WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CSC Publishing, Inc. v. UBM Canon
Case No. D2014-0536
1. The Parties
The Complainant is CSC Publishing, Inc. of St. Paul, Minnesota, United States of America ("USA"), represented by Gray Plant Mooty, USA.
The Respondent is UBM Canon of Santa Monica, California, USA.
2. The Domain Name and Registrar
The disputed domain name <powderbulkengineering.com> (the "Domain Name") is registered with CSC Corporate Domains, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 2, 2014. On April 2, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 24, 2014, the Registrar 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 April 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 15, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 16, 2014.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on May 26, 2014. 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 is a business corporation organized under the laws of the State of Minnesota, USA and headquartered in St. Paul, Minnesota. The Complainant publishes business-to-business magazines and operates a website at "www.cscpublishinginc.com" (the "Complainant's website"). Among the titles published by the Complainant is Powder and Bulk Engineering, a "technical publication devoted to readers in the bulk solids market, worldwide" (the "Complainant's magazine"). The Complainant's magazine has been published for 28 years and is available in both print and online versions for a free subscription. According to an affidavit attached to the Complaint, the magazine earns USD 4-5 million annually in advertising revenues. The online version appears at "www.powderbulk.com", a website that the Complainant has operated since 1997. The Complainant claims 30,000 readers in the USA, Canada, Mexico, and other countries, including representatives and employees of "the majority of the 300-400 companies that manufacture equipment for powder and bulk solid processing and handling". Since 2009, the Complainant's magazine has sponsored an annual trade show in various cities in the USA. The Complainant has also operated a booth promoting the Complainant's magazine at some of the Respondent's trade shows.
The Complainant claims common law trademark rights in POWDER AND BULK ENGINEERING, based on 28 years of "continuous and exclusive use" as the name of an industry magazine and related services.
According to the Registrar, the Domain Name was created on August 7, 1999 and is currently registered to the Respondent "UBM Canon". The online business entities database operated by the California Secretary of State indicates that "UBM Canon LLC" is a limited liability company organized under the laws of the State of Delaware, USA and licensed to do business in California, showing the same postal address in Santa Monica, California as is shown in the Registrar's WhoIs database for the registrant of the Domain Name. Accordingly, the Panel refers to UBM Canon LLC as the Respondent in this Decision.
From the website at "www.ubm.com" and related Wikipedia and media articles, it appears that the Respondent is a business-to-business media company that publishes industry websites, directories, and trade magazines in several fields and organizes trade shows and events. It is now owned by UBM plc, a publicly traded English media company that acquired Canon Communications LLC ("Canon") in 2010 and renamed its business "UBM Canon". Canon's press release announcing the acquisition characterized the company as "the leading producer of trade events, publications, and electronic media" for the "advanced, technology-based design and manufacturing industry". The Respondent publishes, among other titles, the Powder & Bulk Solids trade magazine, which Canon acquired in 2006.
The Domain Name redirects Internet users to a website at "www.powderbulksolids.com" that is operated by the Respondent (the "Respondent's website"). The Respondent's website offers subscriptions to the Respondent's Powder & Bulk Solids magazine (the "Respondent's magazine") and newsletters for the "dry processing and bulk handling technology" industry. The Respondent's website claims more than 37,000 magazine subscribers who are engineers or professionals in the "food, drug & chemical industries". The Respondent's website also publishes an industry "master directory", an industry news page, industry resources such as videos and white papers, and links to websites operated by relevant industry associations, as well as advertising by companies offering manufacturing technology products. The Respondent's website also promotes the Respondent's trade shows, exhibitions, and events, such as EastPack (New York, June 2014), POWTECH (Nuremburg, September 2014), and the Powder & Bulk Solids Montréal Showcase (Montréal, November 2014).
On February 18, 2014, the Complainant's legal representative emailed a letter to the Respondent concerning the Domain Name. The Complainant's letter noted that the Domain Name had been used "until recently" to redirect viewers to the Respondent's website, which the Complainant considered likely to cause confusion between the Complainant and the Respondent, and said that the Complainant was pleased that the Respondent had stopped using the Domain Name for that purpose "last month". Nevertheless, to avoid confusion and possibly "deceptive trade practices" in the future, the Complainant requested that the Respondent transfer the Domain Name to the Complainant. An attorney for the Respondent replied by email on February 27, 2014, saying simply that the website associated with the Domain Name was "unintentionally inactive for a short period of time due to a technical issue" but was "now active once again, in the same capacity it has been used for quite some time."
