Complainant is Advance Magazine Publishers Inc. d/b/a Conde Nast Publications of New York, United States of America, represented by Sabin Bermant & Gould, LLP, United States of America.
Respondent is Rodney Rooney Productions Inc. of Newport Beach, California, United States of America.
The disputed domain name <condenasttv.com> (the “Domain Name”) is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2009. On May 13, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On that same day, GoDaddy.com, 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 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 May 25, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 14, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 15, 2009.
The Center appointed Harrie R. Samaras, David H. Bernstein and James H. Grossman as panelists in this matter on July 9, 2009. The Panel finds that it was properly constituted. Each member of 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, Advance Magazine Publishers Inc., d/b/a Conde Nast Publications, is one of the world's leading magazine publishers and media companies. It publishes 126 magazines in 23 markets across the globe and related websites.
Complainant is identified as the owner of the registered mark CONDÉ NAST PUBLICATIONS, registered on the Principal Register of the United States Patent and Trademark Office as Registration No. 3,102,717 for “publication of books and magazines.” The mark was registered on June 13, 2006, the application for registration was filed in 2004, and the mark's first use in commerce was in 1922. Complainant represents that it owns over 290 trademark applications and registrations worldwide, which include CONDE NAST as the principle element, including CONDE NAST TRAVELER, CONDE NAST EASY LIVING, and CONDE NAST JOHANSENS. Through this long-standing use, Complainant has garnered substantial goodwill in the CONDE NAST mark. It also owns and operates the website <condenast.com> and its employees all use email addresses which use the <condenast.com> domain name.
In January 2009, Complainant attempted to register <condenasttv.com> for use in connection with a new product offering. While the Domain Name was registered by Respondent on October 6, 2004, Complainant alleges it was not until this time in January 2009 that it discovered that Respondent had registered the domain name and was using it to connect to “www.octv.com” – “Orange County Television”. On January 30, 2009 Complainant's lawyers sent a cease and desist letter by email to the email addresses provided in the WhoIs lookup as well as on the “www.octv.com” website. On February 10, 2009, Complainant's lawyer called the phone number listed in the WhoIs lookup for the Domain Name and attempted to page the person at that number, but no-one returned the call. After receiving no response from Respondent for several weeks, on March 9, 2009, Complainant sent another letter to Respondent by certified mail, which Respondent did not answer. Complainant then hired counsel in Los Angeles, California to send another letter, in the hopes that Respondent would respond to a local lawyer. Respondent again failed to respond.
Complainant's submission can be summarized as follows:
(i) Respondent has registered a domain name consisting of Complainant's CONDE NAST mark and the generic abbreviation “tv”. The domain name <condenasttv.com> is confusingly similar to Complainant's trademark CONDE NAST. The registration of the Domain Name has led or will lead to consumer confusion.
(ii) Respondent has no rights or legitimate interests in the Domain Name. Complainant never granted Respondent the rights to use or register the CONDE NAST mark for any purpose. Before registering the Domain Name, Respondent had no legitimate use or right to use the CONDE NAST mark.
(iii) The domain name was registered and is being used in bad faith by intentionally using a confusingly similar domain name for commercial gain - to attract Internet users to Respondent's website. In this regard Complainant asserts: (a) Respondent was aware that consumers who view the Domain Name and e-mail addresses which contain the Domain Name will expect to be linked to a website associated with Complainant's business; and (b) Respondent is using the Domain Name to link to the website of “Orange County Television” which suggests that Complainant sponsors or endorses the “www.octv.com” website.
Respondent did not reply to Complainant's contentions.1
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name 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;
(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.
The Panel finds that Complainant, through its use of, and registrations covering, the CONDE NAST mark, has rights in the mark.
