WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PRIMEDIA Special Interest Publications Inc. v. Anti-Globalization Domains
Case No. D2003-0869
1. The Parties
The Complainant is PRIMEDIA Special Interest Publications Inc., c/o PRIMEDIA Inc., New York, NY, United States of America, represented by Cowan, Liebowitz & Latman, PC, of New York, NY, United States of America.
The Respondent is Anti-Globalization Domains of Bronx, NY, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 31, 2003. On November 4, 2003, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On November 4, 2003, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an Amendment to the Complaint on November 5, 2003. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 November 14, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on December 8, 2003.
The Center appointed Andrew Mansfield as the sole panelist in this matter on December 17, 2003. 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 is a leading publisher of special interest magazines and a host of related web sites. Complainant and its predecessors-in-interest have published Shotgun News since 1946. Shotgun News has grown to become the world's largest gun sales publication. Shotgun News has recently been expanded to include a distinctive editorial package of features and columns written by well-known firearms experts.
Shotgun News has a current circulation of approximately 120,000 readers (consisting of 85,000 subscriptions and 35,000 newsstand sales). Since 2000, Complainant has spent close to $1 million promoting the publication. In addition, since 1998, Complainant has also published an online version of Shotgun News, which is accessible on the Internet at "." The Shotgun News site currently receives in excess of 2 million hits per month, and has received close to 100 million hits since its introduction.
Complainant is the sole and exclusive owner of the following trademark registrations in the United States Patent and Trademark Office, namely, SHOTGUN NEWS, Reg. No. 2,036,694 for trade advertising magazine featuring advertisements of firearms and of related products and services; and SHOTGUN NEWS (and Design), Reg. No. 2,382,074 for magazines featuring advertisements for firearms and firearm related products and services.
5. Parties� Contentions
A. Complainant
Respondent�s domain name is identical or confusingly similar to Complainant�s registered Shotgun News trademark in that it is a deliberate misspelling of the publication's name. The sole difference between Respondent's domain name and Complainant's mark (and domain name) is that Respondent has eliminated one of the two n's that appear consecutively in Complainant's mark when the words Shotgun and News are combined to form an Internet address. Deliberate misspellings of trademarked names have routinely been deemed confusingly similar under the ICANN Uniform Domain Name Dispute Resolution Policy. See Medtronic, Inc. v. , WIPO Case No. D2001-1033 (October 29, 2001); F. Porsche AG v. Stonybrook Investments Limited, WIPO Case No. D2001-1095 (October 26, 2001); PRIMEDIA Magazine Finance Inc. v. Zuccarini, WIPO Case No. D2000-1186 (November 20, 2000).
Indeed, Respondent (operating under different names out of the exact same address has already been found to have violated other trademark owner's rights by engaging in similar actions involving the deliberate misspellings of trademarked terms. See The Buffalo News, a Division of OBH, Inc. and Columbia Insurance v. John Barry d/b/a Bronx Consumer, Inc. f/k/a Domains or Best Domains, Case No. FA 146919 (National Arbitration Forum, March 31, 2003); Sears, Roebuck and Co. v. John Barry, No. FA 105210 (National Arbitration Forum, April 1, 2002).
Complainant finds no evidence that Respondent owns a trademark or service mark registration that is identical, similar or in any way related to Complainant's Shotgun News. Further, Shotgun News is not Respondent's personal name, and Respondent does not actually engage in any business or commerce under the name Shotgun News. Respondent is not known to the public under the name Shotgun News. Finally, Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to use the Shotgun News mark or to register the domain name. Indeed, Complainant has no relationship whatsoever to Respondent.
Respondent is not and has not been using the contested domain name in connection with any bona fide offering of goods or services. Respondent uses the domain name to redirect Internet users to the anti-abortion web site , which includes disturbing images of aborted fetuses. Other panels have already found this exact conduct by the same Respondent (operating under a different name out of the same address) to violate the rights of other trademark owners. See Morgan Stanley v. Buy This Domain a/k/a Domains for Sale Inc., No. FA 165134 (National Arbitration Forum, September 9, 2003) (Respondent tarnished Complainant's image by using the domain name to redirect unsuspecting Internet users to a politically charged website that features graphic images of aborted fetuses and anti-abortion language); The Rittenhouse Development Company v. Domains for Sale, Inc., No. FA 105211 (National Arbitration Forum, April 8, 2002) (finding that, by linking confusingly similar domain name to an Abortion is Murder web site, Respondent has not demonstrated any right or legitimate interest in the disputed domain name).
Respondent has not made, and is not now making any legitimate non-commercial or fair use of the domain name. See Regions Financial Corporation v. D aka Brian Wick, No. FA 118271 (National Arbitration Forum, October 14, 2002) (respondent's web site, which included references to Senator Strom Thurmond and President George Bush and did not refer to complainant, was not fair use of domain name which contained complainant's mark).
Respondent registered the domain name with knowledge of Complainant's Shotgun News, precisely because it is identical or confusingly similar to Complainant's trademark, in order to divert Internet users to his own politically charged web site.
Complainant asserts and provides evidence that Respondent is a serial cybersquatter who has engaged in a pattern of bad faith registrations by registering a number of domain names which incorporate the trademarks of third parties. The domain names have been registered under a variety of registrant names which correspond to Respondent's mailing address (the address identified as the registrant's address and administrative contact for ). For example, Respondent has registered over 700 domain names, including a number that are identical or confusingly similar to trademarks of third parties, such as , , , , , , , and or that are identical or confusingly similar to names of well-known individuals, such as , and .
B. Respondent
The Respondent did not reply to the Complainant�s contentions.
6. Discussion and Findings
To prevail, Complainant must prove each of the following three elements, pursuant to Paragraph 4(a) of the Policy:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the 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.
The Panel will analyze each of the elements below.
A. Identical or Confusingly Similar
The Panel finds that the domain name is confusingly similar to Complainant�s trademarks in SHOTGUN NEWS. The domain name is a common misspelling or typographical error that may result when an Internet user types in Complainant�s actual domain name, , which is identical to Complainant�s trademarks.
B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the domain name . There is no evidence of any such rights or legitimate interests before the Panel nor did Respondent reply to the Complainant�s contentions.
C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the domain name in bad faith. First, as many other Panels have found, the misdirection of Internet users seeking Complainant�s web site to a highly charged political web site involves Complainant in a political debate in which it has no part. It tarnishes Complainant�s mark. Second, the long-documented registration of misspellings of third party trademarks by this Respondent for exactly this purpose provides substantial evidence that Respondent engages in this practice in bad faith.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Andrew Mansfield
Sole Panelist
Dated: December 31, 2003
Full & Egal Universal Law Academy