The Complainant is Starline Publications, Inc, of Paramus, United States, represented by McCarter & English, LLP, United States of America.
The Respondent is Unity, of Los Angeles, United States.
The disputed domain name <blackmenmag.com> is registered with Network Solutions, LLC.
The Complaint was brought pursuant to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), which was adopted by the Internet Corporation for Assigned Names and Numbers (“ICANN”) on August 26, 1999, and approved on October 24, 1999, and in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) as approved on October 24, 1999, and the World Intellectual Property Organization (“WIPO”) Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the ”Supplemental Rules”).
The Complaint, with accompanying Annexes 1-19, was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on November 25, 2008 and by hardcopy on November 28, 2008.
Pursuant to paragraph 4(d) of the Policy, the Complainant selected the Center as the ICANN approved administrative dispute resolution service provider to administer this proceeding. Through the Complaint, the Complainant requested a single-member panel.
After receiving the original Complaint, the Center, in accordance with paragraph 5 of the Supplemental Rules, verified that the Complaint complied with the formal requirements of the Rules and the Supplemental Rules. In that regard, on November 26, 2008, the Center requested confirmation from the Registrar as to whether the Registrar received a copy of the Complaint from the Complainant and to confirm contact and registrant information set forth in the Complaint relative to the disputed domain name. The Center also requested the Registrar to specify, for the domain name: (a) whether the Policy applies to the name, (b) whether the registrant has submitted, in its registration agreement, to the jurisdiction at the location of the principal office of the registrar for court adjudication of disputes concerning or arising from the use of the name, (c) the language of the registration agreement, and (d) whether the name will remain “locked” during the proceeding.
Subsequently and also on November 26, 2008, the Registrar provided its response to the Center through which it specified name and contact information pertinent to the disputed domain name to the extent, as it then existed, in its WhoIs database. Specifically, it stated that the Respondent was listed as the registrant for the name. The response also indicated that: (a) the Policy applies to the name, (b) Network Solutions, LLC is the registrar, (c) the Registrant submitted to the jurisdiction of the courts at the location of the principal office of the Registrar, (d) the registration agreement is in English, and (e) the name will remain locked during the proceeding.
The Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules and the Supplemental Rules.
On December 2, 2008, the Center formally notified the Respondent of the filing of the Complaint, including an indication that the Center was forwarding a complete copy of the Complaint to the Respondent by facsimile and email and, together with all its exhibits, by courier. The Complaint and its accompanying documents, and all subsequent communications associated therewith, were provided in the preferred manners and to the addresses as mandated by paragraphs 2(a), 2(b) and 4(a) of the Rules.
Hence, the notification to the Respondent having occurred on December 2, 2008, under paragraph 4(c) of the Rules, this administrative proceeding is deemed to have commenced on that date.
Having reviewed the Complaint and all the correspondence, including that between the Center and the Registrar, the Panel agrees with the determination of the Center that the Complaint and its handling met the requirements of the Rules and the Supplemental Rules.
The Respondent was then provided with a 20 calendar day period, expiring on December 22, 2008, to file its Response with the Center and the Complainant, that period having been extended by the Center, through request of the Respondent and consent by the Complainant, to December 31, 2008.
The Response, together with Annexes 1-8, was timely filed by the Respondent on December 31, 2008 with the Center and was subsequently acknowledged by the Center through an email letter dated January 7, 2009.
Accordingly, pursuant to the Rules and Supplemental Rules, by email letter dated January 16, 2009, the Center contacted the undersigned, Mr. Peter L. Michaelson, Esq., requesting his service as sole Panel for this dispute. Subsequently, on January 19, 2009, Mr. Michaelson accepted and returned, by email attachment to the Center, a fully executed Statement of Acceptance and Declaration of Impartiality and Independence. The Center, through an email letter dated January 20, 2009, notified the Parties of the appointment of Mr. Michaelson as sole Panelist.
Based on the deadline set forth in paragraph 15 of the Rules, a decision was to be issued by the Panel to the Center on or before February 3, 2009.
