WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Future Publishing Limited v. DomainsByProxy.com, Robert Lamb
Case No. D2010-1526
1. The Parties
The Complainant is Future Publishing Limited of Bath, United Kingdom of Great Britain and Northern Ireland, represented by Stevens and Bolton LLP, United Kingdom.
The Respondent is DomainsByProxy.com of Scottsdale, Arizona, United States of America and Robert Lamb of Sydney, New South Wales, Australia and Shanghai, People's Republic of China, represented by Paul Toohey, China.
2. The Domain Name and Registrar
The disputed domain name <cyclingnewsasia.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2010. On September 10, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 13, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on September 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 5, 2010. The Response due date was extended until October 18, 2010 through agreement of the Parties, and thereafter the proceedings were suspended until December 26, 2010. The proceedings were reinstituted on December 28, 2010, with a revised Response due date of January 2, 2011. The Response was filed with the Center on January 2, 2011.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on January 11, 2011. 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
The Complainant operates a business which publishes more than 100 special interest magazines, and operates more than 70 related websites. The Complainant owns and operates a website at <cyclingnews.com> which provides news about cycling, race results, cycling technology, live race coverage, race photography, interviews, features, diaries, video content, fitness and other forums all related to cycling. The Complainant’s website was launched in 1995, and has been continuously operating since that time. The website attracts more than 1.9 million unique visitors per month.
The Complainant’s website is accessed by users in many countries around the world. The Complainant’s website was viewed by users in the following countries during the month of July, 2010:
Hong Kong: 231,309
Advertising for the website in 2009 was GBP 1.3 million and over 100 cycling brands regularly advertise on the <cyclingnews.com> website.
The Respondent registered the disputed domain name <cyclingnewsasia.com> on June 20, 2009, and operates a website that provides news about cycling activities in Asia, in English and Mandarin. The Respondent is located in Shanghai, China, and has been involved in the cycling industry in Asia since the early 1980’s. The disputed domain name and the corresponding website promotes cycling, including the running of local events, regional races, community activities and the sponsorship of local riders and clubs. The Respondent’s website also provides coaching and technical advice to local Asian cycling clubs and race organizers.
The Respondent owns several other domain name registrations, which are connected to or revert to websites in association with cycling, such as: <bicyclingnewsasia.com>; <chiqishui.com>; <feihonglun.com>; <qidaolao.net>; <xinqiwen.com> (new cycling news); <chiqishui.org>; <zixingchezixingche.cn>; <shanghaivelo.com>; <triathlonnewsasia.net>; and <xinquiwen.net>.
The Complainant became aware of the Respondent’s domain name <cyclingnewsasia.com> in October, 2009, and wrote to the Respondent on October 19, 2009, requesting that the Respondent cease using the name CYCLING NEWS and seeking transfer of the disputed domain name. The Respondent responded to the Complainant’s demand letter on October 25, 2009, seeking co-operation between the parties.
5. Parties’ Contentions
Identical or Confusingly Similar
The Complainant contends that it owns significant common law trademark rights in the mark CYCLING NEWS in association with the operation of an on-line publication featuring news and articles regarding the sport of cycling around the world. The disputed domain name contains as the first two dominant elements the Complainants mark CYCLING NEWS. The addition of the geographical indicator “Asia” is not a distinguishing feature. The Complainant notes the decision of Metalfrio Solutions A/S v. Cliff Upritchard WIPO Case No. D2010-0092, in which the domain name <caravellireland.com> was held to be confusingly similar to the complainant’s trademark CARAVELL.
The Complainant submits that they have experienced actual instances of confusion by companies who regularly advertise on the Complainant’s website. Those companies include: Full Speed Ahead and Limar, who erroneously believed that the Respondent’s website was related to the Complainant.
The Complainant contends that the disputed domain name <cyclingnewsasia.com> is confusing similar to the Complainant’s common law trademark CYCLING NEWS.
Rights or Legitimate Interests
The Complainant submits that the Respondent is not commonly known by the words “Cycling News”. The Complainant further submits that the Respondent is not making a bona fide use of the disputed domain name. The Complainant’s website had been in operation for 14 years, and is extremely popular in the sport of cycling. The Respondent admitted in his letter dated November 10, 2009, that he was aware of the Complainant’s website and added the suffix “asia” in an attempt to distinguish the Respondent’s website from that of the Complainant. The Complainant therefore contends that the Respondent registered the disputed domain name to attract Internet users looking for the Complainant’s website to the Respondent’s website for the purposes of monetary gain. The Complainant submits that the Respondent is deliberately attempting to take advantage of the Complainant’s goodwill and reputation in the mark CYCLING NEWS by misrepresenting to Internet users that he was in some way authorized, licensed or endorsed by the Complainant, which he had not been.
Registered and Used in Bad Faith
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith for the following reasons: (i) the Respondent was aware of the Complainant’s rights in the common law trademark CYCLING NEWS when he registered the confusingly similar domain name <cyclingnewsasia.com>; (ii) the Respondent is using the confusingly similar domain name in association with the operation of a website which provides similar news and information content as the Complainant’s website, which is in direct competition with the Complainant; (iii) the Respondent is thereby preventing the trademark owner from obtaining and using the disputed domain name; and (iv) the Respondent is using a confusingly similar domain name in association with a website to trade on the goodwill and reputation of the Complainant, and to interfere with the Complainant’s business.
