WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Forbes LLC v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf/ Lillian A Chaput
Case No. D2021-3352
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/ Lillian A Chaput, United States.
2. The Domain Name and Registrar
The disputed domain name <forbestalk.com> (“the Disputed 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 October 8, 2021. On October 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 12, 2021, the Registrar transmitted by email 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 4, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 8, 2021.
The Center appointed Colin T. O'Brien as the sole panelist in this matter on November 15, 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 and its affiliates are internationally known companies that participate in a broad range of businesses 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 introduced the Internet website “www.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.
Through the “www.forbes.com” website, Complainant also makes available to the public online versions of its print publications FORBES, FORBESLIFE and FORBES ASIA.
Complainant is the owner of thirteen (13) United States federal trademark registrations, among others, for the mark FORBES and closely related marks including United States trademark registration No. 1,141,299, registered on November 11, 1980; and United States trademark registration No.1,919,483, registered on September 19, 1995. Complainant is also the owner of over one hundred (100) foreign trademark registrations, for the mark FORBES and closely related marks in the United Kingdom, United Arab Emirates, Ukraine, Turkey, Thailand, Taiwan, Province of China, Switzerland, Spain, South Africa, Singapore, Russian Federation, Portugal, Philippines, Panama, Norway, Nigeria, Nicaragua, New Zealand, Mozambique, Montenegro, Mongolia, Republic of Moldova, Mexico, Mauritius, Malaysia, Madagascar, Democratic People's Republic of Korea, Kenya, Kazakhstan, Japan, Jamaica, Israel, Ireland, Indonesia, India, Hong Kong (SAR), China, Honduras, Guatemala, Georgia, Germany, European Union, El Salvador, Djibouti, Dominican Republic, Czech Republic, Croatia, Costa Rica, Congo, Columbia, China, Chile, Cayman Islands, Canada, Burundi, Brazil, Bosnia and Herzegovina, Bolivia (Plurinational State of), Bermuda, Benelux (Belgium, Netherlands, Luxembourg), Belarus, Bahrain, Bahamas and Azerbaijan.
The Disputed Domain Name was registered on March 20, 2021 and used to resolve to a competing website offering similar services to the ones offered by Complainant, namely online news articles and reports in the fields of business, personal finance, securities, business, economic news, technology, leisure, lifestyles, etc. At the time of this Decision, the Disputed Domain Name does not resolve to an active website.
5. Parties’ Contentions
As a result of Complainant’s extensive, prolonged investment in and use of the Forbes Marks, it has acquired substantial value and have achieved worldwide recognition and valuable goodwill.
Complainant has been in business for over one hundred years. Forbes is an American business magazine that is published six times a year. It has an international edition in Asia as well as editions produced in 27 countries and regions worldwide. The magazine is well known for its lists and rankings, including the Richest Americans, of American’s Wealthiest Celebrities, of the world’s top companies, Forbes List of the World’s Most Powerful People and the World’s Billionaires. The domain name <forbes.com> reaches more than 27 million unique visitors each month. In 2006, “www.forbes.com” claimed to be the world’s most widely visited business website. Forbes won the 2020 Webby People’s Voice Award for a Business Blog/Website.
The Disputed Domain Name contains Complainant’s FORBES trademark and simply adds the generic term “talk” to the end of Complainant’s trademark. The mere addition of this generic or descriptive term to Complainant’s trademark does not negate the confusing similarity between the Disputed Domain Name and Complainant’s trademark.
With the worldwide recognition of FORBES, there is high risk that the public will perceive Respondent’s domain name as owned by Complainant or affiliated therewith. Complainant’s trademark is also being diluted by use of Respondent in its domain name and on the Disputed Domain Name. By using Complainant’s trademark as the dominant part of the Disputed Domain Name, Respondent exploits the goodwill and the perception of Complainant’s trademark, which will result in damage to Complainant. Persons seeing the Disputed Domain Name at issue, are likely to think that they are somehow connected to Complainant, when in fact they are not.
Respondent is not sponsored by or affiliated with Complainant in any way. Complainant has not given Respondent permission to use Complainant’s trademarks in any manner, including in domain names.
