WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Forward Fund, Inc. v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Glaf Akkerman, Forward Inc

Case No. D2016-0140

1. The Parties

Complainant is The Forward Fund, Inc. of New York, New York, United States of America, represented by Cowan, Liebowitz & Latman, PC, United States of America.

Respondent is Registration Private, Domains By Proxy, LLC, DomainsByProxy.com of Scottsdale, Arizona, United States of America / Glaf Akkerman, Forward Inc of Atlanta, Georgia, United States of America.

2. The Domain Name and Registrar

The disputed domain name <forwardliteratureaward.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2016. On January 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 26, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 27, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 29, 2016.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 22, 2016. Respondent did not submit any substantive response. Accordingly, the Center notified Respondent’s default on February 23, 2016.

Respondent submitted brief, informal email communications to the Center on January 27, 28 and February 23, 2016.

The Center appointed Robert A. Badgley as the sole panelist in this matter on March 2, 2016. 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

Complainant and its predecessor, through an affiliate and licensee The Forward Association, Incorporated (collectively hereafter “Complainant”), have operated a nonprofit media company and “cultural institution” since 1897. Complainant publishes the weekly newspaper Forward (English language) and the bi-weekly newspaper Forverts (Yiddish language). Complainant also operates online news websites at “www.forward.com” and “www.yiddishforward.com”. The scope of the news and analysis offered by Complainant includes contemporary and historical topics of interest to “the Jewish community and the public at large.”

Complainant holds several United Stated trademark registrations for the mark FORWARD and various marks including FORWARD (such as FORWARD FORUM and FORUM SERIES). According to Complainant, these registered marks identify and distinguish Complainant’s “print and online publications, newspaper columns, newspaper sections, film festivals, and news, content, and entertainment-related services, events and activities covering a wide variety of topics, including, but not limited to, literature, the arts and entertainment, the environment, history, culture, politics, religion, international affairs, public policy, media, technology, business, the humanities, as well as other social, cultural, economic, and environmental issues.” The evidence annexed to the Complaint generally supports this characterization of the goods and services offered under the FORWARD family of marks.

Respondent registered the Domain Name in June 2011. The Domain Name resolves to a website bearing the title “The Forward National Literature Award.” This award is described as follows: “Forward National Literature Award (FNL) is an independent literary organization dedicated to honoring traditionally published works in nine categories.” The website then provides information on eligibility to compete for an “FNL” award and sets out the submission guidelines.

According to Respondent’s website, each literary work submitted is “judged on its uniqueness, entertainment, and content by a ‘judge panel.’” The judges allegedly come from “experts in the publishing field.” The site lists the names of the alleged judges, and claims that literary awards were bestowed in 2011, 2012, 2013, and 2014.

In September 2015, Complainant retained a private investigator. The investigator found that the address for Respondent listed in the WhoIs database was a nonexistent address. The investigator also found that the telephone number in the WhoIs database corresponded to a Mr. A. Izmaylov at a certain address in Alpharetta, Georgia. The investigator also discovered that Mr. Izmaylov’s daughters, N. and M., as well as Respondent Glaf Akkerman, have also been reported as living at that address. In 2011 and 2012, N. and M. both won first or second prize in at least one of the categories for the FNL award. The investigator also made contact with three alleged judges identified at the website, and the judges confirmed that they had not had any association with the website “in recent years.” Finally, the investigator learned that there is a UPS store at the address designated on Respondent’s website for the submission of literary entries, and that the UPS store confirmed that Forward National Literature does not maintain an active mailbox there.

In March 2015, September 2015, October 2015, and November 2015 Complainant or its outside trademark counsel sent cease-and-desist missives to Respondent, who did not reply.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name. In essence, Complainant argues that Respondent is using the Domain Name to create the misleading impression that the FNL awards are legitimate, whereas they are simply a means of bestowing literary bogus awards on Respondent’s daughters. By this ruse, Complainant contends, Respondent is using a Domain Name confusingly similar to Complainant’s FORWARD mark in order to “bolster [the daughters’] reputations as authors and mislead the public.” As Complainant also put it, the ruse set up by the Domain Name was intended “to conceal the fact that the Izmaylov sisters were granting awards to themselves.”

B. Respondent

Respondent did not reply to Complainant’s contentions. The informal Respondent communications referred to in the Procedural History were non-substantive.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) 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.

A. Identical or Confusingly Similar

Complainant clearly holds rights in its registered trademark FORWARD. The Domain Name incorporates this mark in its entirety and adds the descriptive words “literature award.” Because the FORWARD mark identifies and distinguishes Complainant’s offerings in the realm of news and commentary about literature (among other topics), the additional descriptive words do not diminish the confusing similarity between the mark and the Domain Name.

Complainant has established Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.

The Panel finds that Respondent lacks rights or legitimate interests in respect of the Domain Name. If Respondent were a legitimate undertaking, one would have expected at least two things. One, Respondent’s contact information, both in the WhoIs database and on the website where visitors are directed to send their literary submissions to an apparently nonexistent UPS mailbox, would have been accurate. Two, Respondent would have responded substantively to one or more of the four cease-and-desist missives it received, or at least to the Complaint in this proceeding. As it stands, in the face of Respondent’s silence and the bizarre but plausible account presented by Complainant (and as supported by the findings of a private investigator), the Panel has little choice but to accept Complainant’s version of events in their entirety.

One who stands accused of setting up a sham website to establish sham literary awards and bestowing such awards on one’s own children in the asserted aim of enhancing the literary standing of such children may ordinarily be expected to come forward and rebut such charges.¹

Complainant has established Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

For reasons similar to those set forth above under the “rights or legitimate interests” head, the Panel concludes that Respondent registered and has been using the Domain Name in bad faith. Respondent has failed repeatedly to rebut Complainant’s allegations, and the evidence put forth by Complainant leads plausibly to the conclusion that Respondent more likely than not registered the Domain Name in order to appropriate a trademark – FORWARD – associated with literary endeavor (among other things) and create the false impression that Respondent’s daughters were worthy of a number of literary awards. The ultimate objective of this probable ruse, it may be inferred without much difficulty, is to enhance the literary stature of Respondent’s daughters and thereby smooth their path to career success. For purposes of the Policy, this cannot be considered other than registration and use in bad faith.

Complainant has established Policy paragraph 4(a)(iii).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <forwardliteratureaward.com> be transferred to Complainant.

Robert A. Badgley
Sole Panelist
Date: March 16, 2016