WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Advance Magazine Publishers Inc. v. David Kantor
Case No. D2012-1432
1. The Parties
Complainant is Advance Magazine Publishers Inc. of New York, New York, United States of America (“U.S.”) represented by Sabin Bermant & Gould, LLP, U.S.
Respondent is David Kantor of Rahway, New Jersey, U.S.
2. The Domain Name and Registrar
The disputed domain name <details-magazine.com> (the “Domain Name”) is registered with 1&1 Internet AG (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2012. On July 16, 2012, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On July 17, 2012, the Registrar transmitted by e-mail 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 July 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 8, 2012.
The Center appointed Robert A. Badgley, Mark Partridge and Maxim H. Waldbaum as panelists in this matter on September 5, 2012. 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.
4. Factual Background
Complainant is a leading magazine publishing firm. One of Complainant’s magazines is “Details”, a magazine featuring news and politics, entertainment, women, sports, food, travel, cars and technology products. The magazine’s monthly circulation in the U.S. exceeds 450,000. Complainant also operates a website at “www.details.com”, which site receives more than 450,000 unique visitors per month.
Complainant holds numerous trademark registrations for the mark DETAILS.
The Domain Name was registered on May 16, 2011. Complainant alleges, and there is no proof to the contrary, that Respondent used the Domain Name to create an e-mail address (firstname.lastname@example.org) and misleadingly used that address to identify himself to vendors as a “Details” magazine employee. Complainant alleges, and supports with documentary evidence, that Respondent used this ruse to obtain an expensive digital camera from a third-party vendor. The vendor brought this incident to Complainant’s attention.
On September 27, 2011, Complainant’s security agent sent Respondent an e-mail advising that Respondent’s actions violated criminal laws and civil trademark laws. Respondent did not answer this e-mail.
5. Parties’ Contentions
Complainant’s main factual allegations are set forth above. Complainant asserts that, based on these facts, it has satisfied all three elements required under the Policy for a transfer of the Domain Name to Complainant.
Respondent did not reply to Complainant’s contentions.
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
There is no dispute that Complainant holds rights in the mark DETAILS. The Domain Name incorporates that mark and adds the descriptive word “magazine.” Because DETAILS is a magazine, the additional word does not reduce ,in this Panel’s view, the confusing similarity between the mark and the Domain Name. If anything, the word “magazine” reinforces the likelihood of confusion between the mark and the Domain Name. See Advance Magazine Publishers Inc. v. Lisa Whaley, WIPO Case No. D2001-0248 (finding domain name <gqkids.com> to be confusingly similar to GQ mark).
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied.
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.
Complainant bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited, WIPO Case No. D2001-0122. Nevertheless, the panel in PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174, correctly observed:
“A respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an administrative panel accepting as true the assertions of a complainant which are not unreasonable and leaves the respondent open to the legitimate inferences which flow from the information provided by a complainant.”
As noted above, Respondent did not file a Response and hence did not effectively rebut any of Complainant’s assertions.
There is no evidence that Respondent has ever been authorized to use Complainant’s mark in a domain name or otherwise. Likewise, there is no evidence that Respondent is commonly known by the Domain Name, or has made substantial preparations to use the Domain Name in connection with a bona fide offering of goods or services.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied.
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 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.
The Panel finds bad faith under Policy paragraph 4(b)(iv). The undisputed record in this case indicates that Respondent used the Domain Name to create a misleading e-mail address and thereby obtain under false pretenses merchandise from an unwitting vendor.
The Panel therefore concludes that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location (here, an e-mail address) by creating a likelihood of confusion between Complainant’s mark and the Domain Name.
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied.
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 <details-magazine.com> be transferred to Complainant.
Robert A. Badgley
Maxim H. Waldbaum
Dated: September 18, 2012