Complainant is Starline Publications, Inc, Paramus, New Jersey, United States of America, represented by McCarter & English, LLP, United States of America.
Respondent is Texas International Property Associates, Dallas, Texas, United States, represented by the Law Office of Gary Wayne Tucker, United States.
The disputed domain name <blackmenssx.com> is registered with Compana, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2008. On November 26, 2008, the Center transmitted by email to Compana, LLC a request for registrar verification in connection with the disputed domain name. On November 27, 2008, Compana, LLC, transmitted by email to the Center its verification response confirming that 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” or “UDRP”), 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 December 1, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 21, 2008. On December 21, 2008, Respondent filed a Response.
The Center appointed Gregory N. Albright as the sole panelist in this matter on January 13, 2009. 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.
Complainant is a leading publisher of magazines, including BLACK MEN and SSX magazines. Complainant is the owner of Registration No. 3,324,417 in International Class 016 issued by the United States Patent and Trademark Office for the BLACK MEN trademark. Complainant is also the owner of Registration No. 2,858,085 in International Class 016 issued by the United States Patent and Trademark Office for the SSX trademark.
Respondent Texas International Property Associates registered the disputed domain name <blackmenssx.com> on January 10, 2005. In President and Fellows of Harvard College v. Texas International Property Associates NA NA, WIPO Case No. D2008-0597 the Panel stated: “Respondent is a d/b/a for Dauben, Inc., a corporation of which Joseph ‘Joey' Dauben is president, allegedly located at 4041 W. Wheatland, Suite 165-417, Dallas, Texas 75237 United States of America. Microsoft Corporation v. Dauben, Inc. d/b/a Texas International Property Associates, Civil Action No. 3:08-CV-0098-L, United States District Court for the Northern District of Texas, Dallas Division, Defendant's Initial Disclosures, served on April 8, 2008.”
Complainant publishes magazines using both the BLACK MEN and SSX trademarks. Complainant has continuously used the BLACK MEN mark for magazines since 1997, and has continuously used the SSX mark since 2003. Complainant uses “www.blackmenpub.com” as the primary URL for its website devoted to advertising and promoting its BLACK MEN magazine, both to consumers and advertisers.
The domain name <blackmenssx.com> wholly incorporates the BLACK MEN and SSX marks, adding only the generic top-level domain (“gTLD”) “.com”
Respondent has no rights or legitimate interests with respect to the disputed domain name. Complainant has never licensed or otherwise permitted Respondent to use either of the BLACK MEN or SSX marks. Nor did Complainant ever authorize Respondent to apply for or use the domain name <blackmenssx.com>.
There is no evidence that Respondent used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services before receiving notice of the dispute. Respondent has never been known by the name “Black Men SSX.” Instead, the evidence shows that Respondent is commonly known by the name “Texas International Property Associates”.
Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent to misleadingly divert consumers for commercial gain or to tarnish the BLACK MEN and SSX marks.
Respondent uses the domain name <blackmenssx.com> for nothing more than private financial gain. The main page of the “www.blackmenssx.com” website is typical of those established by cybersquatters: a plethora of categories related to the business of the mark owner that link to sponsors who offer for sale goods or services that might appeal to the consumer of Complainant's products. In this case, the categories include dating sites specifically geared to African American men, which might appeal to Complainant's primary readership.
Respondent is using the disputed domain name to get a free ride on and profit from Complainant's reputation in its marks. Further, Respondent's registration of the disputed domain name disrupts Complainant's business because it prevents Complainant from reflecting its marks in a corresponding domain name.
Respondent's registration of the <blackmenssx.com> domain name with constructive knowledge of Complainant's rights in the BLACK MEN and SSX marks suggests Respondent's bad faith. Respondent's use of Complainant's entire marks in the disputed domain name also demonstrates its bad faith.
Further, given the strength of the BLACK MEN and SSX marks, Respondent's use of the domain name <blackmenssx.com> seems calculated to falsely suggest to Internet users that Complainant is affiliated with the “www.blackmenssx.com” website. This kind of use of Complainant's marks by a domain name registrant with no connection to Complainant suggests opportunistic bad faith.
Finally, Respondent is a professional cybersquatter, with a history of owning domain names that wholly incorporate or are confusingly similar to famous trademarks, including: <wwwjelf-wen.com>, <westlegalcenter.com>, <westlaw.com>, <disneycasting.com>, <pillsbury.com>, <abbottdiagnostic.com>, <honeywll.com>, <youtubes.com>, and <customers-countrywide.com>. Registration of multiple domain names that a person knows are identical, confusingly similar, or dilutive of marks of others is strong evidence of bad faith intent to profit from such marks. 15 U.S.C. 1125(d)(1)(B)(i)(VIII).