The Respondent contends that the trademark CYCLING NEWS is not distinctive in that it is clearly descriptive of the subject matter of its related services associated with it. The Respondent submits that there are third parties who utilize similar terms in domain names, such as: <cyclingnews.co.za>; <cyclesportnews.com>; <teamdfl-cyclingnews.com>; <bikeworldnews.com>; <nebraskacyclingnews.com>; <usprocyclingnews.com>; <fantasycyclingnews.com>; <cyclingview.com>; <cyclingtours.com.au>; <cyclingsouth.com>; and <velonews.com>. The Respondent states that the Complainant has acknowledged the generic nature of the term “Cycling News”.
Over 70% of the Respondent’s website is in the Mandarin language, compared to the Complainant’s website which is entirely in the English language.
The Respondent’s website design and brand were developed independently of the Complainant’s website, and are based on a book produced by the Respondent in 2009.
The Respondent refutes the claims that the Respondent registered the disputed domain name for financial gain. In the correspondence between the Complainant and the Respondent, no claim for money had been made. The Respondent states that the parties operate in different markets, and the Respondent is directing his website to the recent growth in interest in cycling in Asia.
The Respondent admits its website contained a reference to the Complainant’s website, but explains that this was an error made by a journalist. When the Respondent was made aware of this error, it removed the reference and notified its staff that this would breach their corporate standards. No such incident has occurred since.
The Respondent claims that he has built a significant amount of goodwill in the CYCLINGNEWSASIA brand in Asia, based on his legitimate interest in the sport in Asia since the 1980’s.
The Respondent refutes the claim that he registered the disputed domain name in bad faith. The Respondent claims that he did not register the disputed domain name to extort money from the Complainant, argues that the mark CYCLING NEWS is common and generic, and states that the Complainant and the Respondent operate in two different markets. In particular, the Respondent claims to operate a website in association with information and news regarding cycling specifically directed to the Mandarin speaking public in Asia.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The critical question in this proceeding is whether the Complainant has rights in the common law trademark CYCLING NEWS sufficient to support its claims. The Respondent has denied that enforceable rights can exist in a name such as “Cycling News” because the words describe the nature of the publication/website. If the terms are nothing more than generic descriptors, then the Respondent argues that these proceedings must be dismissed because no trademark rights exist to serve as a proper foundation for the Complaint.
In the absence of registered trademarks, the onus is clearly on the Complainant to establish, through cogent evidence, that it has created and maintained common law rights which can support its claims. Where the constituent elements of the common law mark are relatively non-distinctive – as is the case with “Cycling News” then the burden of proof is even more difficult to satisfy.
In this matter, relying on limited submissions and exhibits, the Panel is prepared to find that, on the balance of probabilities, the Complainant has established sufficient common law rights in the mark CYCLING NEWS to support this Complaint. The Panel’s findings are based on the following factors:
1) It is clear that CYCLING NEWS is extremely well-known in the world of its target audience. The large number of visitors to the Complainant’s “www.cyclingnews.com” website is indicative that this publication/website is in fact at the centre of the cycling world as the Complainant has alleged.
2) The international scope of this reputation is effectively evidenced by the number of website visitors from Asian countries in July, 2010. Although it is an English language website, it obviously has significant international reach, extending to many Asian countries.
3) The large number of advertisers in the publication/website confirms the commercial importance of its reputation.
Once it is acknowledged that the Complainant has established common law rights in its trademark, it is clear that the Respondent’s domain name is confusingly similar to that mark, in that it replicates the two principal elements of the mark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
On the evidence as filed, the Panel is prepared to find that the Respondent does not have rights or legitimate interests in the disputed domain name. The Panel is led to this conclusion primarily by the fact that the Respondent has knowingly established a business which is clearly derivative of the pre-existing <cyclingnews.com> publication/website of the Complainant.
The Panel is prepared to accept that the Complainant’s CYCLING NEWS common law trademark and website publication are well-known and have developed a significant reputation in the cycling industry. There is no doubt that the Respondent knew about the reputation of the CYCLING NEWS trademark and domain name. In fact, he acknowledges that he has been active in the cycling industry for many years, and in his correspondence with representatives of the Complainant leading up to this proceeding, he acknowledged that he was aware of the trademark in question when he adopted the similar domain name. It is also clear that no permission was granted to the Respondent to undertake a similar business venture in association this derivative name. In all of the circumstances, the Panel finds that the Respondent does not have rights or legitimate interests in the <cyclingnewsasia.com> domain name.
The Panel finds no evidence that the Respondent is commonly known by the name CYCLING NEWS, and was not licensed or authorized by the Complainant to use the trademark CYCLING NEWS.
The Panel finds that the Complainant has therefore satisfied the requirements under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
On the evidence as filed, the Panel is prepared to find that the disputed domain name has been registered and used in bad faith. It is clear that the Respondent was aware of the Complainant’s reputation in the CYCLING NEWS trademark and that he adopted the <cyclingnewsasia.com> domain name, at least in part, to trade on that well-established reputation which the Complainant has developed.
It is also clear from examining the respective websites of the Complainant and the Respondent that the business enterprises are essentially identical. It appears that the Respondent has in fact modeled his website on that of the Complainant in terms of content, type of advertising and overall format. The fact that there are instances of actual confusion among advertisers is powerful evidence that third parties believe there is a business connection between the Complainant and the Respondent, based on the adoption of the disputed domain name. There are many other domain names which the Respondent could choose, drawing on the concept of providing information services to the bicycling community. The choice of <cyclingnewsasia.com> in the Panel’s view, was intended to generate a connection to the Complainant’s well-known website/publication and to derive benefits from that connection.
Accordingly, the Panel is prepared to find that the disputed domain name was registered and used in bad faith. The Complainant has therefore satisfied the requirement under paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <cyclingnewsasia.com> be transferred to the Complainant.
Christopher J. Pibus
Dated: February 7, 2011