WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Primedia Specialty Group, Inc. v. SuperS
Case No. D2007-0729
1. The Parties
Complainant is Primedia Specialty Group, Inc., New York, New York, United States of America, represented by Anna Jakobsson, United States of America.
Respondent is SuperS, Las Vegas, Nevada, United States of America.
2. The Domain Name and Registrar
The disputed Domain Name is registered with Network Solutions, LLC.
3. Procedural History
The Complaint, submitted by Primedia Specialty Group Inc. was received by e-mail on May 18, 2007, and in hardcopy on May 23, 2007, by the WIPO Arbitration and Mediation Center (the “Center”). On May 21, 2007, Network Solutions, LLC confirmed that Respondent is listed as the registrant and provided its contact details. The Center verified that 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 Respondent of the Complaint, and the proceedings commenced May 30, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response June 19, 2007. The Response was filed with the Center June 20, 2007.
The Center appointed Mark Partridge as the sole panelist in this matter on July 6, 2007. 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.
On July 30, 2007, Procedural Order No. 1 was issued to both parties in accordance with Rule 12 of the Rules. Respondent was requested to submit documentation providing competent evidence in support of its claim that it used the disputed Domain Name as its primary email address for 10 years and that “super street” was a common descriptive or generic term used in connection with racing at the time Respondent registered the disputed Domain Name. Respondent was also requested to submit a sworn declaration stating whether or not it was aware of Complainant’s use of “Super Street” as the name of a magazine at the time Respondent registered the disputed Domain Name. Complainant was requested to submit documentation providing competent evidence in support of its claim that it had established trademark rights in SUPER STREET prior to July 12, 1997, including evidence showing the nature and extent of such use. The parties had until August 9, 2007 to submit additional evidence responsive to these requests, and the decision date was extended to August 20, 2007.
Complainant submitted a Declaration of its Senior Vice President on August 9, 2007. No response was received from Respondent.
4. Factual Background
According to the undisputed allegations of the Complaint, Complainant uses the trademark SUPER STREET in connection with a magazine and obtained a trademark registration for the mark on March 18, 2003. Respondent registered the disputed Domain Name on July 12, 1997. The only content appearing on Respondent’s site is a graphic of a clock, suggesting that the site is under construction.
5. Parties’ Contentions
A. Complainant
Complainant asserts that the Domain Name is identical to the trademark SUPER STREET in which the Complainant has exclusive rights, that Respondent has no rights or legitimate interest in the disputed Domain Name, and that Respondent registered and used the Domain Name in bad faith.
B. Respondent
Respondent contends that Complaint’s mark is generic, that Respondent has rights in the Domain Name, and that Respondent registered it in good faith.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel that “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules or principles of law that it deems applicable”.
Both parties are located in the United States of America, so it is appropriate to apply U.S. legal principles. Where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004; State of Wisconsin v. Pro-Life Domains, Inc., WIPO Case No. D2003-0432.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the three elements to obtain an order that a Domain Name should be cancelled or transferred:
(i) The 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 the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant owns the registered trademark SUPER STREET for magazines in the field of compact/import and domestic performance cars. The trademark, however, was not registered until March 18, 2003, nearly six years after the Respondent obtained the Domain Name on July 12, 1997.
Rights prior to registration may be established through use and advertising. Action Sports Videos v. Jeff Reynolds, WIPO Case No. D2001-1239; Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322; Eurobet UK Ltd. v. Intergate,WIPO Case No. D2001-1270. Complainant’s SUPER STREET magazine started in 1996 and Complainant claims it was “an immediate hit with car enthusiasts and already well known to the relevant consumer”, according to paragraph 12 of the Complaint. Complainant’s acquisition of rights prior to Respondent’s registration of the domain name is further supported by the Declaration of the Complainant’s Senior Vice President, which shows significant use of the name for its magazine beginning in 1996.
The disputed Domain Name is identical in material part to Complainant’s SUPER STREET mark.
Accordingly, the Panel finds that Complainant has established this element of its claim.
B. Rights or Legitimate Interests
Complainant established a prima facie case through its Complaint by indicating that it is unaware of Respondent’s rights to “Super Street” and that the Respondent was given no permission for use of the mark. Julian Barnes v. Old Barn Studios,WIPO Case No. D2001-0121. Respondent claims to have a legitimate interest and rights in the Domain Name but failed to provide evidence demonstrating any rights or legitimate interest in the domain name.
Thus, Complainant has prevailed on the second element of its claim.
C. Registered and Used in Bad Faith
Under Paragraph 4(b) of the Policy, evidence of bad faith registration and use includes: a) circumstances indicating the domain dame was registered for the purpose of resale to the trademark owner or competitor for profit; b) a pattern of conduct showing an attempt to prevent others from obtaining a domain name corresponding to their trademarks; c) registration of the domain name for the purpose of disrupting the business of a competitor; or d) using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with the Complainant’s mark.
Complainant claims that Respondent’s passive holding of the Domain Name constitutes bad faith. Prior panels have held that the lack of active use of the Domain Name does not prevent a finding of bad faith. In Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, the panelist noted that “the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the Domain Name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith” and concluded that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the Domain Name being used in bad faith”. Cases in which a passive holding was found to be in bad faith generally include an absent Respondent or one who engages in active concealment of its identity. Examples of such circumstances that can indicate bad faith include Complainant having a well-known trademark, respondent failing to reply to the complaint, respondent concealing its identity, and the impossibility of conceiving a good faith use of the domain name.
In this case, Respondent claims to have adopted the name “super street” in good faith as a generic description for a class of racing automobiles. When asked to support that claim, however, Respondent failed to provide any further information. In contrast, Complainant provided the Declaration of its Senior Vice President, which states that “super street” is not a common industry term, but only the title of Complainant’s publication.
Balancing the evidence presented, and giving weight to Respondent’s failure to respond to the Panel’s order for submission of additional evidence, the Panel concludes that it is more likely than not that Respondent registered the domain name in bad faith because the name was in use for a popular magazine; and that Respondent’s continues to use the name in bad faith by holding it for future use or sale in hopes of deriving profit based on the popularity of Complainant’s magazine.
7. Decision
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.
Mark Partridge
Sole Panelist
Dated: August 23, 2007
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