WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ogden Publications, Inc. v. MOTHEARTHNEWS.COM c/o Whois IDentity Shield/OGDEN PUBLICATIONS INC., Administrator, Domain
Case No. D2007-1373
1. The Parties
The Complainant is Ogden Publications, Inc., United States of America, represented by Steptoe & Johnson PLLC, United States of America.
The Respondents are MOTHEARTHNEWS.COM c/o Whois IDentity Shield/OGDEN PUBLICATIONS INC., Administrator, Domain United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Nameview, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2007, naming MOTHEARTHNEWS.COM c/o Whois IDentity Shield as Respondent based on a WhoIs search dated September 12, 2007. On September 19, 2007, the Center transmitted by email to Nameview, Inc. a request for registrar verification in connection with the domain name at issue. On September 25, 2007, Nameview, Inc. transmitted by email to the Center its verification response advising that the Respondent was OGDEN PUBLICATIONS INC., Administrator, Domain and providing the contact details of the registrant, including the email address “DBISWELL@O”.
On September 26, 2007, the Center wrote to the Complainant that “the registrant and contact details for the disputed domain name currently appear to match those of the Complainant in this case” and asked whether the Complainant had obtained actual control over the disputed domain name. On September 27, 2007, the Complainant confirmed that it had not obtained actual control over the disputed domain name.
In response to a notification by the Center that the Complaint and annexes thereto must be provided to the Center in electronic form, the Complainant filed the Complaint and annexes in electronic form on September 27, 2007. 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 the Respondent of the Complaint using the email address of the WhoIs search dated September 12, 2007, and the proceedings commenced on September 27, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 17, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2007.
The Center appointed Mr. David J. A. Cairns as the sole panelist in this matter on October 26, 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 November 9, 2007, the Panel issued a Procedural Order N� 1 requesting the Center to forward the Complaint by email to the email address DBISWELL@O, and providing that the recipient of this email would then have 14 days in which to submit a response (if any) to the Center which would then be forwarded to the Panel, and also requesting the Complainant to advise the Center if the email address DBISWELL@O in fact belongs to the Complainant. The Center did not receive any response to Procedural Order N� 1 within the 14 day period from either the Complainant or the Respondent.
4. Factual Background
The Complainant is the owner of the trademark registered on November 20, 1973 with the United States Patent and Trademark Office for the word mark THE MOTHER EARTH NEWS (registration No. 0973432), based on a first use in commerce of August 15, 1969.
The Complainant uses this trademark in connection with a periodical publication devoted to ecological, environmental, cultural and creative subject matter.
The disputed domain name was registered on March 16, 2006. The WhoIs name and contact details for the disputed domain name as at the time of the notification of the Complaint to the Respondent were those of the Complainant, although the Complainant is not in fact in control of the disputed domain name.
As at September 12, 2007 the disputed domain name was being used to host a landing page with a banner stating “For resources and information on Mother earth news and Homestead.” The landing page offered several links including links to “Mother earth news”, “Mother earth magazine”, “motherearthnews Com”, “Mother Earth News Online” and “Mother Earth News Website”.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain name is identical in sound, sight and meaning to the Complainant’s registered trademark.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name as there is no evidence that the Respondent’s use of the disputed domain name in connection with a bona fide offering of goods and services, or that the Respondent has been commonly known by the disputed domain name, or that the Respondent has acquired any trademark or service mark rights in the name. In addition, the Complainant alleges that the Respondent is not making a legitimate non-commercial use of the domain name, but instead is providing a site which merely provides links to other sites and for which the Respondent presumably is paid a “click-through” fee.
The Complainant contends that the disputed domain name was registered and is being used in bad faith to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark. Also, the Respondent offers no goods or services on the website, but relies on consumer confusion to offer links and re-direct consumers to third-party sites presumably for a “click-through fee”, many of which advertise goods of the Complainant at discounted prices.
The Complainant has requested that the disputed domain name be transferred to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The change in the WhoIs information in this case between September 12 and 25, 2007, apparently related to the removal of a privacy shield, has complicated the communications required pursuant to paragraph 2 of the Policy. Where, as in this case, the registration details have been changed to suggest the Complainant is the actual registrant, then the course adopted by the provider in this case of checking with the Complainant whether it has actual control of the domain name and then on receiving a negative response to send communications to the original email address, is a reasonable one. The Panel issued the present Procedural Order N� 1 only because it was not clear that the contact address given by the Registrar belonged to the Complainant and could therefore be disregarded (see TDS Telecommunications Corporation v. Registrant [20758] Nevis Domains and Registrant [117460] Moniker Privacy Services,WIPO Case No. D2006-1620; Shon Harris v. c/o Whois Identity Shield,WIPO Case No. D2007-0997).
The Panel is required to decide the Complaint on the basis of the statements and documents submitted, and in accordance with the Policy, the Rules and any rules and principles of law that it deems appropriate.
The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent’s domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of the domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant owns the United States Patent and Trademark Office registration for THE MOTHER EARTH NEWS as referred to by the Complainant.
The disputed domain name is not identical to the Complainant’s trademark THE MOTHER EARTH NEWS. The disputed domain name differs from the Complainant’s trademark in three respects: firstly, the elimination of the spaces between the word elements comprising the registered trademark; secondly, the omission of the word “the”; and thirdly, the omission of the two letters “er”, reducing the word “mother” to “moth”.
