York, United States of America, represented by Sabin Bermant & Gould, LLP, United States of America.
The Respondents are (1) MSA, Inc., Woodland Hills, California, United States of America, represented by Graham Ross, United Kingdom of Great Britain and Northern Ireland, and (2) Moniker Privacy Services, Pompano Beach, Florida, United States of America.
2. The Domain Name and Registrar
The disputed Domain Name <wwwwired.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2007. On November 28, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 7, 2007, the Registrar transmitted by email to the Center its verification response indicating that the Respondent Moniker Privacy Service is a domain privacy service and that the Respondent MSA, Inc. is the party that registered and owns the Domain Name. The Registrar provided the contact details for the Respondent MSA, Inc. In response to a notification by the Center concerning the new information from the Registrar, the Complainant filed an amendment to the Complaint on December 13, 2007. The Center verified that the Complaint together with the amendment to 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 18, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2008. The Center issued a Notification of Default on January 8, 2008. An email responding in part to Complainant’s contentions was subsequently filed with the Center on January 11, 2008, and a belated Response was filed on January 14, 2008. These are collectively referred to hereafter as the Response.
The Center appointed W. Scott Blackmer, David H. Bernstein, and Michel Vivant as panelists in this matter on February 1, 2008. The Panel finds that it was properly constituted. Each of the Panelists 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
The Complainant is a New York corporation that publishes several widely circulated magazines and associated websites. In 1993, the Complainant’s predecessor launched Wired magazine, a publication focused on information technology and innovation. The magazine now reaches an average monthly readership of more than 670,000 subscribers and single-copy customers. According to information from the Audit Bureau of Circulations, furnished by the Complainant, more than 630,000 of these consumers reside in the United States. Some of the magazine’s content is published, along with other features, on the Complainant’s website at “www.wired.com”, which attracts additional readers.
The Complainant owns more than 30 trademark registrations in the United States of America, as well as many others in other countries. Some of the earliest are the following:
U.S. Reg. No.
First Use in Commerce
Sep. 13, 1994
Sep. 3, 1996
May 27, 1992
Dec. 30, 1997
Nov. 2, 1996
May 12, 1998
May 6, 1997
The Respondent Moniker Privacy Services is the Registrar’s “Domain WhoIs Privacy” service. It is not clear whether it is a legal entity or merely a trade name. The service is described on the Registrar’s website at “www.moniker.com” as follows:
“Moniker Privacy Services registers acts [sic] as the Registrant of record for any domains you choose WhoIs Privacy for. Even though Moniker Privacy Services is listed as the Registrant, you still control the domain and retain the full benefits, responsibilities, and ownership of the domain name registration.”
The Registrar’s WHOIS database indicates that the Domain Name was registered on April 14, 1998. Respondent MSA availed itself of the Registrar’s domain privacy service, so that the Respondent Moniker Privacy Services was listed as the registrant. After being contacted by the Center, the Registrar changed the name of the registrant to that of the Respondent MSA, presumably the party that paid for the registration and controlled the Domain Name in the manner described on the Registrant’s website as quoted above. Communications to the Center from the Respondent MSA refer to its use of the domain privacy service, and the Response does not deny that the Respondent MSA has been the real party in interest since the Domain Name was registered in 1998.
The Response submitted by the Respondent MSA does not describe the Respondent or its business, other than to provide the California address now shown in the WHOIS database. The Panel notes that “MSA Inc” has been the respondent in other recent UDRP proceedings ordering the transfer to trademarks owners of domain names used to display advertising links. See Societé Air France v. MSA, Inc., WIPO Case No. D2007-0143 (“MSA, Inc.” of “California”); Ace Cash Express, Inc. v. MSA, Inc., NAF Claim No. FA106759 (“MSA, Inc.” at the same postal address given for the Respondent MSA in the current proceeding).
The Domain Name resolves to an advertising directory website headed with the Domain Name and the tag line, “Find the Stuff You’re Looking for.” The landing page features a “sponsored link” to a page on another advertising directory website at “www.smarter.com”, which in turn displays links to online sources for “Magazine Wired” and for subscriptions to other magazines, as well as for a mail-order shopping catalogue, bookshelves, file folders, and “Magazine Wired in toilet paper holders”. Other advertising links on the landing page to which the Domain Name resolves concern Wired magazine, other magazines and books, and sports and outdoor equipment. The landing page also includes a search feature to deliver advertising links on other items of interest to the website visitor.
Counsel for the Complainant sent cease-and-desist emails and letters to the administrative contact listed for the Domain Name in April, September, and October 2007. It is undisputed that there was no reply to these communications.
