The Complainant is Krause Publications, Inc., of Iola, Wisconsin, United States of America, represented by Greenebaum Doll & McDonald PLLC, United States of America.
The Respondent is BWI Domains, of Grand Cayman, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <gundigest.com> (the “Domain Name”) is registered with Rebel.com Corp.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2008. On September 5, 2008, the Center transmitted by email to Rebel.com Services Corp a request for registrar verification in connection with the Domain Name. On September 8, 2008, Rebel.com Services Corp transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 8, 2008.
The Center appointed Warwick Smith as the sole panelist in this matter on October 14, 2008. 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.
Because no response was filed, the Panel has checked the record, which shows that the Center has discharged its responsibility under paragraph 2(a) of the Rules, to notify the Complaint to the Respondent. Although the courier pack containing the Complaint could not be delivered to the address provided in the Whois particulars for the Domain Name, and the email transmission to the “Postmaster” address failed, it appears that the Complaint and the Notice of Commencement of Administrative Proceeding were successfully transmitted to the Respondent's email address provided in the Whois particulars for the Domain Name. Accordingly, it appears that the Respondent has received actual notice of the Complaint.
The following (uncontested) statement of facts is taken from the Complaint.
The Complainant is one of the world's largest publishers of leisure-time magazines and books. It currently publishes over 40 periodicals in fourteen different areas of interest. The Complainant is also a substantial publisher of new books and editions.
The Complainant and its predecessors in title have used the mark GUN DIGEST from as early as 1944. The GUN DIGEST mark is promoted through advertising in various media, including catalogues and other publications, and it is also promoted at trade shows. The Complainant's GUN DIGEST mark receives media attention nationally in the United States of America (“United States”).
The Complainant has produced samples of some of its advertising material in which the GUN DIGEST mark is used and also various online publications showing use of the GUN DIGEST mark by various online or other publishers. The “Gun Digest” magazine circulation for 2007 was 62,000, and the “Gun Digest” book circulation in the same year was 136,700. Twelve new GUN DIGEST book titles were published in 2007.
The Complainant has produced evidence showing that it is the registered proprietor of the word mark GUN DIGEST in the United States. The relevant extract from the principal register maintained by the United States Patent and Trademark Office, shows a filing date of June 13, 1995 and refers to a first use in commerce in 1944. The registration covers reference books containing articles and information relating to guns, in international class 16. The Complainant holds a separate GUN DIGEST registration in the United States, covering magazines which are concerned with the subject of guns.
The Respondent and the Domain Name
The Domain Name was registered on May 20, 2001. It points to a portal website (“the Respondent's website”), providing links to various third party sites, most of which appear to be concerned with the subject of guns.
The Complainant has produced a copy of the Respondent's website printed on June 23, 2008. The home page of the Respondent's website prominently features the Domain Name, above the words “What you need, when you need it”. The page contains a number of click-on search items, grouped under the heading “Related Searches”. All of the links but one is clearly related to guns (the exception was a “Magazine Subscriptions” link). Contrary to what one might have expected, a “prices on used guns” link took the site visitor to a web page containing sponsored links to third party websites relating to cars. “Related searches” on the “prices on used guns” page of the Respondent's website were to websites listed under general categories such as “employment”, “dating”, “ringtones”, etc.
Another of the links on the “prices on used guns” subpage of the Respondent's website was to a website at “www.business.com”, featuring labeling guns for use in the retail trade.
The “Magazine Subscriptions” subpage of the Respondent's website contained a number of click-through links to third party websites at which magazines were offered for sale. A look at one of these links (to the website at “www.magazines.com”) shows that the word “magazines” was used as a reference to the commonly-known form of reading material, and not as a reference to that part of a gun in which bullets are located before the gun is fired. For example, there were magazines offered for sale dealing with matters such as health and fitness, entertainment, and business and finance – nothing to do with guns at all.
The “Gun Magazines” subpage contained a link to a page at the “www.magazines.com” website, which did adverte a monthly magazine called “Guns”. Prices on this page of the “www.magazines.com” website were expressed in dollars, and a “1-800” telephone number was provided. The same web page featured certain other gun-related magazines, which appeared to be products of the Complainant's competitors. One of them was the “American Handgunner” magazine. Other links from the Respondent's website were to a gun-related website at “www.shortyusa.com” and a gun-related shopping page at “www.shopping.yahoo.com”.