The Panel concludes that the Domain Name, <condenasttv.com>, is confusingly similar to Complainant's CONDE NAST mark. The Domain Name incorporates the mark in its entirety and merely adds the descriptive or generic term “tv”. Although this evidence is itself sufficient to satisfy Complainant's burden under the first factor., EAuto, Inc. v. E Auto Parts, Inc., WIPO Case No. D2000-0121, the addition of the term “tv” to the registered CONDE NAST mark, and the use of that Domain Name to redirect Internet users to the “www.octv.com” website, is highly likely to confuse Internet users into believing that Complainant, a well known media company, is offering, sponsoring or otherwise affiliated with the Orange County Television website. See Dolce International Holdings, Inc. v. Dolce Hotels, WIPO Case No. D2005-0269.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
Complainant must prove Respondent has no rights to or legitimate interests in the Domain Name. Once a complainant makes a prima facie showing that a respondent has no rights or legitimate interests in a domain name, the burden of production on this factor shifts to the respondent to rebut the showing. The burden of proof, however, remains with complainant. See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270. Pursuant to paragraph 4(c) of the Policy, “[a]ny 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 [Respondent's] 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; or
“(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
“(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Complainant's uncontested facts establish that Complainant has not licensed or otherwise permitted Respondent to use its CONDE NAST mark in any manner including as a domain name. It also appears that Respondent has not been commonly known as “Conde Nast TV,” or even CNTV. When Internet users enter the Domain Name in their browser, they are automatically redirected to OCTV (Orange County Television), a division of Respondent (according to a press release on the OCTV website). Using a domain name that reflects the trademark of a media company to redirect the public to a website that hosts content from a different media company as well as advertisements for various businesses is an illegitimate commercial use of the Domain Name rather than a legitimate noncommercial or fair use under the Policy. See, e.g., T-N-T Carports, Inc. v. Private Who is For bpelprip1701 / Pluto Domain Services Private Limited, WIPO Case No. D2008-1605.
Once prima facie evidence has been adduced, as in the present case, it is then incumbent upon Respondent to rebut Complainant's evidence. In this case, because Respondent has failed to file a Response, the Panel finds that the Complainant's facts are to be taken as proven.
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
Paragraph 4(b) of the Policy sets forth four criteria that may be considered as evidence of Respondent's registration and use of a domain name in bad faith:
“(i) circumstances indicating that you [e.g., Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
“(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
“(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
“(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.”
Based on uncontested evidence provided to the Panel by Complainant, including Complainant's longstanding use of the CONDE NAST mark and the fact that both Complainant and Respondent are media companies distributing content on similar subject matter (e.g., travel, dining), the Panel infers that Respondent knew of Complainant and its rights in the CONDE NAST mark before registering the Domain Name. Thus, the Panel concludes Respondent's registration was in bad faith.
Respondent's bad faith use is evidenced here by the fact that Respondent is using a domain name that is confusingly similar to Complainant's well-known CONDE NAST mark on a competitive website (e.g., distributing information on travel, leisure, dining). Moreover, on its website, Respondent encourages businesses to advertise with OCTV and, indeed, promotes many different kinds of products and services for a wide-range of businesses.
Further evidence of Respondent's bad faith adoption and use of the Domain Name is the fact that, on the website to which the public is redirected (the OCTV website), Respondent is using a domain name, <octv.com>, which does not infringe Complainant's rights in the CONDE NAST mark. Thus, Respondent intentionally registered and is using an infringing domain name <condenasttv.com> to attract for commercial gain Internet users to its “www.octv.com” website by creating a likelihood of confusion with Complainant's CONDE NAST mark as to source, sponsorship, affiliation or endorsement of its business.
The Panel also notes that by disregarding Complainant's many overtures to address the dispute here, Respondent has provided further evidence of its bad faith use of the Domain Name.
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <condenasttv.com> be transferred to Complainant.
Harrie, R. Samaras
David H. Bernstein
James H. Grossman
Dated: July 23, 2009
1 Given the absence of a Response, the Panel has carefully reviewed the record to ensure that Respondent received fair notice of this proceeding. Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415. To expedite notice to Respondent, the Center sent notification of the Complaint to Respondent by United Parcel Service (“UPS”) who notified Respondent of the Complaint by putting a notice in Respondent's P.O. Box. The Center also sent the notification to the email addresses listed in the Registrar Verification, which did not bounce back (although the Center's emails to the email@example.com address did bounce back). Thus, it appears that the Respondent received actual notice of the Complaint, but, even if did not, the Panel finds that the Center has discharged its obligation to provide fair notice to Respondent under paragraph 2(a) of the Rules. Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647.