5. Parties’ Contentions
The Complainant asserts that the Domain Name is confusingly similar to its WIRED mark, and that the Respondents have no rights or legitimate interests in using the mark in the Domain Name. The Complainant argues that the Domain Name was registered and used in bad faith, in an attempt to mislead Internet users for commercial gain.
The Respondent MSA, Inc. (hereinafter “MSA”) argues that the Domain Name is not “confusingly” similar to the WIRED mark and that it legitimately and in good faith used the “www” acronym and a common English word, “wired”, for an Internet advertising website.
The Respondent Moniker Privacy Services did not submit a Response.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a Respondent of a disputed domain name, a Complainant must demonstrate each of the following:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Procedural Objections
The Respondent MSA filed its Response four days after the deadline calculated by the Center under paragraph 4 of the Rules.
The Respondent MSA argues that service of the Complaint was invalid and that the proceeding was not properly commenced, on the following grounds:
- The Complaint was not served on the Respondent MSA within three days after the Complainant’s payment of fees, as required by the Rules, paragraph 4(a).
- The Complaint did not include the name and address of the Respondent MSA, as required by the Rules, paragraph 3(b)(v). The Respondent MSA disputes that this defect was cured by the Complainant’s Notice of Amended Complaint, because the Complainant did not present a redrafted Complaint but merely sent a letter asking the Center to ignore all references to another domain name and add MSA as a Respondent.
- The Complaint as delivered electronically did not include attachments mentioned in the document.
- Assuming that the attachments were delivered with the hard copy of the Complaint on December 20, 2007, that should be the beginning date for calculating the deadline for the Response, not December 18.
There was no violation of paragraph 4(a) of the Rules, which requires the Center to forward the Complaint within three days after the Complainant’s payment of fees if the Complaint is found to be in administrative compliance following the Center’s review. In this case, the Center correctly concluded from that review that the Complaint required amendment, based on information provided by the Registrar and the Registrar’s changing the name of the registrant in its WHOIS database.
The original Complaint did not include the name and address of Respondent MSA, presumably because that was not the name shown as the registrant on the Registrar’s WHOIS database at the time. The Complainant’s letter amending the Complaint was a satisfactory response to the Center’s communication concerning the new information provided by the Registrar. The Rules and Supplemental Rules do not require an entirely restated Complaint, and this Decision explicitly addresses the Complaint as amended.
The Panel finds no evidence that the necessary delays involved in communicating with the Registrar and amending the Complaint and related notices prejudiced the Respondent MSA, which has presumably continued to earn advertising revenues in the interim from the domain parking website to which the Domain Name resolves. Moreover, the amendment and attendant delays were the direct consequence of the Respondent MSA using a domain privacy service that shielded its identity until the Registrar responded to the Center’s request for registrar verification in this proceeding. The Complainant amended the Complaint, and the Respondent MSA was notified promptly, once the Registrar disclosed the Respondent MSA’s identity. The Respondent MSA can hardly complain in these circumstances that its own actions required more effort for the Complainant and the Center to identify the Respondent MSA and engage it in this proceeding.
Accepting the Respondent’s assertion that certain attachments were not included with the electronic delivery of the Complaint by email from the Center on December 18, 2007, the Respondent MSA does not deny receiving them subsequently, most likely with the delivery of the hard copies two or three days following the Center’s email. The Respondent had sufficient information to begin its preparations on December 18, 2007, and most likely had the entire file at most three days later. The Response was filed four days after the deadline calculated by the Center, so the Respondent effectively took more than commensurate additional time to respond and did, in fact, present a full Response to the Complaint with assistance of legal counsel.
In any event, in light of all these circumstances and in the interest of having all available information before it, the Panel accepts the late-filed Response and concludes that there is no need to require the Complainant to refile an amended Complaint, nor to permit further pleading by either party.
B. Identical or Confusingly Similar
The Complainant indisputably holds registered WIRED trademarks. The Domain Name differs from the WIRED marks in prefixing “www”, the acronym for “World Wide Web”, which Internet users are accustomed to seeing in the uniform resource locator (URL) address for many websites, albeit separated from the domain name itself by “.”. The “.com” generic top-level domain name at the end of the URL is non-distinctive and therefore immaterial for Policy purposes.
Because “www” is an expected part of a website address, the Panel finds that its inclusion in the Domain Name does not avoid confusion between the distinctive portion of the Domain Name and the Complainant’s identical mark. For purposes of paragraph 4(a)(i), this Panel follows the lead of past panels and disregards the “www” prefix. See, e.g., Crédit Industriel et Commercial v. Domain Drop S.A., WIPO Case No. D2007-0666 (disregarding the “well known acronym for ‘world wide web’ at the beginning of a domain name”, even where the disputed domain name <wwwcic.com> lacked the usual separating punctuation mark “.”).