In the meantime, the Complainant had filed a request, by e-mail letter, on January 8, 2009 with the Center requesting permission to file a reply to the Response. The Panel, after it was constituted, denied this request on January 26, 2009 which, in turn and on the same date, was notified by the Center to the Parties. Furthermore, on February 2, 2009, the Complainant filed with the Center a supplemental filing. The Panel also deems not to admit said supplement filing.
This dispute concerns one domain name, specifically: <blackmenmag.com>.
The language of this proceeding is English.
As indicated in the WhoIs registration record provided in Annex 1 to the Complaint, the disputed domain name was registered on December 22, 2003.
The Complainant owns a single United States (“U.S”) trademark registration for the mark BLACKMEN in block letters. The Complainant has provided, in Annex 4 to the Complaint, a copy records for its U.S. registrations from the publicly accessible on-line Trademark Application and Registration Retrieval (TARR) system provided by the United States Patent and Trademark Office (US PTO). Pertinent details of that registration are as follows:
United States registration 3,324,417; registered: October 30, 2007
This mark is registered for use in connection with “Magazines dealing with lifestyle, namely, health, fitness, fashion, sports, sexuality, relationships, politics and finance” in international class 16. The record indicates that both first use and first use in commerce of this mark, when used in conjunction with this service, commenced as of August 31, 1997.
The Complainant publishes various magazines, including “BlackMen Magazine”, and also owns and operates a website at <blackmenpub.com> to promote that particular magazine to both consumers and advertisers. A copy of a representative sampling of the content of this website, on November 23, 2007, appears in Annex 5 to the Complaint. The Complainant has continuously used its mark since 1997 in connection with magazines.
The Respondent claims to have purchased the disputed domain name on November 8, 2002 (though the WhoIS record indicates that the actual registration date as December 22, 2003). During 2003, the Respondent set the domain name to apparently resolve to a generic “under construction” web page that eventually will be replaced by an operational website. That site, which to date still remains under construction, is intended to be a non-profit information portal for membership of black youth. Currently, the Respondent states it is gathering outside information and working towards implementing a blog, informational database, flash movies and other media on that site -- though none of that content is yet posted to the site.
According to the Complaint, the Respondent sells adult-oriented materials through its website at <mostbeautifulgirls.com>, with a screen shot of a home page of that site appearing in Annex 8 to the Complaint. A copy of the WhoIs data for that name, as of November 24, 2008, appears in Annex 7 to the Complaint. Given the content on that particular site, the Complainant and the Respondent may be competitors.
(i) Identical or Confusingly Similar
The Complainant contends that the disputed domain name is confusingly similar to the Complainant's mark.
Specifically, the Complainant states that the disputed domain name, apart from its generic top level domain (gTLD) “.com”, merely includes the Complainant's mark followed by the term “mag” which itself is a well-known term meaning “magazine”. The result “blackmenmag” describes Complainant's goods.
Hence, the Complainant believes that it has satisfied the confusing similarity/identity requirement in paragraph 4(a)(i) of the Policy.
(ii) Rights or Legitimate Interests
The Complainant contends, for any of several reasons, that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
First, the Complainant states that it has never licensed or otherwise permitted the Respondent to use the Complainant's mark, or register a domain name that includes the mark.
Second, the Respondent never used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services before receiving notice of this dispute.
Third, the Respondent has never been known either by the name “BlackMen Magazine” or the disputed domain name. Rather, the Respondent uses and appears to be known by the name “Unity.”
Lastly, the Respondent is not making a legitimate non-commercial or fair use of the name without intent to misleadingly divert consumers for commercial gain or to tarnish the Complainant's mark.
(iii) Registered and Used in Bad Faith
Lastly, the Complainant contends that the Respondent registered and is now using the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy.
First, inasmuch the Complainant and Respondent are competitors in the adult-oriented materials market, the Respondent's registration of the disputed domain name disrupts the business of Complainant, in its own online ventures, by preventing the Complainant from reflecting its mark in a corresponding domain name.