Counsel for the Complainant rejoined with an email dated March 4, 2014: "As Canon is aware, Powder Bulk & Engineering has been my client's magazine name for over 27 years. The use of the domain name www.powderbulkengineering.com to link your client's rival website can only be considered an effort to lure customers looking for my client's products to your website." The Complainant's counsel demanded that the Respondent cease using the Domain Name and transfer it to the Complainant. This UDRP proceeding followed.
5. Parties' Contentions
The Complainant claims common law trademark rights (presumably in the USA, although this is not specified in the Complaint) in POWDER AND BULK ENGINEERING, based on 28 years of "continuous, widespread, and exclusive use". The Complainant argues that "the evidence indicates that POWDER AND BULK ENGINEERING has become associated in powder and bulk solid industry professionals [sic] minds as affiliated with Complainant's magazine."
The Complainant argues that the Domain Name is "nearly identical" to its common law POWDER AND BULK ENGINEERING mark and that the Respondent has no rights or legitimate interests in using a confusingly similar domain name, as it has never used the word "engineering" in the title of its competing magazine and related products.
The Complainant contends that the Respondent was aware of the Complainant's "intellectual property rights in the mark POWDER AND BULK ENGINEERING" when the Respondent obtained the Domain Name, although the Complaint does not establish when that occurred. The Complainant infers that the Respondent purchased the Domain Name to divert Internet users to its own website and its competing magazine for commercial gain. The Complainant asserts that this cannot be considered a legitimate interest in the Domain Name and reflects bad faith in the registration and use of the Domain Name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, "[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".
A. Identical or Confusingly Similar
The Complaint is based on a claimed common law trademark. The Policy does not require a registered trademark, but the consensus view among UDRP panelists is that a complainant asserting an unregistered or common law mark "must show that the name has become a distinctive identifier associated with the complainant or its goods or services." Relevant evidence that a descriptive mark has acquired such "secondary meaning" includes "length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition." See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.7.
The Complainant has furnished evidence in this proceeding that the name of the Complainant's magazine, Powder and Bulk Engineering, has become associated with the Complainant over a period of 28 years among members of a relatively small but relevant professional market. The Policy does not require mass-market recognition of a claimed common law mark. See, e.g., Fairview Commercial Lending, Inc. v. Aleksandra Pesalj, WIPO Case No. D2007-0123 (observing that common law rights can be based on establishing a secondary meaning for otherwise descriptive terms, even if only among a limited, targeted audience of industry professionals). The record does not demonstrate that the Complainant has asserted such rights until now, for example by displaying a (TM) symbol or claiming trademark rights on the Complainant's magazine or website. Nevertheless, the Panel concludes that there is sufficient evidence of long-term use and promotion of the mark POWDER AND BULK ENGINEERING among a targeted professional audience to warrant a finding that the Complainant has enforceable legal rights in the unregistered mark under common law, at least in the USA, where it appears that the bulk of the Complainant's subscribers and events are located.
Apart from the non-distinctive ".com" suffix, the Domain Name differs from the Complainant's mark only in omitting the conjunction "and". UDRP panels customarily treat the first element of a Policy complaint as a standing requirement, which simply requires "a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name". See WIPO Overview 2.0, paragraph 1.2. The Panel finds that this test is satisfied in the present case and concludes that the first element of the Complaint has been established by demonstrating "confusing similarity" for Policy purposes.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent's 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is 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.
Because the respondent in a UDRP proceeding is in the best position to assert its rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the disputed domain name shifts to the respondent. See WIPO Overview 2.0, paragraph 2.1.
The Domain Name is confusingly similar to the Complainant's mark, and the Respondent has not come forward in this proceeding with an assertion of rights or legitimate interests in the Domain Name. In earlier correspondence with the Complainant, the Respondent simply referred to its use of the Domain Name "for quite some time" to redirect Internet users to the Respondent's website.
The Panel notes, as detailed above, that the Respondent was created in 2010 when the UBM group acquired Canon Communications LLC, including its magazine Powder & Bulk Solids. Canon Communications LLC had published that magazine since acquiring it from another company in 2006. According to the online trademark registration database of the United States Patent and Trademark Office ("USPTO"), the Respondent currently owns the trademark registration for POWDER & BULK SOLIDS as a standard-character mark designating a periodical journal published since 1983 (Registration No. 1564426, registered November 7, 1989). The Respondent is also the successor in interest to Canon Communications LLC, which obtained the standard-character trademarks POWDER & BULK SOLIDS (Registration No. 3590125, registered March 17, 2009) and INTERNATIONAL POWDER & BULK SOLIDS (Registration No. 3064645, registered February 28, 2006), both used in connection with conducting trade shows. All three trademark registrations are listed as live, and it is evident from the Respondent's website that the marks continue to be used commercially in connection with the Respondent's Powder & Bulk Solids magazine and trade events, respectively. Thus, the Respondent evidently has rights or legitimate interests in the mark POWDER & BULK SOLIDS.
