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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Forbes LLC v. Withheld for privacy purposes, Privacy service provided by Withheld for Privacy ehf / Helen Howard

Case No. D2021-3097

1. The Parties

Complainant is Forbes LLC, United States of America (“United States”) represented by Riker Danzig Scherer Hyland & Perretti LLP, United States.

Respondent is Withheld for privacy purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Helen Howard, United States.

2. The Domain Name and Registrar

The disputed domain name <forbesalert.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2021 identifying two domain names at issue: <forbestalk.com> and <forbesalert.com>. On September 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 21, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 22, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an Amended Complaint and consolidation arguments. Complainant filed an Amended Complaint on September 27, 2021 removing the <forbestalk.com> domain name from this proceeding.

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 September 30, 2021. Further under the Rules, paragraph 5, the due date for Response was October 20, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 21, 2021.

The Center appointed Harrie R. Samaras as the sole panelist in this matter on October 28, 2021. 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 Forbes LLC, a limited liability company, and its affiliates are internationally-known companies that participate in a broad range of businesses including in the publishing, investment, financial, and business fields. Since 1917, Complainant has published FORBES magazine, a bi-monthly business magazine that has an extensive United States and worldwide circulation.

In 1997, Complainant expanded into electronic commerce and information delivery services by introducing an Internet website located at the domain name <forbes.com>, which provides online publications, webcasts, market updates, newsletters, virtual events, an e-commerce platform, video, and information about a wide variety of subject matters, including breaking news, e-commerce, business, finance, investing, economics, politics, entertainment, and travel and leisure, among others. Through that website Complainant also makes available to the public online versions of its well-known print publications (e.g., FORBES, FORBESLIFE and FORBES ASIA).

Complainant owns thirteen United States federal trademark registrations for the FORBES Mark (or “the Mark”) and closely related marks including United States Registration Nos. 1,141,299 (registered on November 11, 1980); and 1,919,483 (registered on September 19, 1995). Complainant also owns over one hundred foreign federal trademark registrations for the Mark.

The <forbesalert.com> Domain Name was registered on March 28, 2021. As supported by Complainant’s evidence in this matter, the website to which the Domain Name resolved (“Respondent’s Website”) offered news and articles relating to business, politics, the economy, education, entertainment, and general world news. Complainant’s official website also offers news and articles relating to the same topics. It also uses an “alert” mechanism whereby at least certain of the public can sign up for alerts on areas of interest (e.g., New Buy Alert: Let’s Go On A Value Investing Road Trip With RV Maker). The FORBES Mark was featured prominently on Respondent’s Website. Also, the font that Complainant uses for the FORBES Mark and text generally on its website is similar to the font used for the FORBES Mark and other text on Respondent’s Website, and the overall presentation and use of photos and other information is similar on Respondent’s website as on Complainant’s website. On Respondent’s Website there was a link to “Advertise with us”. At the time of the Decision, the Domain Name resolves to a website titled “Coupons Doom” at “www.couponsdoom.com/site-coupons/forbesalert.com”. It is populated with scores of links for coupons and discount codes and sponsored links to various products.

5. Parties’ Contentions

A. Complainant

For more than one-hundred years, Complainant has expended time, effort, and money to advertise and promote its various services and publications under the FORBES Mark, and has built up its name and reputation to worldwide renown in connection with its publishing and information services operations. The Domain Name contains the dominant and famous FORBES Mark. It is standard practice when comparing a disputed domain name to a complainant’s trademarks, to not take the extension into account. Simply adding the generic term “alert” to the end of the Mark does not negate the confusing similarity between the Domain Name and the FORBES Mark. On information and belief, there has been consumer confusion among users of Complainant’s website whom view the Domain Name. With the worldwide recognition of the FORBES Mark, there is high risk that the public will perceive the Domain Name as owned by Complainant or affiliated with it.

Respondent is not commonly known by the Domain Name and was not known by the Domain Name when the Domain Name was registered. Respondent is not sponsored by or affiliated with Complainant in any way. Complainant has not licensed, authorized, or permitted Respondent to use the FORBES Mark in any manner, including in domain names. Respondent is not making a bona fide offering of goods or services, nor a legitimate, noncommercial fair use of the Domain Name because Respondent is using the Domain Name to attract users to its competing website where Respondent offers services, namely online news articles and reports in the fields of business, personal finance, securities, economic news, technology, leisure, lifestyles, etc. by means of a global computer network.

Respondent registered the Domain Name on March 28, 2021, which is more than forty (40) years after Complainant registered its FORBES Mark in the United States. That Respondent registered the Domain Name long after Complainant’s registration of the FORBES Mark and after Complainant became well-known demonstrates that Respondent registered the Domain Name in bad faith. In addition to the worldwide recognition and fame of Forbes magazine and the Forbes business model, the FORBES Mark is known internationally, with trademark registrations in over sixty countries. Complainant has marketed and sold its goods and services using the FORBES Mark since 1917, which is more than one-hundred years before Respondent’s registration of the Domain Name. Respondent knew or at least should have known at the time she registered the Domain Name of the existence of the FORBES Mark, thus the Domain Name was registered in bad faith.