The Complainant also produced archived web pages from the Respondent's website, from the years 2001, 2002, and 2003 (printed from the Wayback Machine at “www.archive.org”). Each of these web pages were typical landing pages, with click-on links to third party websites grouped under a variety of headings (e.g., finance, sports, insurance, auto, shopping, health, etc). Each page prominently featured the Domain Name and the question “Looking for something?”. Beneath that question there followed text inviting the site visitor to click on one of the links or use the search function on the web page to find what he or she was looking for. None of the click-through category headings on the 2001, 2002, or 2003 pages from the Respondent's website which the Complainant produced, appeared to be in any way related to guns.
The Complainant has not authorised the Respondent to use or register any of the Complainant's trademarks, and to the best of the Complainant's belief, the Respondent does not operate any business under a name consisting of or incorporating the expression “Gun Digest”.
The Respondent has previously been found guilty of cybersquatting in cases decided under the Policy. The Respondent was the unsuccessful respondent in Gene Kelly Image Trust v. BWI Domain Manager, WIPO Case No. D2008-0342 and in Det Berlingske Officin A/S v. BWI Domain Manager, WIPO Case No. D2007-1717. The Respondent was also an unsuccessful respondent in a number of cases decided by National Arbitration Forum Panels – Keystone Automotive Operations Inc. v. BWI Domain Manager, NAF Case No. 1177906; Choice Hotels International, Inc. v. BWI Domains, NAF Case No. 1174416; American Girl, LLC v. BWI Domain Manager, NAF Case No. 1104431; AARP v. BWI Domain Manager, NAF Case No. 1094042; and AMFM, Inc. v. BWI Domain Manager, NAF Case No. 1084750.
The Complainant contends:
1. The Domain Name is identical to the Complainant's GUN DIGEST mark.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following:
(a) The Complainant has not authorised the Respondent to use or register any of the Complainant's trademarks.
(b) The Respondent does not operate any business under any name consisting of or incorporating the expression “Gun Digest”.
(c) The Respondent has not used the expression “Gun Digest” in connection with any bona fide offering of goods or services. Using the Complainant's trademark as a domain name to divert traffic to the Respondent's website is not a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of the Domain Name.
(d) The Complainant's use of its GUNDIGEST mark predates the Respondent's registration of the Domain Name, by at least 57 years.
3. The Respondent has registered and used the Domain Name in bad faith:
(a) Use of a domain name in connection with a portal site can be bad faith use. Offering goods and services through the Respondent's website which are related to the Complainant's products takes advantage of the Complainant's reputation, even if the Respondent does not offer the same services directly. Because the Respondent has registered and is using the Domain Name in connection with a portal site linking to websites of the Complainant's competitors, that is sufficient to establish bad faith registration and use.
(b) The Respondent registered the Domain Name in bad faith for the purpose of disrupting the business of the Complainant, and the Complainant is a competitor of the Respondent (the term “competitor” embraces not only direct commercial competitors, but any person acting in opposition to another). In this case, the Respondent is a competitor because it benefits from using the Complainant's mark to drive traffic to the Respondent's website, where it derives revenue from linking to sites offering goods and services which are related to those offered by the Complainant, but which are products of the Complainant's competitors. Both the Complainant and the Respondent offer gun-related products through the Internet, and because these goods are promoted in overlapping trade channels, the Complainant and the Respondent are competitors.
(c) Diverting potential customers of the Complainant to the Respondent's website by use of the Complainant's GUN DIGEST trademark disrupts the Complainant's business. That business disruption was the primary intention of the Respondent in registering and using the Domain Name.
(d) The Respondent registered the Domain Name with the intention of causing confusion as to the source, sponsorship, or affiliation of the Respondent's website. The Respondent did that to divert Internet traffic from the Complainant's websites to the Respondent's website, for commercial gain.
(e) The Complainant's GUN DIGEST trademark is a famous mark which has been in use for a very long time. The Respondent has been guilty of “opportunistic bad faith”, in diverting Internet traffic from the Complainant's websites for the Respondent's commercial benefit.
(7) The Respondent has registered the Domain Name in order to prevent the Complainant from reflecting its GUN DIGEST mark in a corresponding domain name, and the Respondent has engaged in a pattern of such conduct.
The Respondent did not reply to the Complainant's contentions.
A. What the Complainant must prove
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the 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”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires a panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the panel may draw such inferences from a respondent's failure to comply with the Rules (e.g., by failing to file a response), as the panel considers appropriate.
The Complainant has proved this part of its Complaint. It is the registered proprietor of the word mark GUN DIGEST in the United States, and the Domain Name is identical to that mark (the “.com” suffix is not taken into account in the comparison which paragraph 4(a)(i) of the Policy requires).
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) before any notice to the respondent of the dispute, use by the respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) where the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) where the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
If the circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible evidence, that it does have a right or a legitimate interest in the Domain Name.