Furthermore, if an Internet user were to enter the disputed domain name, which describes the Complainant's magazine, into his(her) browser and by doing so learn that the corresponding website is not operational, then that person may mistakenly believe that the Complainant no longer publishes its BLACKMEN magazines, thus causing confusion and injury to the Complainant's reputation.
Second, the Respondent registered the disputed domain name in spite of having constructive knowledge at the time of the Complainant's rights in its mark BLACKMEN.
Lastly, the Respondent's use of the disputed domain name seems calculated to falsely suggest to Internet users that the Complainant is affiliated with the Respondent's website, though that site is not yet operational, thus suggesting and opportunistically exploiting a connection with both the Complainant and its mark -- when no such connection actually exists.
While the Respondent sets forth a number of arguments in support of its position, the Panel will only note those pertinent to the Panel's determination, taking into account the allegations raised by the Complainant and specifically noted above.
(i) Identical or Confusingly Similar
The Respondent believes that the Complainant's mark BLACKMEN is a generic term used is everyday language used to describe black males, and ostensibly does not qualify for trademark protection.
Further, the letters “mag” in the domain in question are abbreviations which represent “Mentors and Guides”.
(ii) Rights or Legitimate Interests
The Respondent states that the Complainant has not provided any proof that the Respondent has used the disputed domain name to misleadingly divert any customers from the Complainant's website for any sort of commercial gain.
(iii) Registered and Used in Bad Faith
The Respondent states that it purchased the disputed domain name in good faith. It further states that it has never attempted to: (a) sell, rent or transfer the domain to anyone else, or (b) attract users to its website by making its site confusing or similar to the content on the Complainant's website at <blackmenpub.com>.
The Respondent has never represented the disputed domain name as a magazine of any kind. The content of the Complainant's website seems to primarily revolve around partially nude, semi nude or totally nude black women -- which has never appeared on the Respondent's site.
Lastly, the Respondent states that it has never prevented the Complainant from reflecting its mark in any domain name.
As a threshold issue, the Respondent raises an allegation that the mark BLACKMEN is generic and thus incapable of distinctively identifying the Complainant's goods, and thus ostensibly has no significance as a federal trademark when used in conjunction with the goods recited in the Complainant's corresponding trademark registration.
Questions of trademark invalidity, including questions of whether a mark is generic, are simply not within the purview of a UDRP proceeding and are best left for either court adjudication or inter-partes adjudication before appropriate governmental bodies having requisite jurisdiction and competence to handle such issues. Not only are such questions outside the very limited and focused jurisdiction afforded to UDRP panels under the Policy but moreover the summary and rather abbreviated nature of UDRP proceedings totally precludes the establishment of a fully developed factual record that must underlie the determination of such questions. See, e.g., SPX Corporation v. Hevun Diversified Corporation, FA 791657 (Nat. Arb. Forum, November 13, 2006); Classic Media, Inc. v. Warren R. Royal, WIPO Case No. D2006-0208 (June 19, 2006); Lockheed Martin Corporation v. The Skunkworx Custom Cycle WIPO Case No. D2004-0824 (January 18, 2005); Register.com, Inc. v. Wolfgang Reile et al FA208576 (Nat. Arb. Forum, January 27, 2004); United States Office of Personnel Management. v. MS Technology Inc., FA 198898 (Nat. Arb. Forum, December 9, 2003); and Lake at Las Vegas Joint Venture v. Principal Equiti, Inc., WIPO Case No. D2002-0758 (October 4, 2002).
To the extent Respondent wishes to contest the continued validity of the Complainant's BLACKMEN mark on the basis this mark is generic, the Respondent must do so through an appropriate administrative and/or judicial avenue that has appropriate jurisdiction over the issue, such as by filing an action in the USPTO to cancel the Complainant's federal registration or alternatively instituting federal litigation. Absent the Respondent having done so and attained a final ruling in its favor, this Panel is constrained to defer, as it must, to the USPTO for its initial determination, implicit in its having granted a registration for this mark, that the Complainant's BLACKMEN mark has acquired sufficient distinctiveness and thus qualifies for continued federal trademark protection and enjoys all the rights afforded thereby.
