WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Advance Magazine Publishers Inc. d\b\a Conde Nast Publications v. NOLDC, Inc. Case No. D2009-0802 1. The Parties
The Complainant is Advance Magazine Publishers Inc. d\b\a Conde Nast Publications of New York, New York, United States of America, represented by Sabin Bermant & Gould, LLP, United States of America.
The Respondent is NOLDC, Inc. of New Orleans, Louisiana, 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 June 17, 2009. On June 18, 2009, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the disputed domain name. On June 18, 2009, Intercosmos Media Group d/b/a directNIC.com 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 22, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on July 13, 2009.
The Center appointed Sandra J. Franklin as the sole panelist in this matter on July 22, 2009. 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 publishes the well-known Conde Nast Traveler magazine, which was launched in 1987. The magazine has a world-wide circulation of over 825,000. Complainant holds dozens of international trademark registrations, and 4 U.S. trademark registrations, for variations of its CONDE NAST TRAVELER mark. Complainant also holds the domain . 5. Parties' Contentions A. Complainant makes the following assertions:
1. Respondent's domain name is confusingly similar to Complainant's CONDE NAST TRAVELER mark.
2. Respondent does not have any rights or legitimate interests in the domain name.
3. Respondent registered and used the domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Claim No. FA95095 (July 31, 2000) (holding that the respondent's failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009 (February 29, 2000) (In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has satisfied Policy paragraph 4(a)(i) based on the registration of its CONDE NAST TRAVELER mark with the USPTO and other trademark authorities. See Expedia, Inc. v. Elia Tan, NAF Claim No. FA991075 (June 29, 2007) (“As the [complainant's] mark is registered with the USPTO, [the] complainant has met the requirements of Policy [paragraph] 4(a)(i).”); see also Google, Inc. v. DktB, NAF Claim No. FA286993 (August 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Respondent's domain name contains Complainant's CONDE NAST TRAVELER mark in its entirety with the addition of the descriptive term “magazine” and the addition of the generic top-level domain “.com”. The Panel finds that these alterations are insufficient to create a distinction between Complainant's mark and Respondent's disputed domain name pursuant to Policy paragraph 4(a)(i). See Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (December 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com' detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy paragraph 4(a)(i) is satisfied); see also MGW Group, Inc. v. Vivian Kavroudakis dba Staci's Cookie Bouquet, NAF Claim No. FA102861 (February 4, 2002) (“The addition of a name to another's mark does not create a distinct mark capable of overcoming a claim of confusingly similar.”); see also Nevada State Bank v. Modern Limited – Cayman Web Development a/k/a Administrator Domain, NAF Claim No. FA204063 (December 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Thus, the Panel concludes that Respondent's domain name is confusingly similar to Complainant's CONDE NAST TRAVELER mark under Policy paragraph 4(a)(i).
The Panel finds that Complainant has satisfied Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
Complainant alleges that Respondent lacks rights and legitimate interests in the domain name. When a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy paragraph 4(a)(ii). The Panel finds Complainant has made a prima facie case. Due to Respondent's failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy paragraph 4(c). See Intel Corporation v. Macare a/k/a M. Macar, NAF Claim No. FA660685 (April 26, 2006) (finding the “Complainant must first make a prima facie case that [the] Respondent lacks rights and legitimate interests in the disputed domain names under Policy [paragraph] 4(a)(ii), and then the burden shifts to [the] Respondent to show it does have rights or legitimate interests.”); see also Talk City, Inc. v. Robertson, supra (“Given Respondent's failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”).
Respondent is using the domain name to redirect Internet users interested in Complainant's products to a website containing links relating to Complainant's products and services as well as the products and services of others. The Panel infers that Respondent profits from click-through fees from the links featured on the resolving website. The Panel finds Respondent's use of a disputed domain name that is confusingly similar to Complainant's CONDE NAST TRAVELER mark to redirect Internet users for this purpose is not a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i) or legitimate noncommercial or fair uses of the domain name under Policy paragraph 4(c)(iii). See Skyhawke Technologies, LLC v. Tidewinds Group a/k/a DNS Admin, Inc., NAF Claim No. FA949608 (May 18, 2007) (“Respondent is using the domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors' products”. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy paragraph 4(c)(i), or a legitimate noncommercial or fair use under Policy paragraph 4(c)(iii).”); see also Royal Bank of Scotland Group plc, Direct Line Insurance plc, and Privilege Insurance Company Limited v. Demand Domains c/o C.S.C, NAF Claim No. FA714952 (August 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy paragraph 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
There is no evidence in the record, suggesting that Respondent is commonly known by the domain name. Complainant asserts that Respondent is not authorized to use the domain name. The WhoIs information identifies Respondent as “NOLDC”. Therefore, the Panel finds that Respondent is not commonly known by the domain name pursuant to Policy paragraph 4(c)(ii). See St. Lawrence University v. Nextnet Tech c/o Domain Dept, NAF Claim No. FA881234 (February 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also M. Shanken Communications, Inc. v. WORLDTRAVELERSONLINE.COM, NAF Claim No. FA740335 (August 3, 2006) (finding that the respondent was not commonly known by the domain name under Policy paragraph 4(c)(ii) based on the WhoIs information and other evidence in the record).
The Panel finds that Complainant has satisfied Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Respondent engaged in bad faith registration and use under Policy paragraph 4(b)(iv) by intentionally creating a likelihood of confusion, for commercial gain, as to Complainant's affiliation with Respondent's domain name and the resolving website. See America Online, Inc. v. Xianfeng Fu,WIPO Case No. D2000-1374 (December 11, 2000) (finding that the respondent violated Policy paragraph 4(b)(iv) by displaying the complainant's mark on its website and offering identical services as those offered by the complainant); see also dentigene, Inc. v. Genetest Laboratories,WIPO Case No. D2000-1100 (November 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
Further, Respondent's use of the disputed domain name, to pass itself off as being affiliated with Complainant, constitutes bad faith registration and use under Policy paragraph 4(a)(iii). See Monsanto Company v. Decepticons, NAF Claim No. FA101536 (December 18, 2001) (finding that the respondent's use of to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also American International Group, Inc. v. Busby d/b/a AIG Mergers and Acquisitions, NAF Claim No. FA156251 (May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant's mark and logo, giving every appearance of being associated or affiliated with Complainant's business . . .”).
The Panel finds that Complainant has satisfied Policy paragraph 4(a)(iii). 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 Complainant.
Sandra J. Franklin
Sole Panelist
Dated: August 1, 2009
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