WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION World Publications, LLC v. GMW Digital, LLC Case No. D2009-1737 1. The Parties
Complainant is World Publications, LLC of Winter Park, Florida, United States of America, represented by Carlton Fields, United States of America.
Respondent is GMW Digital, LLC of Phoenix, Arizona, United States of America. 2. The Domain Names and Registrars
The disputed domain names and are registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2009. On December 18, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain names. On December 18, 2009, Network Solutions, LLC
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 December 29, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2010. The Response was filed with the Center on January 5, 2010.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on January 26, 2010. 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
In April 2004, Complainant World Publications purchased substantially all the assets of Islands Publications (Islands), including all technology, intellectual property, websites, URL addresses, domain names and related rights. Complaint, Annexes E and F. Islands had used the mark PRIVATE MEETINGS SUMMIT throughout the U.S. to identify an annual convention bringing together property owners and event planners from at least as early as 2002 through 2004. Islands advertised, marketed and promoted these services under the mark PRIVATE MEETINGS SUMMIT at a website hosted at . Complaint, Annex D.
Since 2004, Complainant has used the mark PRIVATE MEETINGS SUMMIT to identify the annual convention initially produced by Islands and has advertised and promoted the event on the “www.” and “” websites. See Complaint, Annexes D and G. Complainant's annual promotions for the PRIVATE MEETINGS SUMMIT event typically exceed USD20,000. Complaint, Annex G.
Attendance at the PRIVATE MEETINGS SUMMIT typically exceeds 100 attendees. The 2002 event had between 150 and 200 attendees (see Complaint, Annex D). The 2009 event had 80 planners and 67 exhibitors. Complaint, Annex G. The next event will take place March 28-31, 2010 in New Orleans.
On or about July 15, 2009, Complainant filed applications with the United States Patent and Trademark Office (PTO) to register the marks PRIVATE MEETINGS SUMMIT and PRIVATE MEETINGS SUMMIT and DESIGN, for use since 2002 in connection with “[o]rganizing, promoting and conducting events for business purposes; online promotion of events for business purposes.” Complaint, Annexes G and H. The applied-for marks have been approved for publication.1
In August 2009, Respondent asserted ownership of the domain name. As a result, Complainant began advertising its services under the PRIVATE MEETINGS SUMMIT mark at . 5. Parties' Contentions A. Complainant
Complainant submits that the disputed domain names are, for all intents and purposes, identical to the mark PRIVATE MEETINGS SUMMIT. As a result, Complainant, contends, Complainant's customers suffer initial interest confusion.
Complainant further maintains that, until recently, Complainant's customers faced further confusion upon arriving at the disputed websites in view of the fact that Respondent: (1) used Complainant's mark repeatedly throughout the sites; (2) used the mark of Complainant's parent company, Bonnier Corporation; (3) linked directly to pages within Complainant's websites; (4) included copyrighted material taken from an earlier version of Complainant's website; and (5) provided a registration screen which purported to allow customers to register for Complainant's conference. Complaint, Annex I.
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain names. According to Complainant, Respondent does not use the domain names for any bona fide commercial purpose related to the PRIVATE MEETINGS SUMMIT mark, is not affiliated with Complainant in any manner that would permit a legitimate use of Complainant's marks, and has no express or implied rights in, or permission to use, Complainant's marks or copyrighted works.
Complainant indicates that, on or about November 24, 2009, Respondent redirected traffic from the site to a competing site at “”. Complaint, Annex J. The “” site is owned by Respondent. Sometimes users are redirected to a generic advertising page containing links to various sites relating to the meeting industry.
With respect to the issue of “bad faith” registration and use, Complainant submits that Respondent makes no claim of ownership of the mark PRIVATE MEETINGS SUMMIT.