Therefore, given the inability of this Panel to address the invalidity issue raised by the Respondent, then, as far as this proceeding is concerned, the Panel is not precluded from finding that the disputed domain name is either identical or confusingly similar to the Complainant's mark.
The Panel finds that the disputed domain name is confusingly similar to the Complainant's mark.
From a simple comparison of the disputed domain name to the Complainant's mark, no doubt exists that each such name is confusingly similar to the mark.
The only difference between the disputed domain name and the mark BLACKMEN is merely the appending of the term “mag” to the mark to form a composite term along with appending the gTLD (generic top level domain) “.com” to ultimately form the domain name – with the last addition being irrelevant in assessing confusing similarity or identity under paragraph 4(a) of the Policy and thus ignored.
It is now very well-established in UDRP precedent, including numerous decisions previously rendered by this Panel, that a minor variation, such as, e.g., adding short letter or number groups or even generic or highly descriptive words or terms to a mark, is usually insufficient in and of itself, when used in forming a domain name that results from modifying the mark, to confer requisite and sufficient distinctiveness to that domain name to avoid user confusion. The Respondent strenuously argues in the Response that the term “mag”, at least to it, is to be solely taken as meaning “Mentors and Guides”. Assessing a meaning attributed to any term added to a mark to form a domain name is not to be taken from the perspective of a respondent and what it intended the meaning to be -- as the present Respondent is arguing, but rather, to obtain an accurate and reliable indication, from the perspective of what an ordinary Internet user, who sees that term, would understand its meaning to be. Here, the Panel takes judicial notice that the term “mag” is indeed, as Complainant asserts, a well-known short-hand equivalent for the word “magazine”. As such, the term fails to impart any such, let alone sufficient, distinctiveness to the resulting name. Consequently, merely adding the abbreviation “mag” as the Respondent specifically did here, to the mark BLACKMEN is merely a minor variation. See, e.g., HRB Innovations Inc., Express Tax Service Inc. v. Calvin Brown, WIPO Case No. D2008-1072 (September 4, 2008); Dreamworks Animation, LLC v. Creahq, Mike Furlong, WIPO Case No. D2008-0505 (May 28, 2008); Marvel Manufacturing Company Inc. v. Koba Internet Sales, LP, WIPO Case No. D2008-0265 (May 5, 2008); MySpace, Inc. v. Edwin De Jesus, EDJ Associates Inc., WIPO Case No. D2007-1878 (March 12, 2008); Blackrock, Inc. v. blackrockfinancialservices.com, WIPO Case No. D2007-1627 (January 4, 2008); F. Hoffmann-La Roche AG v. Transliner Consultants, WIPO Case No. D2007-1359 (November 14, 2007); National Football League v. Peter Blucher d/b/a BluTech Tickets, WIPO Case No. D2007-1064 (September 24, 2007); Toilets.com, Inc. v. Rons Porta Johns, WIPO Case No. D2007-0952 (August 27, 2007); Associated Bank Corp. v. Texas International Property Associates, WIPO Case No. D2007-0334 (June 28, 2007); Gerber Childrenswear Inc. v. David Webb, WIPO Case No. D2007-0317 (April 24, 2007); SPX Corp. v. Hevun Diversified Corp., NAF Case No. FA791657 (November 13, 2006); Google Inc. v. Jennifer Burns, NAF Case No. FA 726096 (August 16, 2006); The Cheesecake Factory Inc. and The Cheesecake Factory Assets Co., LLC v. Say Cheesecake, WIPO Case No. D2005-0766 (September 12, 2005); Napster, Inc. v. Giovanni Vinscani, WIPO Case No. D2005-0531 (July 19, 2005); Caesars Entertainment, Inc. v. Nova Internet Inc., WIPO Case No. D2005-0411 (June 22, 2005); Lockheed Martin Corporation v. The Skunkworx Custom Cycle, WIPO Case No. D2004-0824 (January 18, 2005); Lockheed Martin Corp. v. Deborah Teramani, WIPO Case No. D2004-0836 (December 1, 2004) and National Collegiate Athletic Assoc. v. Dusty Brown, WIPO Case No. D2004-0491 (August 30, 2004); Lane-Labs USA, Inc. v. Powell Productions, NAF Case No. FA 155896 (July 1, 2003); and particularly Cable News Network LP, LLP v. Elie Khouri d/b/a Channel News Network et al., NAF Case No. FA 117876 (December 16, 2002).