The Respondent MSA argues against a finding of confusing similarity on the ground that the Complainant’s WIRED marks are based on a common English word and are “significantly minor and heavily restricted in their use”, claiming that “the public do not, in any significant number, connect the word ‘wired’ to the magazine”. The Respondent MSA also contends that any “confusion” would be the result of the Internet user’s browser software automatically adding “www.” if the user neglected to type the “.” between “www” and “wired.com”. This, according to the Respondent MSA, represents confusion of software not confusion of Internet users.
These arguments are not persuasive.
Respondent’s claims regarding the marketplace strength of Complainant’s registered trademark are irrelevant to whether <wwwwired.com> is identical or confusingly similar to that mark. First, the Complainant’s numerous trademark registrations for WIRED are sufficient to establish rights in the term “wired.” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions § 1.1. Second, UDRP panels deciding proceedings under the Policy need not engage in an evidentiary analysis of the likelihood of confusion between a contested domain name and a registered mark, as is common in many legal actions under national trademark laws. The nature of Policy proceedings — providing a swift administrative remedy with no hearings, no evidentiary discovery, and a limited factual and legal record — militates against such analysis. Rather, Panels have routinely held that the question under paragraph 4(a)(i) of the Policy is simply whether the alphanumeric string comprising the challenged domain name is identical to the Complainant’s mark or sufficiently approximates it, visually or phonetically, so that the domain name on its face is “confusingly similar” to the mark. See, e.g., Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415 (<nicholekidman.com> and <nicolekidmannude.com> were confusingly similar to the complainant’s mark, NICOLE KIDMAN, for Policy purposes, despite a misspelling in one of the domain names and the addition of a dictionary word to the other). Because the Panel has already disregarded the prefix “www,” the Domain Name here is effectively identical to the Complainant’s WIRED mark for purposes of the Policy.
There is no basis for the Respondent’s distinction between confusion of software and confusion of Internet users. An Internet user seeking information about Wired magazine or the Complainant’s associated website may easily overlook the missing “.” when seeing or typing the Domain Name. Such initial confusion is the focus of the first element of the Policy Complaint. It is the simple appearance of similarity — to an Internet user, not the browser — that makes the Domain Name in this instance “confusingly similar” to the Complainant’s WIRED marks.
C. Rights or Legitimate Interests
The Policy, paragraph 4(c), advises respondents as follows:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; . . .”
The Panel finds no evidence that the Respondent Moniker Privacy Services (or the Registrar, if Moniker Privacy Services is merely a trade name for the Registrar’s domain privacy service) ever owned or controlled the Domain Name. As described on the Registrar’s website, registration in the name of its privacy service leaves the beneficial owner contractually in control of a domain name. Such registration merely serves to cloak the name and address of the beneficial owner until such time as a legal claim or Policy complaint is asserted. Once that happened in this case, the Registrar changed the name of the registrant to that of the Respondent MSA. Thus, there is no need for the Panel to inquire into the rights or legitimate interests of the Respondent Moniker Privacy Services, and the Respondent Moniker Privacy Services has not asserted that it has any rights or legitimate interests in the Domain Name.
Respondent contends that “www” (referring to the World Wide Web) is appropriate to use in connection with an online business, and that “wired” is a common word that “any person is entitled . . . to utilize within a business name or domain name”.
Respondent’s contention that registering any combination of “www” and a common dictionary term is per se legitimate is flatly contradicted by a number of UDRP decisions. See Pioneer Hi-Bred International, Inc. v. Ingescom and Duran, WIPO Case No. D2001-0202 (transferring <wwwpioneer.com>, Classmates Online, Inc. v. Maxim Snezko a/k/a Steve Cho, WIPO Case No. D2007-0825 (transferring <wwwclassmates.com>); Match.com, L.P., v. Kausar, WIPO Case No. D2003-0510 (transferring <wwwmatch.com>).
Moreover, this broad contention is undermined by Respondent’s specific uses of the Domain Name. The Respondent MSA admittedly uses the Domain Name for a commercial website that displays third-party advertising links and does not explain why it chose this precise combination for the Domain Name. A perusal of the associated website reveals that the Respondent MSA does not make use of the word “wired” in any generic sense. To the contrary, the website most prominently features advertisements for sources of the Complainant’s Wired magazine and for competing publications. This is consistent with an attempt to misdirect Internet users familiar with the WIRED mark for commercial gain (pay-per-click advertising revenues), which cannot be considered a use in connection with a “bona fide” offering of goods and services.