That approach is summarized at paragraph 2.1 of the Center's online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“[A] Complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP”.
In this case, the Domain Name is identical to the Complainant's GUN DIGEST mark, and the Complainant has not authorised the Respondent to use its mark, whether in a domain name or otherwise. There is nothing in the evidence to suggest that the Respondent, or any business operated by it, might be commonly known by the Domain Name. Those circumstances in combination are sufficient to establish a prima facie case that the Respondent has no rights or legitimate interests in respect of the Domain Name. The evidentiary onus, therefore, shifts to the Respondent.
The Respondent has not filed any response, and has, therefore, failed to discharge that evidentiary onus. Furthermore, there is nothing in the evidence which has been presented which would suggest that the Respondent might have some right or legitimate interest in respect of the Domain Name. Paragraph 4(c)(ii) of the Policy cannot apply, and for the reasons set out in Section 6.D. of this Decision, the Panel is satisfied that the use which the Respondent has been making of the Domain Name has been neither “fair”, “legitimate”, nor in connection with any bona fide offering of goods or services.
The Complainant has proved this part of its Complaint.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that a respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trademark or service mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's 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 the respondent's website or location or of a product or service on the respondent's website or location.
The Panel is also satisfied that the Respondent registered, has been, and is using, the Domain Name in bad faith. The Panel has come to that view for the following reasons:
1. The Panel is satisfied that the Respondent must have known of the Complainant and its GUN DIGEST mark when the Respondent registered the Domain Name. First, the Domain Name is identical to the Complainant's mark, and the Complainant's publication appears to be very well known in gun-related circles, particularly in the United States. The gun-related links and the other links on the Respondent's website, appear to be primarily targeted at the United States market (e.g., there are links to sites offering products quoted in dollars, the use of “1-800” telephone numbers, and references to publications such as the “American Handgunner” magazine). Secondly, the Respondent has offered no explanation for its choice of the Domain Name. The early use of the Domain Name (in 2001, 2002, and 2003), was for nothing more than a broadly-based landing page, with no apparent connection to guns whatsoever. Why register a domain name called “gun digest”, if that domain name was to be pointed to a website having no connection with guns? In the absence of any explanation from the Respondent (or from any other party who may have been the original registrant of the Domain Name back in 2001), the obvious inference is that the original registrant (whether it was the Respondent or someone else) was aware that the Domain Name was identical to the Complainant's trademark and wished to attract to the Respondent's website Internet users who were looking for the Complainant's website. Thirdly, the Respondent is an experienced domain name buyer and reseller, and it is improbable that it would have registered or acquired the Domain Name without turning its mind to the existence or otherwise of third party trademark rights corresponding to the Domain Name. As the Respondent appears to have been targeting the United States market, it seems likely that its attention would have been directed to ascertaining what commercial meaning (if any) Internet users in the United States would be likely to attribute to the expression “gun digest”. It seems improbable that any such considerations would not have led the Respondent to the Complainant and its “Gun Digest” magazine. Finally, the Respondent's track record as a respondent in complaints filed under the Policy, is entirely consistent with the Respondent having registered and used the Domain Name with full knowledge of the Complainant and its rights, and with a view to trading off the Complainant's goodwill in its GUN DIGEST mark.
2. If (as the Panel has found) the Respondent was aware of the Complainant and its GUN DIGEST mark when it registered the Domain Name (whether as the original registrant in 2001, or as a subsequent registrant on purchasing the Domain Name at some later date), the Respondent must have appreciated that some Internet users would mistakenly come to the Respondent's website, believing it to be a website operated by or associated with the Complainant. If the Respondent appreciated that likelihood, but proceeded in any event, the Panel can only conclude (in the absence of any explanation from the Respondent) that the Respondent intended to create that kind of confusion.
3. The Respondent's website has clearly been used for commercial gain – the Respondent is running a business, and it can be presumed that it would not have provided a platform with links to commercial websites operated by third parties, if it was not receiving some remuneration for so doing (probably in the form of pay-per-click revenue earned every time a visitor to the Respondent's website clicked on one of the sponsored third party links).
4. Having regard to the foregoing matters, the Panel is satisfied that, by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website. That confusion has been exacerbated by the prominent use of the Domain Name on the Respondent's website, and by the use of the Respondent's website to provide links to third party sites, some of which are operated by the Complainant's competitors, which are substantially concerned with guns. The circumstances fall squarely within paragraph 4(b)(iv) of the Policy, and the Complaint of bad faith registration and use must, therefore, be upheld.
In the circumstances, it is not necessary for the Panel to consider the other submissions made by the Complainant.
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 <gundigest.com> be transferred to the Complainant.
Dated: October 28, 2008