Moreover, by including the abbreviation “mag” with the Complainant's mark BLACKMEN to form the disputed domain name, the potential for user confusion is likely to be exacerbated, not reduced. The Complainant's goods encompass a magazine titled “BlackMen Magazine”. Consequently, given current naming conventions on the Internet used in fashioning domain names to reach websites of interest, this Panel readily foresees situations where Internet users who seek information related to the Complainant's magazine are likely to form, as a corresponding domain name, the title “Blackmen” followed by either the term “magazine” or simply “mag” and concluding with the gTLD “.com”, to reach a website related to the Complainant and/or its magazine. Were such a user to use the latter term, then the disputed domain name would result. Hence, rather than reaching the Complainant's website, as would be expected from entry of that name into a browser, the user would instead be directed to the Respondent's non-operational site. That user may then very well conclude, as the Complainant's surmises, that the Complainant's magazine is no longer published -- when in fact it would be, thus causing confusion and ultimately injuring the Complainant's reputation.
Further, in this Panel's view once the Respondent's site were to become operational, then the potential for causing further injury to the Complainant will only increase. Such injury would result from likely diversion of an increased number of Internet visitors away from the Complainant's website to the Respondent's site as a result of which the Respondent – even though its website is intended to be non-profit – would stand to benefit in some manner, such as through additional web traffic, which, but for the diversion, it would not otherwise receive.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's mark as to cause confusion; hence, the Complainant has satisfied its burden under paragraph 4(a)(i) of the Policy.
Based on the evidence of record here, the Panel finds that no basis exists which, under the circumstances here, would appear to legitimize a claim by the Respondent to the disputed domain name under paragraph 4(c) of the Policy.
The Complainant has never authorized the Respondent to utilize its mark or any mark confusingly similar thereto in conjunction with the goods, i.e., magazines, with which the Complainant uses that mark or for similar goods, nor does the Complainant apparently have any relationship or association whatsoever with the Respondent. As such, any use to which the Respondent were to put the Complainant's mark BLACKMEN or one confusingly similar thereto in connection with the identical or even similar goods to those currently provided by the Complainant, as recited in its trademark registration, would violate the exclusive trademark rights now residing with the Complainant. See, e.g., HRB Innovations Inc., Dreamworks, MySpace, Blackrock, F. Hoffmann-La Roche AG, National Football League, Toilets.com, Inc., and Associated Bank, all cited supra; GoDaddy.com, Inc., v. GoDaddysDomain.com, Clark Signs, Graham Clark, WIPO Case No. D2007-0303 (May 7, 2007); Citgo Petroleum Corporation v. Richard Antinore, WIPO Case No. D2006-1576 (March 14, 2007); New Destiny Internet Group, LLC and Xplor Media, Inc. v. SouthNetworks, WIPO Case No. D2005-0884 (October 14, 2005); The Cheesecake Factory Inc., Napster and Caesars Entertainment, Inc., all cited supra; Pelmorex Communications Inc. v. weathernetwork, WIPO Case No. D2004-0898 (December 28, 2004); Sybase, Inc. v. Analytical Systems, WIPO Case No. D2004-0360 (June 24, 2004); Caesars World, Inc. and Park Place Entertainment Corporation v. Japan Nippon, WIPO Case No. D2003-0615 (September 30, 2003); Leiner Health Services Corp. v. ESJ Nutritional Products, NAF Case No. FA 173362 (September 16, 2003); AT&T Corp. v. Roman Abreu d/b/a Smartalk Wireless, cited supra; MPL Communications, Limited et al v. 1WebAddress.com, NAF Case No. FA 97092 (June 4, 2001); Treeforms, Inc. v. Cayne Industrial Sales, Corp., NAF Case No. FA 95856 (December 18, 2000); and America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 (December 11, 2000). Consequently, in the Panel's view, the Respondent could not legitimaly acquire any public association between it and either of the mark BLACKMEN or one similar thereto, at least for the goods rendered by the Complainant, or, broadly speaking, any good likely perceived by Internet users to be so similar and/or to emanate from or be related, in any fashion, to those then offered by the Complainant.