Respondent has filed a Response which states: “Having had no prior contact from Complainant where Respondent would have agreed to transfer the domain, Respondent herein agrees to the relief requested by the Complainant and will, upon order of the Panel, do so. This is not an admission to the three elements of 4(a) of the policy, but rather an offer of ‘unilateral consent to transfer' as prior panels have deemed it.” Respondent has, also made the following request: “If the Panel decides that analysis is required, Respondent respectfully requests that Respondent be given the opportunity to prepare a more formal response.” The Respondent “requests that the Panel order the immediate transfer of the disputed domain name”
Under paragraph 4(a) of the Policy, Complainant has the burden of proving all of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
A respondent may demonstrate that it has rights or legitimate interests in respect of the domain name by proving those circumstances identified in paragraph 4(c) of the Policy.
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.
Respondent asserts that where a complainant has sought transfer of a disputed domain name, and Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer “without consideration of the paragraph 4(a) elements.” Respondent cites The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132; Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207; and Citigroup Inc. v. Texas International Property Associates- NANA, NAF Claim No. FA1210904.
Respondent's strongest support appears in the Citigroup case, which also involved this same Respondent. There the Panel proceeded to order a transfer without consideration of the merits of the complaint. However, Citigroup itself states that a panel should proceed to consider the merits of a complaint, despite the respondent's consent to a transfer, “under particular circumstances that call into question the validity of the respondent's consent, or for similar other good cause”.
Rule 15(a) provides: “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 it deems applicable.” Rule 15(a) could be read to make it mandatory that the merits of every dispute be considered by the Panel.
Moreover, while the parties in this matter could make any lawful agreement between themselves that they deem appropriate, including a settlement agreement regarding transfer of the disputed domain name, there is no evidence of any such agreement in this case, and the Panel is reluctant to place its imprimatur on a transfer of the disputed domain name without at least giving some consideration to whether Complainant is, in fact, entitled to have the disputed domain name transferred to it. Since at least some consideration of the merits seems to be required, a complete consideration of the merits seems most appropriate.
In any event, there is good cause to consider the paragraph 4(a) elements in this case. There is abundant evidence that Respondent is a serial cybersquatter in the United States. The Panel therefore finds it appropriate to consider the question of whether Respondent's conduct would constitute bad faith cyberpiracy under the Lanham Act. In this regard, Complainant has cited 15 U.S.C. § 1125(d)(1)(B)(i)(VIII), which provides that the following is relevant to the determination of bad faith: “the person's registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties.”
Respondent's tactics in its Response are a rather transparent attempt to avoid yet another determination of its bad faith. This Panel cannot find any legitimate reason to assist Respondent in this regard. If Respondent had wanted to avoid a finding of bad faith in this proceeding, it could have made arrangements to transfer the disputed domain name to Complainant without putting Complainant to the effort and expense of this proceeding. Complainant, on the other hand – having submitted its Complaint and paid the requisite fees – is entitled to the benefit of the Panel's decision on the merits.
The Panel finds support for this conclusion in two recent UDRP decisions involving this same Respondent: President and Fellows of Harvard College v. Texas International Property Associates-NANA, WIPO Case No. D2008-0597; and Messe Frankfurt GmbH v. Texas International Property Associates, WIPO Case No. D2008-0375. In both cases, the Panel reached a decision on the merits, and made a finding of bad faith, despite Respondent's “consent to transfer” during the course of the administrative proceeding. See also, United Consumers Club, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0987 (listing a large number of cases in which Respondent has been ordered to transfer its domain name registrations).
Finally, Respondent's request to “prepare a more formal response” is an attempted reservation of rights that is not contemplated under the Policy. UDRP Rules 5 and 12 provide for the filing of any Response within the stated deadline without the provision for a reservation of rights to file a “more formal response”, and any further statements “in addition to the complaint and response” shall be at the discretion of the Panel (not the parties).
If the Respondent wished to make a substantive case (whether in the alternative to the consent to transfer or otherwise) it should have done so in the submitted Response. See Malley's Candies, Inc. v. Texas International Property Associates – NA NA, WIPO Case No. D2008-1803.
The evidence shows that Complainant owns rights in the BLACK MEN and SSX marks, and that it acquired those rights before Respondent's registration of the domain name <blackmenssx.com>. The disputed domain name is confusingly similar to the Complainant's marks because it incorporates them in their entirety.
Paragraph 4(a) of the Policy requires a complainant to prove that respondent has no rights or legitimate interests in respect of the disputed domain name i.e., to prove a negative. Paragraph 4(c) of the Policy contemplates that Respondent will come forward with evidence to demonstrate its rights or legitimate interests, and lists non-exclusive ways this might be shown. Respondent has elected not to submit any evidence of any alleged rights or legitimate interests within the time allowed by the Policy and the Rules to rebut Complainant's prima facie showing that effect. Respondent has not explained how (not withstanding the comment above) giving it another opportunity to present an “analysis” would alter the outcome, and Respondent's request for such further opportunity and the attendant delay is therefore denied.
The Panel finds that based on the record, Complainant has demonstrated the existence of Respondent's bad faith pursuant to paragraph 4(b)(IV) of the Policy. Respondent's use of Complainant's marks for paid links or “click through” advertising revenue is bad faith. Respondent's well-established history of cybersquatting confirms its bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders transfer of the domain name <blackmenssx.com> to Complainant.
Gregory N. Albright
Dated: February 2, 2009