To the extent that the website associated with the Domain Name links to the Complainant’s own website at “www.wired.com” or to other sources for Wired magazine, the Panel finds that this also does not represent a legitimate interest in using the WIRED mark in the Domain Name. It is undisputed that the Complainant has not authorized the Respondent MSA to use the WIRED mark in the Domain Name, and even a reseller or distributor of Wired magazine would not normally be entitled to do so if it used a domain name incorporating the trademark, as the Respondent MSA does, to advertise different and competing products. See, e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (where a reseller’s domain name incorporates a trademark, the associated website must be used to sell only the trademarked goods; otherwise, there is the possibility that the respondent is simply using the trademark to bait consumers and then switch them to other goods). See also SCOLA v Brian Wick dba CheapYellowPages.com, NAF Case No. 1115109 (rejecting argument that landing page was a fair use because the links were all related to the domain name; “[a]lthough non-commercial links to persons or towns named ‘Scola’ may, in appropriate circumstances, qualify as a fair use under § 4(c)(iii), the inclusion of links to websites based on SCOLA trademarks cannot be deemed a bona fide use and therefore are not legitimate”).
The Panel finds, therefore, that the second element of the Complaint has been established.
D. Registered and Used in Bad Faith
The Policy, paragraph 4(b), gives non-exhaustive illustrations of bad faith registration and use, including the following:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.”
The Complainant implicitly relies on this provision, arguing that the Respondent MSA uses the Domain Name to mislead Internet users, attracting them to the Respondent MSA’s website for commercial gain through pay-per-click advertising revenues.
The Respondent MSA is located in the United States. In its Response, it does not deny prior knowledge of the Complainant’s WIRED trademarks. The record shows that these trademarks are registered in the United States of America, long-established, and known to at least hundreds of thousands of persons. Moreover, the Respondent MSA’s website associated with the Domain Name, and others to which it links, specifically and prominently mention Wired magazine, as well as advertising sources for other publications. The Respondent MSA has not articulated specific reasons for including the word “wired” in the Domain Name. Given the manner in which it has used the Domain Name, the most plausible explanation is that it sought to exploit the Complainant’s WIRED mark for commercial gain in the form of shared revenues from third-party advertising. By capitalizing on the accidental omission of “.” from <www.wired.com> by Internet users seeking Complainant’s website, Respondent is most likely engaged in the practice of “typosquatting” that has been deemed bad faith by past Panels in and of itself. See National Association of Professional Baseball Leagues, Inc. v. Zuccarini, WIPO Case No. D2002-1011 (“Typosquatting is inherently parasitic and of itself evidence of bad faith.”); General Electric Co. v. Cvieli, WIPO Case No. D2000-0377 (“[T]he practice of ‘typosquatting’ constitutes registration and use in bad faith.”).
Furthermore, the Panel notes that “MSA Inc” has been the respondent in other UDRP proceedings finding bad faith and ordering the transfer, to trademark owners, of domain names similarly used to display third-party advertising links. See, e.g., Societé Air France v. MSA, Inc., WIPO Case No. D2007-0143 (“MSA, Inc.” of “California”); Ace Cash Express, Inc. v. MSA, Inc., NAF Claim No. FA106759 (“MSA, Inc.” at the same postal address given for the Respondent MSA in the current proceeding). This suggests that the Respondent MSA may be engaged in a pattern and practice of registering domain names based on trademarks and using them to generate advertising revenues.
The Panel finds additional evidence of bad faith in the failure of the Respondent MSA to reply to repeated communications from the Complainant concerning alleged trademark infringement. There may often be legitimate reasons for a domain name registrant to employ a domain privacy service, such as reducing unsolicited commercial “spam” emails and avoiding contacts at a residential address. However, registrants remain responsible for the lawful use of their domain names. Paragraph 2 of the Policy, “Your Representations,” is incorporated by reference in the registration agreements of ICANN-approved registrars:
“By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that . . . (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.”
Here, the Respondent MSA either used a domain privacy service that did not reliably forward communications about alleged infringement, or else the Respondent MSA simply disregarded such communications when they were forwarded. In either case, this reflects a cavalier attitude toward the rights of others that is contrary to the spirit of the registration agreement and suggests bad faith in the registration and use of the Domain Name. It also suggests that a motive for using a domain privacy service in this instance was to increase the difficulty for a trademark owner of identifying the registrant, assessing the merits of a legal claim or Policy complaint, and contacting the registrant, which does not reflect good faith.
Because the Respondent Moniker Privacy Services never owned or controlled the Domain Name and is not currently listed as the registrant, there is no need to inquire into its good or bad faith. Only the bad faith of the beneficial owner and current registrant, the Respondent MSA, is at issue, and the Panel finds that this has been established.
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, <wwwwired.com>, be transferred to the Complainant.
W. Scott Blackmer
David H. Bernstein
Dated: February 22, 2008