WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fairchild Publications Inc. v. Saeid Yomtobian
Case No. D2000-1003
1. The Parties
The Complainant is Fairchild Publications Inc., a Connecticut corporation doing business at 7 West 34th Street, New York, New York 10001, USA.
The Respondent is Saeid Yomtobian, P.O. Box 260920, Encino, California 91426-0920, USA.
2. The Domain Name and Registrar
The domain name at issue is (the Domain Name). The registrar with which the Domain Name is registered is CORE Internet Council of Registrars (the Registrar or CORE).
The Registrar provided the following contact details for the Respondent:
Saeid Yomtobian, P.O. Box 260920, Encino, CA 91426-0920, USA.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complainant�s Complaint in hardcopy on August 10, 2000 and in electronic version on August 23, 2000. The Complaint requested transfer of the Domain Name, naming For Sale DomainYomtobian as the respondent and Network Solutions, Inc. as the registrar for the Domain Name.
On August 23, 2000, pursuant to the Complainant�s identification of Network Solutions, Inc. (NSI) as the registrar of the Domain Name, the Center sent to NSI a Request for Registrar Verification. On August 24, 2000, NSI informed the Center via e-mail that it was not the current registrar of the Domain Name because the registration of the Domain Name had been transferred to CORE on August 9, 2000.
On September 1, 2000, the Center informed the Complainant that the Registrar of the Domain Name was CORE and requested that the Complainant amend the Complaint. On that same date, the Center sent to CORE a Request for Registrar Verification. On September 5, 2000, the Center received a Registrar Verification Response confirming that the Domain Name is currently registered with CORE and that Respondent Saeid Yomtobian is the current registrant of the Domain Name. In the contact details for the Respondent provided by CORE, the administrative contact for the Domain Name is shown as "person: SAEID YOMTOBIAN, organization: For sale domain."
On September 8, 2000, the Complainant submitted an Amended Complaint naming Saeid Yomtobian as Respondent and CORE as Registrar and providing contact information for Respondent as "For Sale Domain Yomtobian, P.O. Box 260920, Encino, CA 91426-0920 and Saeid Yomtobian, P.O. Box 260920, Encino, CA 91426-0920, USA."
The Center completed a Formalities Compliance Review on September 8, 2000, and verified that the Complaint, as amended, satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Uniform Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainant made the required payment to the Center. Upon independent review, the Administrative Panel also finds that the Complaint, as amended, satisfies the formal requirements of the Policy, the Uniform Rules, and the Supplemental Rules.
On September 28, 2000, the Center transmitted to the parties, with copies to CORE and ICANN, a Notification of Complaint and Commencement of Administrative Proceeding, setting a deadline of November 11, 2000 by which the Respondent could file a Response to the Complaint.
On October 14, 2000, the Center received an e-mail from the Respondent acknowledging receipt of the Complaint: "...I have received a complaint D2000-1003 and I do not have $1500 to send you what is my other option to protect myself and fight the case." The Center responded on October 24, 2000 and explained that, because the Complainant had requested a three-person Administrative Panel, the filing fees would be borne entirely by the Complainant. The Center also informed the Respondent of the web address where he could locate the guidelines for filing a response, as well as a model response. On October 24, 2000, the Respondent replied to the Center with two e-mails asking for help in locating an individual who could assist him in preparing a Response and asking about the deadline for such Response. The Center replied on October 25, 2000, indicating that it could only assist in matters of procedure and could not recommend a specific attorney. The Center further informed Mr. Yomtobian that the time for filing a response was set forth in the Notification of Complaint and Commencement of Administrative procedure previously provided.
On October 23, 2000, the Center received a letter from Mr. Yomtobian dated October 16, 2000, and stating, in pertinent part: "...At the time I purchased the domain I did check for trademarks and found no trademark on it and I did register it for my futire [sic] business plan that I have for it ...". The letter attached a copy of a web page dated October 16, 2000, and showing that Saeid Yomtobian was the owner of the Domain Name , that the address for Mr. Yomtobian was P.O. Box 260290, Encino, CA 91426-0920, USA, that the Domain Name was first registered on May 24, 1999, and that CORE was the source of the information.
On November 15, 2000, the Center issued a Notification of Respondent Default. On that same date, the Respondent sent an e-mail to the Center indicating that he had answered the complaint "over two weeks ago." On November 16, 2000, the Center sent an email to the Respondent stating that the only communications received from the Respondent were two emails dated October 24, 2000 and the letter dated October 16, 2000, and asking the Respondent to confirm whether the October 16 letter was intended to be his Response. This email also advised the Respondent that the Center intended to proceed to appoint the Administrative Panel. That same day, the Center sent the Complainant a facsimile of the Respondent�s October 16, 2000, letter and attachment.