Respondent is not commonly known by the Disputed Domain Name and was not known by those names at time the Disputed Domain Name was registered, which evidences a lack of rights or legitimate interests. Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating the FORBES trademarks.
Respondent is not making a bona fide offering of goods or services, nor a legitimate, noncommercial fair use of the Disputed Domain Name. Respondent is using the Disputed 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, business, economic news, technology, leisure, lifestyles, etc. by means of a global computer network.
Respondent registered the Disputed Domain Name on March 20, 2021, which was subsequent to Complainant’s trademark applications for the FORBES trademarks with and significantly after Complainant’s first use in commerce of its trademark in 1917.
Respondent knew or at least should have known at the time of registration of the Disputed Domain Name of the existence of Complainant's FORBES trademarks. Accordingly, Respondent’s actions in 2021 constitutes bad faith per se. Respondent is attempting to trade off of the extensive goodwill of Complainant’s trademarks by using Complainant’s trademarks and its look and feel on the Disputed Domain Name.
An analysis of the Internet traffic on both companies’ primary domain names 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 Disputed Domain Name, <forbestalk.com>, which globally ranked 1,291,719, (with Alexa data, the lower the rank the better). This large discrepancy in site rankings and web traffic further demonstrates Complainant’s fame worldwide and within the United States. Given that Respondent is offering online news and articles in the field of business, politics, etc., 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 Disputed Domain Name targeted Complainant, its business and viewers.
The registration and use of the Disputed Domain Name creates a form of “initial interest confusion which attracts Internet users to the Disputed Domain Name based on the use of FORBES trademarks. This is further evidence that the Disputed Domain Name is being used in bad faith by Respondent.
Respondent’s use of the Disputed Domain Name also constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use because the Disputed Domain Name is confusingly similar to Complainant’s trademarks and Respondent is using the Disputed Domain Name to offer competing services. Such use is a blatant attempt by Respondent to divert traffic away from a more prominent competitor for Respondent’s own commercial benefit and satisfies the requirements of bad faith registration.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has demonstrated it owns the registered trademark rights in the globally famous FORBES trademark in the United States and throughout the world. The addition of the term “talk” does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions Third Edition (“WIPO Overview 3.0”).
Accordingly, the Disputed Domain Name is confusingly similar to a mark in which Complainant has rights.
B. Rights or Legitimate Interests
Complainant has presented a prima facie case that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; has not at any time been commonly known by the Disputed Domain Name; and is not making a legitimate noncommercial or fair use of the Disputed Domain Names. Complainant has also presented prima facie evidence that Respondent is using the Disputed Domain Name to direct Internet users seeking to find Complainant’s website to a website, which offers identical services as those offered by Complainant. The striking similarity between Complainant’s website and the website, which resolved to the Disputed Domain Name indicates to the Panel that the Respondent sought to obtain advertising revenue as a result of confusion on the part of Internet users.
After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
Here, Respondent has provided no evidence of any rights or legitimate interests in the Disputed Domain Names.
Accordingly, the Panel finds that Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Complainant has satisfied its burden of proof in establishing Respondent’s bad faith in registration and use of the Disputed Domain Name. Paragraph 4(b)(iv) of the Policy states that evidence of bad faith may include a respondent’s use of a domain name to intentionally attempt to attract Internet users, for commercial gain.
Due to the worldwide renown of the FORBES Mark, it is inconceivable that Respondent registered the Disputed Domain Name without knowledge of Complainant. The Disputed Domain Name is used for a website that mimics Complainant’s “www.forbes.com” website, which would cause Internet users to think they are visiting a website operated by Complainant. In the Panel’s view, Respondent is using this website to unfairly obtain advertising revenue at the expense of Complainant. The facts establish a deliberate effort by Respondent to cause confusion with Complainant for commercial gain. Under these circumstances, the Panel finds no plausible good faith reason for Respondent’s conduct and concludes that the Disputed Domain Name was registered and used in bad faith.
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 <forbestalk.com> be transferred to Complainant.
Colin T. O'Brien
Date: November 29, 2021