However, the USPTO database does not indicate that the Respondent has a registered mark corresponding to "powderbulkengineering", the string comprising the distinctive portion of the Domain Name. Further, the record does not demonstrate that the Respondent uses or is known by a name corresponding to that string, nor that the Respondent has made demonstrable preparations for such use. Indeed, the Respondent uses the Domain Name only to redirect visitors to the Respondent's website at "www.powderbulksolids.com", a domain name that does closely correspond to its registered POWDER & BULK SOLIDS marks (since the ampersand cannot be used in a DNS domain name).
The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has not demonstrated rights or legitimate interests in the Domain Name, and none are evident from a perusal of the record or of the Respondent's website. The Panel therefore concludes that the Complainant prevails on the second element of the Complaint.
C. Registered and Used in Bad Faith
The Policy's non-exhaustive list of circumstances that shall be considered evidence of bad faith registration and use (paragraph 4(b)) includes the following:
"(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online 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 or service on your website or location."
The Complainant relies on this example of bad faith. The Complainant asserts that the Respondent was aware of the Complainant's "intellectual property rights in the mark POWDER AND BULK ENGINEERING" when the Respondent obtained the Domain Name and that the Respondent did so to divert visitors to its competing website for commercial gain. There are gaps in the Complainant's reasoning. It does not appear from the record that the Complainant itself asserted intellectual property rights in that name until this dispute arose. Moreover, the Complaint does not indicate when the Respondent obtained the Domain Name, a fact which probably could have been established exactly, using commercially available online domain tools.
Nevertheless, the Panel finds sufficient evidence to conclude, as described above in assessing the first element of the Complaint, that the Respondent has common law rights in the mark POWDER AND BULK ENGINEERING. The Panel also concludes on the current record that the Respondent more likely than not obtained and used the Domain Name precisely to attract Internet users familiar with the Complainant's mark to the Respondent's website and magazine. Several facts, and reasonable inferences therefrom, contribute to this conclusion:
Awareness of the Complainant's mark. The Domain Name was created in 1999, but the Respondent probably acquired it much more recently. The Internet Archive's Wayback Machine shows that the Domain Name was used in 2005 to redirect visitors to a "Qmed" website directory of suppliers to the medical device industry. The next archived instance is not until June 2013, when the Domain Name redirected, as it does at the time of this Decision, to the Respondent's website. It is fair to infer that the Respondent, either directly or by taking over the assets of Canon, acquired the Domain Name while directly competing with the Complainant's similarly named magazine and related services, which have been offered for decades. Their respective "powder and bulk" magazines and trade shows, which have competed with each other for years, cater to a highly specialized market. It is simply not plausible that the Respondent was unaware of the Complainant and its brand at any time when the Respondent was likely to have acquired the Domain Name by purchase or succession.
Trademark versus generic value of the Domain Name. The record (including the parties' magazines, websites, trade show promotions, and third-party advertising on the parties' websites) suggests that "powder" and "bulk solids" are generic terms that refer to certain forms of material inputs in the manufacturing process. The Domain Name includes "engineering" rather than "solids", however, and the record does not suggest that "powder and bulk engineering" is a commonly used, generic term. The Complainant uses the word "engineering" in its mark, but the Respondent does not appear to use any term close to "powder bulk engineering", other than in the Domain Name itself. Thus, it is more likely that the Respondent chose to use the Domain Name for its trademark value, to divert Internet users interested in the Complainant's magazine or trade shows, than for any generic value of the string.
The Respondent's silence. The Respondent is a subsidiary of a major, publicly traded, international media conglomerate whose legal counsel made a cursory reply to the Complainant's first letter in February 2014. The Complaint and the Center's notifications in this proceeding were sent to multiple employees and representatives of the Respondent, including the same internal counsel who recently replied to the Complainant's correspondence. Despite this, the Respondent chose not to submit any Response in this proceeding, which would have required the Respondent's certification of accuracy and proper purpose, as provided in the Rules, paragraph 5(viii). The Respondent has not come forward to assert any rights or legitimate interests in the Domain Name, has not denied awareness of the Complainant's mark, and has not offered an explanation for choosing to use a Domain Name nearly identical to its competitor's mark and without demonstrable generic value. This is not a case where the Respondent's silence could be attributable to a lack of means or access to legal counsel. The Panel is inclined to consider instead that the Complainant's reasonable inferences are well founded and that the Respondent does not have a colorable defense on the element of bad faith.
The Panel concludes that the third element of the Complaint is established.
For 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 <powderbulkengineering.com> be transferred to the Complainant.
W. Scott Blackmer
Date: May 29, 2014