Respondent is attempting to trade off of the extensive goodwill of the FORBES Mark by using the Mark and its look and feel on the Domain Name. An analysis of the Internet traffic on Complainant’s primary domain name compared to the Domain Name also demonstrates that Complainant is a market leader in its industry. Alexa ranks Complainant’s “www.forbes.com” website 277th globally and 134th in the United States, which contrasts sharply with the Domain Name which globally ranked 659,195 (with Alexa data, the lower the rank the stronger Internet traffic). This large discrepancy in site rankings and web traffic further demonstrates Complainant’s fame worldwide and within the United States. Moreover, given that Respondent is offering online news and articles services that compete directly with Complainant’s business, it is highly unlikely that they were unaware of one of their major competitors serving as further evidence that the registration of the Domain Name targeted Complainant, its business, and viewers. Additionally, the registration and use of the Domain Name creates a form of “initial interest confusion” which attracts Internet users to the Domain Name based on the use of the FORBES Mark. This is further evidence that the Domain Name is being used in bad faith by Respondent.

Respondent’s use of the Domain Name also constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use under the Policy because the Domain Name is confusingly similar to the FORBES Mark and Respondent is using the Domain Name to offer competing services.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

It is uncontroverted that Complainant has established rights in the FORBES Mark based on long-standing use as well as the aforementioned trademark registrations for them.

Furthermore, the Domain Name is confusingly similar to the FORBES Mark because it incorporates that Mark in its entirety and adds the term “alert”, which does not prevent a finding of confusingly similarity. In this case, using the term “alert” is reflective of what Complainant does by way of its website, offering alerts on various aspects of business, politics, the economy, education, entertainment and general world news, and supports the Panel’s findings under the third element. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

It is well settled that the addition of the generic Top-Level Domain (“gTLD”), here “.com”, is not significant in determining whether a domain name is identical or confusingly similar to a trademark. CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834.

For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

It is uncontroverted that Respondent is not sponsored by or affiliated with Complainant in any way. Complainant has not licensed, authorized, or permitted Respondent to use the FORBES Mark in any manner, including in domain names. Complainant also maintains that Respondent is not making a bona fide offering of goods or services, nor a legitimate, noncommercial fair use of the Domain Name because Respondent has been using the Domain Name to attract users to its competing website where Respondent offers services, for example, online news articles and reports in the fields of business, personal finance, securities, economic news, technology, leisure, lifestyles, by means of a global computer network, that compete with Complainant. Also, Complainant is not aware of any evidence demonstrating that Respondent, whose name is Helen Howard, might be commonly known by a name corresponding to the Domain Name.

Moreover, Respondent is not making a bona fide offering of goods or services, nor a legitimate, noncommercial fair use of the Domain Name because Respondent is using the Domain Name to attract users to its competing website where Respondent offers services, namely online news articles and reports in the fields of business, personal finance, securities, economic news, technology, leisure, lifestyles, etc. by means of a global computer network.

Furthermore, the nature of the Domain Name, comprising the FORBES Mark in its entirety in combination with the term “alert”, carries a risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.

Where, as here, Complainant has raised a prima facie presumption of Respondent’s lack of any rights or legitimate interests in the Domain Name, and Respondent has failed to rebut that presumption, the Panel is satisfied that Complainant has carried its burden of proving that Respondent has no rights or legitimate interests in the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Respondent registered and has been using a Domain Name that is confusingly similar to the FORBES Mark. When Respondent registered the Domain Name on March 28, 2021, it was more than 40 years after Complainant obtained a registration for the FORBES Mark in the United States and more than 100 years after Complainant began selling its goods and services under the FORBES Mark. Given Complainant’s widespread and long-standing use of the Mark worldwide, the Panel finds it is highly unlikely Respondent was unaware of the Mark when it registered the Domain Name. Respondent’s bad faith registration is also evidenced by the facts that: (1) Respondent has not shown that she has any rights or legitimate interests in the Domain Name; (2) Respondent registered a Domain Name that is confusingly similar to the FORBES Mark and added the descriptive term “alert”, which term Complainant has used in conjunction with services it offers on its website; and (3) Respondent has been using the Domain Name on a competitive website that offered news and articles relating to business, politics, the economy, education, entertainment and general world news, as does Complainant’s website at <forbes.com>, featured prominent use of the FORBES Mark in a font that is similar to the font that Complainant uses for the FORBES Mark on its website, and the text on Respondent’s Website was in a font that is similar to the font used on Complainant’s website; and (4) the overall presentation and use of photos and other information on Respondent’s Website was similar to that on Complainant’s website. On the uncontroverted evidence, the Panel finds that Respondent registered the Domain Name in bad faith.

The Panel concludes that by using the Domain Name with a competitive website (e.g., providing similar services) that also incorporates a font for the text and design elements that are similar to those on Complainant’s website, that Respondent registered the Domain Name primarily for the purpose of disrupting Complainant’s business in violation of paragraph 4(a)(iii) of the Policy. Furthermore, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the FORBES Mark as to the source, sponsorship, affiliation or endorsement of such site or the products or services advertised on such site, within the meaning of paragraph 4(b)(iv) of the Policy. In this regard, it is clear from Respondent’s Website that Respondent encouraged advertising revenue through a link on the website that read “Advertise” and under the link for “Contact Us” it states:

“You can contact us for any advertisement, […] that you want to show to the people of the US and the world.”

Using the live link for “Advertise” on Respondent’s Website that remains on the site captured in the Wayback Machine further confirms the commercial aspects of the site as the resolving site offers advertising services.

Similarly, as mentioned above, although the Domain Name is no longer resolving to Respondent’s Website, it continues to attract the public to a commercial site that provides links to coupons and other products and services that Respondent likely benefits from.

The Panel therefore holds that Complainant has established paragraph 4(a)(iii) of the Policy.

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 <forbesalert.com> be transferred to Complainant.

Harrie R. Samaras
Sole Panelist
Date: November 11, 2021

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