On November 17, 2000, the Respondent sent an email to the Center stating:
" . . . My answer for the complaint is:
My domain name has been purchased in May 1999 for the purpose of a directory website for the public to do internet search on the world wide web and ever since I purchased it I have been working on the website for it. Further more I am not in competition with at all and have nothing to do with them or intending to go in a magazine business . . ."
In view of the Complainant�s selection of a three-member Panel, on December 7, 2000, the Center notified the parties that it had appointed David H. Bernstein and Kevin H. Fortin as Panelists and sent to the parties a Presiding Panelist Selection List. On January 5, 2001, the Center informed the parties that Dana Haviland had been appointed to serve as the Presiding Panelist. The Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules.
4. Factual Background
Complainant, Fairchild Publications Inc., is a Connecticut corporation with its principal place of business in New York, New York, USA. Amended Complaint, paras. 2, 3. Complainant publishes numerous trade related publications, including Children�s Business, as well as consumer magazines. Id., para. 12.
Children�s Business "is a monthly trade magazine covering the entire spectrum of children�s products, including children�s apparel, footwear, juvenile merchandise and the toy and game market" with a current U.S. monthly circulation of "over 12,500." Id. The magazine has been in existence since 1985. Id. The Complainant registered the trademark CHILDREN�S BUSINESS with the United States Patent and Trademark Office on June 17, 1986. Id., para. 12 and Annex D. The Complainant registered the domain name in May 1997. Id., para. 12.
On May 24, 1999, the Respondent registered the domain name . Id.
On or about January 18, 2000, Complainant became aware that Respondent had registered the Domain Name . Id. At that time, according to Complainant, "when consumers entered the domain name they were directed to a web site titled �S� which featured adult material of an extreme nature." Id., para. 12 and Annex H.
On February 14, 2000, Complainant sent a cease and desist letter to Respondent requesting transfer of the Domain Name to Complainant; Complainant sent a followup letter on February 29, 2000. Id., para. 12 and Annex I. On March 7, 2000, Complainant�s attorneys received a call from Respondent who stated that, in response to Complainant�s letters, he had removed the link to pornographic materials; however, Respondent refused to transfer the Domain Name to Complainant. Id., para. 12. According to Complainant, "subsequent research confirmed that the domain name no longer linked to pornographic materials". Id.
5. Parties� Contentions
Complainant
The Complainant contends that the Domain Name registered by the Respondent is identical or confusingly similar to Complainant�s incontestable, federally-registered trademark CHILDREN�S BUSINESS, and that the Respondent has never disputed Complainant�s rights in its mark. Amended Complaint, para.12.
The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name, "which incorporates a misspelling of Complainant�s well known trademark and products," but instead registered it with the intent to divert traffic to Respondent�s website and to prevent the Complainant from using and controlling the Domain Name. Id.
Complainant further contends that the Respondent�s actions create a likelihood of confusion and dilute the acquired reputation and goodwill associated with Children�s Business magazine and the CHILDREN�S BUSINESS mark. Finally, Complainant argues that Respondent�s actions are especially damaging because his use and registration of the Domain Name in connection with pornographic materials "has likely led consumers who were searching for information about children�s products to highly explicit pornography". Id.
Respondent
In his October 16, 2000 letter to the Center, Respondent stated that, at the time he registered the Domain Name, he searched but did not find any trademark corresponding to the Domain Name, and that he registered the Domain Name for his own future business plans.
In the November 17, 2000 email to the Center, Respondent contends that he purchased the Domain Name in May 1999 "for the purpose of a directory website for the public to do internet search on the world wide web." He further states that "ever since I purchased it I have been working on the website for it." Finally, he states that he is "not in competition with " and does not intend to go into a magazine business.
The Respondent did not file a formal Response to the Complaint in accordance with the requirements of the Policy and Rules.
6. Discussion and Findings
Under the terms of the Policy, the Complainant must prove three distinct elements in order to prevail on a claim for transfer of a domain name. These elements are set forth in Paragraph 4(a) of the Policy:
- that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
- that the respondent has no rights or legitimate interests in respect of the domain name; and
- that the domain name has been registered and is being used in bad faith.
Identity or confusing similarity of domain name and trademark
The evidence shows that the domain name registered by the Respondent is confusingly similar to the Complainant�s mark CHILDREN�S BUSINESS. The elimination of the "�S" and addition of the suffix ".com" do not sufficiently distinguish the Domain Name from the Complainant�s mark. See Barney�s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059 (addition of suffix ".com" merely indicates that the domain name owner purports to be a business), E.I. du Pont de Nemours and Company v. Avant Garde Composition, WIPO Case No. D2000-0130 (adding single letter, which does not substantially change pronunciation or appearance, is confusingly similar). Moreover, the Respondent does not contest the similarity of the names.
No legitimate interest in domain name
A party may demonstrate its rights or legitimate interests in a domain name under paragraph 4(c) of the Policy in any of the following ways:
(i) before any notice to you 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 (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 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.