Complainant notes that, in August 2009, after years of using as its primary site, it discovered that the domain name , which it believed to be held by World Publications' web developer, Fusion Media, was actually owned by Respondent. Complainant then corresponded with Respondent and demanded return of the domain name. Complaint, Annex G. Respondent first replied that it would release the domain name for USD 15,000. It later demanded that Complainant pay USD 500 per month for use of the domain name. Complaint, Annex G. B. Respondent
In its Response, Respondent alleges as follows: “The domains: and are owned by GMW DIGITAL, LLC and were never owned by Complainant. Nor were the domains owned by said company whom Complainant purchased assets from. See Page 39, Asset Purchase Agreement for notes. Respondent is also in the Meeting industry and feels the Complainant is trying to coerce the Respondent into giving up Respondents asset rights to domain names the Respondent has paid for and managed for the past 10 years. Also, Respondent has not, as alleged, infringed on Intellectual Property rights of Complainant. On the contrary, this malicious act by Complainant should not be tollerated (sic) since the Respondent has owned and operated and paid for the said domains for a period of ten years.”2 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the disputed domain names are, for all intents and purposes, identical to PRIVATE MEETINGS SUMMIT. The addition of the top-level domain “.com” and the deletion of a letter “s” in the domain name do not support a contrary determination.
The Panel further finds, based on the PTO's decision to approve Complainant's marks for publication, that Complainant has rights in the mark PRIVATE MEETINGS SUMMIT. B. Rights or Legitimate Interests
The Panel is not persuaded that Complainant has sustained its burden of establishing that Respondent does not have rights or legitimate interests in the disputed domain names. Respondent has indicated that it is involved in the meeting industry and that it has owned, paid for and managed the domain names for the past ten years. C. Registered and Used in Bad Faith
The Panel concludes that the disputed domain names were not registered and are not being used in bad faith. In view of the prosecution history of Complainant's trademark applications, it is not clear to the Panel that Complainant's trademark rights predate the date of registration of the disputed domain names.3 As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (paragraph 1.4), while “[r]egistration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity [under element 1 of the Policy], … it can be difficult to prove that the domain name was registered in bad faith as it is difficult to show that the domain name was registered with a future trademark in mind.”
Complainant has presented no evidence that Respondent's ownership claim is improper. Rather, Complainant merely alleges that it believed that the domain names were owned by its web developer, Fusion Media. There is no evidence that Respondent was under an obligation, contractual or otherwise, to register the domain names in the name of Complainant. The excerpt of the Asset Purchase Agreement between Islands and Complainant submitted by Complainant does not specifically mention the domain names in dispute. In view of this, it was not unreasonable for Respondent to demand payment of money for transfer of the disputed domain names. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Jeffrey M. Samuels
Sole Panelist
Dated: February 8, 2010
1 Complainant submitted printouts from the PTO database to establish current status of the trademark applications. Complaint, Annex H. The printouts do not indicate that the marks have been approved for publication. Rather, they indicate that, with respect to each application, a non-final action has been mailed. In view of this inconsistency, the Panel reviewed the automated records of the PTO. Such records do reflect that both marks have been approved for publication. They also indicate, however, that, with respect to the application PRIVATE MEETINGS SUMMIT (Serial No. 77781764), the Examiner initially refused registration on grounds the mark is merely descriptive and required a disclaimer of the term “summit” on grounds it is generic. Such refusal was overcome through submission of a statement that the mark has acquired distinctiveness through substantially exclusive and continuous use for at least the five years immediately before the date of the statement (Oct. 7, 2009) and of the requested disclaimer. With respect to the PRIVATE MEETINGS SUMMIT and DESIGN mark (Serial No. 7781759), the Examiner initially required Complainant to disclaim exclusive rights to the term “private meetings summit” on grounds the term is merely descriptive. Complainant again submitted a statement that the mark has acquired distinctiveness through substantially exclusive and continuous use for at least the five years immediately before the date of the statement (Oct. 7, 2009). It also disclaimed exclusive rights to the term “summit” apart from the mark as shown.
2 While Respondent contends that it has owned, operated and paid for the disputed domain names for ten years, the Internic WhoIs records appear to indicate that the registrations were created on March 1, 2002. The WhoIs of the concerned registrar, Network Solutions, Inc., indicates that the disputed domain name registrations were created on May 28, 2007.
3 This is so, in the view of the Panel, whether one relies upon the information in the WhoIs database or upon Respondent's contention that it has owned the disputed domain name registrations for a period of ten years.
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