The Complainant’s trademark is composed of four common words which are distinctive in combination. The elimination of the spaces between the words is of no significance in determining confusing similarity (see Red Bull GmbH v. Emory Virgil, WIPO Case No. D2005-0381), and the definite article is the least distinctive element of the trademark so its omission hardly affects the overall similarity of the registered trademark and the disputed domain name. The omission of the letters “er” in the disputed domain name are of limited visual significance, as the words “earth” and “news” remain the same, and the appearance of the letters “e” and “r” in the word “earth” immediately following “moth” means that on a cursory reading the disputed domain name appears to consist of the same combination of nouns as the Complainant’s registered trademark. In conclusion, the overall appearance of the disputed domain name is very likely to create confusion with the Complainant’s registered trademark.
For these reasons, the Panel considers that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (i) there is no evidence that the Respondent has any proprietary or contractual rights in any registered or common law trademark corresponding in whole or in part to the disputed domain name; (ii) the Respondent is not authorized or licensed by the Complainant to use the THE MOTHER EARTH NEWS mark or to register and use the disputed domain name; and (iii) there is no evidence that the Respondent has been commonly known by the disputed domain name.
Paragraph 4(c) of the Policy provides a list of three circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name. There is no evidence before the Panel of the existence of any of these circumstances in the present case. In relation to paragraph 4(c)(i) and (iii) the Panel finds, on the basis of the generic format of the Respondent’s landing page, the character of the search categories appearing there, and the absence of any evidence to the contrary, that the Respondent’s use of the disputed domain name is for commercial gain through the generation of “click-through” revenue. Further, the use of the disputed domain name to attract Internet traffic to this website by deception (that is, by suggesting the website relates to the THE MOTHER EARTH NEWS trademark) is not a use in connection with a bona fide offering of goods or services.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exclusive circumstances any of which, if found by the Panel, shall be evidence of registration and use of a domain name in bad faith.
In particular, Paragraph 4(b)(iv) of the Policy states that if the Panel finds that the Respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to its website 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 its website, it should be taken as evidence of the registration and use of the domain name in bad faith.
The Panel is satisfied that the disputed domain name has been registered and is being used in bad faith within the meaning of paragraph 4(b)(iv). The Respondent’s use of the disputed domain name with the intention to attract Internet users for commercial gain is established by the generic format of the Respondent’s landing page, and the character of the search categories appearing there, that are typical of websites established for the purposes of generating “click-through” revenue. The likelihood of confusion as to source, sponsorship, affiliation or endorsement is established by the fact that the disputed domain name is confusingly similar to the Complainant’s THE MOTHER EARTH NEWS mark.
Further, the fact that the website at the disputed domain name had a banner referring to the Complainant’s publication and the links to websites selling the Complainant’s products suggest that the Respondent purposefully misspelled the Complainant’s mark in the disputed domain name for the purpose of commercial gain. The Panel therefore concludes that the Respondent has engaged in typosquatting for commercial gain and this, in itself, constitutes registration and use in bad faith (“Typosquatting is inherently parasitic and of itself evidence of bad faith”: National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini,WIPO Case No. D2002-1011.
There is a further element of bad faith in this case in the use by the Respondent of the Complainant’s own name and contact details for its WhoIs information. A Respondent that represents itself to be the Complainant for registration purposes is guilty of bad faith in the registration and use of the disputed domain name. In this case, the WhoIs information changed between September 12 and 25, 2007 and although this may have been coincidental, the Panel notes that the change occurred before the first efforts of the Center to notify the Respondent of the Complaint. The change of registrant details appears to have been the result of the removal of the privacy shield, perhaps in some form of automatic way on the notification of the Complaint to the Registrar and without the actual intervention of the Respondent. This practice by Nameview has recently been the subject of comment in another case, namely, DHL Operations B.V. and Deutsche Post AG v. Kathy McCarty,WIPO Case No. D2007-1431. That Panel stated “Whether or not such ‘Nameview’ cases fit readily within the traditional conception of “cyberflying” (which would not typically involve a modification to the registrant data to reflect that of the complainant, but rather of a third party), they undoubtedly complicate and in some cases may frustrate proceedings (consistent with an objective of “cyberflying”). Questions of the proper-role of ICANN-accredited registrars aside, such modifications would also suggest an element of bad faith in relation to the persons in control of such domain names, whoever they may be.”
The most logical explanation for the appearance of the Complainant’s registration details in the WhoIs information is that the Respondent provided these details either at the time of the change, or in advance for the contingency of the removal of the privacy shield. In any event, the Respondent is responsible for the provision of accurate WhoIs data, while the Registrar has an obligation to investigate any WhoIs data that it has reason to believe is incorrect: see ICANN Registrar Advisory Concerning Whois Data Accuracy, dated May 10, 2002. If the Registrar for any reason enters WhoIs information not authorized by the Respondent, then that is a matter between the Respondent and the Registrar, and must not be allowed to frustrate the Complainant’s procedural rights pursuant to the Policy and Rules. Accordingly, the appearance of the Complainant’s own name and contact details for the WhoIs information for the disputed domain name justifies a finding of registration and use in bad faith against the Respondent.
Accordingly, the Panel finds that the disputed domain name was registered and is being used 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.
David J.A. Cairns
Sole Panelist
Dated: November 26, 2007
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