Further, there is absolutely no evidence of record that the Respondent has ever been commonly known by the disputed domain name or more generally the mark BLACKMEN. In that regard, the Respondent appears more likely to be known by either “Unity” or “Unity Calendars”. Nor could the Respondent in this case likely ever become commonly known by either the disputed domain name or the mark, in light of the Complainant's exclusive trademark rights, with first use of its mark dating back to August 1997 which is at least some five years prior to the date, December 22, 2003 (according to the WhoIs record provided in Annex 1 to the Complaint) on which the Respondent registered the disputed domain name and the reputation and notoriety which the Complainant has apparently gained in its mark during that time, without infringing on the exclusive trademark rights of the Complainant. See, e.g., HRB Innovations Inc., MySpace and Treeforms, Inc., all cited supra.
Hence, based on the evidence before the Panel, the Respondent does not fall within paragraph 4(c)(ii) of the Policy.
Furthermore, since the Respondent's website is not yet operational, then the Respondent cannot be said to be making a legitimate noncommercial or fair use of the disputed domain name as would be required under paragraph 4(c)(iii) of the Policy.
Lastly, the record is devoid of any evidence, let alone convincing, which would persuade the Panel that the Respondent has made or is making demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to its having received notice of this dispute. Consequently, the Respondent's conduct does not fall within paragraph 4(c)(i) of the Policy either.
Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name within paragraph 4(a)(ii) and 4(c) of the Policy.
The Panel finds that the Respondent's actions, with respect to the disputed domain name, constitutes bad faith registration and use.
The Panel believes that the Respondent was well aware of the Complainant, its magazine and its mark BLACKMEN used in conjunction with that magazine when the Respondent registered the disputed domain name. Given that the term “mag” has a very widely and well-known meaning as a short-hand term for the word “magazine”, and the similarity of the adult-oriented content of the Complainant's website to that provided by the Respondent, through its operational website at <mostbeautifulgirls.com>, the Panel finds the Respondent's attempt at justifying its action by purportedly devising a meaning of the term “mag” that has no connection with the word “magazine” is merely an attempt to camouflage its actions of having intentionally chosen and registered the name to eventually opportunistically exploit its potential to generate user confusion, once its website were to become operational, for the Respondent's eventual benefit.
Moreover, the Panel dismisses, as totally unconvincing, all the Respondent's arguments regarding the content at its website and any dissimilarity of that content to any content at the Complainant's website for the simple reason that the Respondent has not yet implemented an operational website resolvable through the disputed domain name and, a priori and apart from a generic “under construction” message, provides no such content on its site from which it can make any such arguments, much less any comparison with any other substantive content.
Further, the evidence of record indicates that, ever since the Respondent registered the disputed domain name on December 22, 2003, it has not used the disputed domain name to resolve to an operational website hence passively holding the name since its registration over five years ago. The Panel views this passive holding in and of itself as also evidencing bad faith use and registration.
Hence, the Panel concludes that the Respondent violated paragraph 4(a)(iii) of the Policy including specifically paragraph 4(b)(iv) thereof.
Thus, the Panel concludes that the Complainant has provided sufficient proof of its allegations, with respect to the disputed domain name, to establish a case under paragraph 4(a) of the Policy upon which the relief it now seeks can be granted.
Accordingly, under paragraphs 4(i) of the Policy and 15 of the Rules, the Panel grants the relief sought by the Complainant.
The disputed domain name, <blackmenmag.com>, is ordered transferred to the Complainant.
Peter L. Michaelson
Dated: February 2, 2009