WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Laufer Media, Inc. v. Oakwood Services, Inc. Case No. D2009-1180 1. The Parties
The Complainant is Laufer Media, Inc. of California, United States of America, represented by Gibson Dunn & Crutcher, LLP, United States of America.
The Respondent is Oakwood Services Inc. of Texas, United States of America. 2. The Domain Names and Registrar
The disputed domain name is registered with Compana LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2009. On September 7, 2009, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the disputed domain name. On September 8, 2009, Compana LLC transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on September 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 5, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 6, 2009.
The Center appointed Sally Abel as the sole panelist in this matter on October 10, 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
The Complainant, Laufer Media, Inc., owns and operates a magazine called Tiger Beat, which provides celebrity and pop culture information of interest to teenagers. The Complainant also owns an incontestable United States of America (“US") registration for TIGER BEAT for “periodic magazines about entertainment personalities,” with rights dating back to 1998.
On September 14, 2002, the Respondent, Oakwood Services, Inc. registered the Domain Name . The Domain Name currently resolves to a website that purports to provide links to information in various subject categories, the most prominent of which are “Magazine Subscriptions,” Celebrity Gossip,” and “Teen Magazine.” When a user clicks, for example, on the “Teen Magazine” link, or one of the related links, they are taken to a page which displays sponsored advertisements related to magazines for teens, but which are unrelated to the Complainant's company or magazine. The Respondent's website contains the following copyright notice: “©2009 . All rights reserved.”
On June 18, 2009, the Complainant sent a letter by both email and certified mail to the Respondent, requesting that the Respondent transfer the Domain Name to the Complainant. The Complainant received no response. On September 4, 2009, the Complainant filed the Complaint with the Center. The Respondent did not respond to the Complaint. 5. Parties' Contentions A. Complainant
The Complainant alleges that the Domain Name is identical or confusingly similar to its incontestable US trademark, TIGER BEAT.
The Complainant alleges that it is not affiliated with Respondent, nor has it ever heard of Respondent or granted Respondent permission to use the TIGER BEAT mark or any domain name incorporating that mark. The Complainant further alleges that by using the Domain Name to offer advertising which directs users to goods and services similar to those offered by the Complainant under the TIGER BEAT mark, Respondent is intentionally attempting to attract Internet users to its site for commercial gain by creating a likelihood of confusion with the Complainant's mark, rather than making any legitimate use of the Domain Name. Still further, the Complainant alleges that Respondent does not have any right or legitimate interest in the Domain Name; but rather, that Respondent is in the business of registering domain names that are confusingly similar to other parties' trademarks – as evidenced by a prior UDRP decision against Respondent. B. Respondent
The Respondent did not file a Response or otherwise reply to the Complainant's contentions. 6. Discussion and Findings
The Rules provide: “If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the Complaint.” Rules, paragraph 5(e). See also Rules, paragraph 14. The Respondent has filed no Response in this case and there are no exceptional circumstances presented. As further discussed below, the Complaint establishes that the Complainant has met its burden of proof on each of the required elements. A. Identical or Confusingly Similar
The Complainant owns an incontestable US registration for TIGER BEAT. The Complainant registered the TIGER BEAT mark in July of 1999, over three years before the Respondent registered the domain name in September of 2002. Here, the Complainant has produced sufficient evidence to prove that it had rights in the mark at the time the Domain Name was registered.
The Domain Name differs from the Complainant's mark only in that the Domain Name removes the space between the two words of the Complainant's mark and adds the generic top level domain designation “.com”. These distinctions, being necessary features of any domain name, do not create a meaningful difference between the mark and the Domain Name. Bellbourne House Limited v. Forsyte Corporation, WIPO Case No. D2009-0204. The Domain Name is thus effectively identical to the Complainant's mark.
The Complainant has met its burden with regard to this element of the Policy. B. Rights or Legitimate Interests
Nothing in the record suggests that the Respondent has any rights or legitimate interests in the Domain Name. On the contrary, the record suggests that the Respondent's only use of the Domain Name has been to offer advertisements that exploit the likelihood of confusion created by the Domain Name's similarity to the Complainant's mark. Such bad-faith use creates no legitimate interest in a domain name. N.C.P. Marketing Group, Inc. v. Entredomains,WIPO Case No. D2000-0387. The Respondent has not filed a Response or otherwise attempted to rebut this showing.
The Complainant has met its burden with regard to this element of the Policy. C. Registered and Used in Bad Faith
The Panel finds the Respondent's registration and use of the Domain Name in question are in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
The Respondent uses the Domain Name in connection with a parked site containing links offering third party products, some of which may compete with the Complainant's TIGER BEAT magazine. The Complainant alleges that the Respondent has engaged in bad faith registration and use by intentionally attempting to draw traffic to its site, for commercial gain, by creating a likelihood of confusion, in violation of the Policy. While the Panel is troubled by the fact that the Complainant apparently waited more than 7 years to challenge the Respondent's registration of the Domain Name, noting the absence of a response to the Complaint, the Panel concludes that the Domain Name was registered and is being used for the purpose of misleading Internet users for commercial gain.
The Complainant has met its burden on this element of the Policy. 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.
Sally M. Abel
Sole Panelist
Dated: October 24, 2009
Full & Egal Universal Law Academy