The Panel finds that the Respondent�s assertion that he registered the Domain Name to establish an internet search directory is not credible and does not comport with the evidence. Respondent has submitted no documentary evidence of any, let alone "demonstrable," preparation to use the Domain Name for the purpose claimed. See, World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306. Moreover, the Respondent does not explain why he chose the name , which bears no logical relation to either Respondent�s stated intended use for an internet search directory or his actual use for a link to an adult sex website. By failing to submit a Response or any credible evidence, Respondent has failed to invoke any circumstances which could demonstrate, pursuant to Paragraph 4(a) of the Policy, any rights or legitimate interest in the Domain Name. Massachusetts Medical Society v. Michael Karle, WIPO Case No. D2000-0282; Cyro Industries v. Contemporary Design, WIPO Case No. D2000-0386.
Bad faith registration and use of the domain name
Paragraph 4(b) of the Policy sets forth four examples of bad faith, which are not exclusive, but which "shall be evidence of registration and use of a domain name in bad faith":
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your website or location.
It appears from the Complaint that the Domain Name was originally registered with the registrar Network Solutions, Inc. by For Sale Domain Yomtobian in May 1999, and that, after Respondent received a cease and desist letter from Complainant in February 2000, the Respondent transferred the Domain Name registration to a different registrar, CORE, under his own name, in August 2000. The contact information provided to the Center by the Registrar CORE shows that the administrative contact for the Domain Name is the Respondent, at the organization " For sale domain." It further appears that the Respondent used the Domain Name for a link to a sexually explicit website until receipt of the February 2000 cease and desist letter from the Complainant. There is no evidence that the Respondent ceased to offer the Domain Name for sale after receipt of the cease and desist letter. The Respondent, at all times, had constructive knowledge of Complainant�s incontestable, registered trademark and, since at least February 2000, has had actual knowledge of the mark and the confusing similarity of the Domain Name to that mark.
The Respondent has not contested these facts. His assertions that his intent was to build an internet search directory on the Domain Name website and that he has been working on the directory since registration are not supported by any concrete evidence and are not credible. The Panel finds that the Respondent registered the Domain Name with the intention of offering it for sale, at least to the public, through his organization For Sale Domain Yomtobian and of using it, in the meantime, as a source of income through a link to a pornographic website.
In view of Respondent�s offer of the Domain Name for sale with constructive and/or actual knowledge of Complainant�s incontestable registered trademark, the use of the term "childrenbusiness" to link to an adult sex website, the transfer of the Domain Name registration to a different registrar and under a different registrant name after receipt of Complainant�s cease and desist letter, and Respondent�s untruthful statements to the Center and the Panel in this proceeding, the Panel finds that the evidence is sufficient to show bad faith registration and use of the Domain Name by Respondent under Paragraph 4(b) of the Policy. See, Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044 (offer to sell generally, not only to complainant, can constitute bad faith even though it does not fall within paragraph 4(b)(i) of the Policy); Parfums Christian Dior v.QTR Corporation, WIPO Case No. D2000-0023 (listing of domain name for sale in WHOIS record is evidence of bad faith); Unibanco v. Vendo Domain Sale, WIPO Case No. D2000-0671(registration of domain name under Vendo Domain Sale is evidence of bad faith); Nicole Kidman v. John Zuccarini, WIPO Case No. D2000-1415 (bad faith found where, inter alia, site linked to advertisements for sexually explicit websites). (Footnote 1)
7. Decision
For the foregoing reasons, the Panel concludes that the Complainant has satisfied its burden of proving the essential elements of a claim under Paragraph 4(a) of the Policy, and the Complainant�s request for transfer of the Domain Name is therefore granted.
Dana Haviland
Presiding Panelist
David H. Bernstein
Panelist
Kevin H. Fortin
Panelist
Dated: February 14, 2001
Footnote:
1. In making its findings in this case, the Panel has considered only the evidence proffered in this proceeding and has not considered Respondent�s activities with respect to other domain names as reflected in other ICANN decisions. However, the Panel notes for the record that the decision herein is consistent with other ICANN decisions in cybersquatting cases brought against the Respondent. See, e.g., AltaVista Company v. Saeid Yomtobian, WIPO Case No. D2000-0937 (finding that Respondent registered the Domain Name to divert users away from the trademark holder�s site onto his own competing site); State Farm Mutual Automobile Insurance Company v. Try Harder & Company, NAF No. FA0005000094730 (finding that the Respondent is in the business of buying and selling domain names and has a number of pornographic sites); Bank of America Corporation v. Saeid Yomtobian, NAF No. FA0005000094889 (finding that the Respondent "has registered hundreds of domain names that are variants of famous names and/or other�s marks" with the purpose of linking them to other sexually explicit sites).
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