The Complainant is Rocket Publishing Co., Inc. of Encinitas, California, United States of America, represented by Morrison & Foerster, LLP, United States of America.
The Respondent is Isaac Goldstein, of Hong Kong, SAR of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Signature Domains, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2011. On March 31, 2011, the Center transmitted by email to Signature Domains, LLC a request for registrar verification in connection with the disputed domain name. On March 31, 2011, Signature Domains, LLC. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name.
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 April 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 2, 2011.
The Center appointed James A. Barker as the sole panelist in this matter on May 10, 2011. 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
“Ranch And Coast” is the name of a monthly magazine, previously known as “Ranch and Cove” and “Ranch and Club”, which was established in 1983 as a community publication for Rancho Santa Fe, California. In 1998, the Complainant purchased the magazine and all of its assets. Since the acquisition, the Complainant has continued to issue the magazine on a monthly basis. It has also expanded the scope of the subject matter of the magazine to a more general lifestyle magazine, while including articles of interest to readers living in Southern California, which has led to an increase in circulation. In 2003, the Complainant changed the magazine’s name to “Ranch and Coast”.
The disputed domain name was first created in December 1999, as indicated in the WhoIs record, and last updated in February 2011. The Complainant says that it registered the disputed domain name in 2003, but lost that registration sometime shortly in or after December 2010. The Complainant says that the Respondent registered the disputed domain name in 2011. The Registrar’s confirmation of the registration details in this case, however, did not identify the particular date on which the Respondent acquired the disputed domain name. 5. Parties’ Contentions A. Complainant
The Complainant claims unregistered rights in RANCH AND COAST as a trademark. The Complainant claims to have used the RANCH AND COAST trademark continuously in commerce in connection with the promotion and sale of the magazine since at least as early as 2003. The Complainant provides copies of its magazine covers which feature the masthead “Ranch and Coast” prominently on the front cover.
The Complainant previously owned the registration for the disputed domain name, which it initially registered in April 2003. From that time until December 2010, the Complainant operated an active website at “www.”, on which the trademark RANCH AND COAST was prominently featured. The Complainant knew that its registrations for and (the latter of which is not at issue in this proceeding) were expiring at the end of 2010. However, the Complainant initially could not renew the registrations because it did not have the necessary username and password due to a dispute with a former business partner. The domain names went into a grace period, and during that grace period the Complainant successfully guessed the correct username and password, renewed both domain names, received confirmation of the renewal, and had its credit card charged. Shortly thereafter, however the site linked to the disputed domain name went down and the Complainant was informed the disputed domain name was up for auction. Having no other recourse, the Complainant bid on the disputed domain name, but was not the successful bidder. Instead, the Respondent, who had no rights in or use of the trademark RANCH AND COAST, took advantage of this situation and registered the disputed domain name.
The Complainant claims that the disputed domain name is relevantly identical to its common law mark, as its mark is incorporated entirely in the disputed domain name.
The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent has used or made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services. To the Complainant’s knowledge, neither the Respondent, nor any business he may own or operate, has been commonly known by the disputed domain name. The Respondent is making no legitimate noncommercial or fair use of the name, but to the contrary appears only to be using it for the display of banner advertisements and/or sponsored links for magazines. The Respondent has never been licensed by the Complainant to use its mark.
The Complainant says that the disputed domain name was registered and has been used in bad faith by the Respondent. The disputed domain name is parked with a list of sponsored links. The Respondent’s actions therefore prevent the Complainant from reflecting its own trademark in a corresponding domain name. The disputed domain name incorporates the Complainant’s RANCH AND COAST trademark, thereby misleading consumers to believe that the site is sponsored, affiliated or authorized by the Complainant, and creating a likelihood of confusion among consumers. It is therefore the Respondent’s intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed 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 respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed as follows. A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the first issue which the Complainant must establish is that it “has rights” in a trademark. The Complainant does not have rights in a registered mark. Instead, the Complainant claims that it has rights in RANCH AND COAST as a common law mark, based on the use of that mark in connection with its magazine. Among other matters, the Complainant provides evidence of its magazine covers over 5 years, which feature the name “Ranch and Coast” as a prominent masthead.
What is required to demonstrate rights in an unregistered mark is outlined in the WIPO Overview of WIPO Panel Views, Second Edition (“WIPO Overview 2.0”). The consensus of prior panels is relevantly set out under the heading: “1.7 What needs to be shown for the complainant to successfully assert common-law or unregistered trademark rights?”:
“Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark.”
While the Complainant’s evidence in this connection is limited, the Panel considers that it is sufficient to indicate that the Complainant has a history of trading under the mark RANCH AND COAST. That mark has featured prominently on the Complainant’s magazine covers, and on the Complainant’s website. It is a mark that is clearly put forward as the Complainant’s brand. While the terms which comprise the Complainant’s mark are obviously descriptive (“Ranch”, “and”, “Coast”), there was no evidence in the case file that these terms are commonly or descriptively used in the conjoined manner in which they appear in the Complainant’s mark. The Respondent provided no evidence to the contrary.
The Panel has also had regard to prior cases under the Policy, involving a claim of unregistered trademark rights in a magazine masthead and, similarly to this case, evidence only of magazine covers and a related website to support such a claim. In these circumstances, previous panels have relevantly been prepared to accept a complainant’s unregistered trademark rights for the purpose of proceedings under the Policy: see Primedia Specialty Group Inc. v. Vernon Pursley,WIPO Case No. D2007-0791.
Accordingly, the Panel finds that the Complainant has established, for the purpose of these proceedings, that it “has rights” in the mark RANCH AND COAST as a common law mark.
The second issue which the Complainant must establish under paragraph 4(a)(i) of the Policy is that the disputed domain name is identical or confusingly similar to the mark in which the Complainant has rights. The Panel finds that the disputed domain name is confusingly similar for this purpose, as the Complainant’s mark is entirely incorporated, without change or addition, in the disputed domain name. It is well-established in prior panel decisions under the Policy that the entire incorporation of a complainant’s mark in a domain name is sufficient for a finding in this respect. See e.g. AT&T Corp. v. William Gormally,WIPO Case No. D2005-0758, and the cases cited in that one; Nokia Corporation v. N a.k.a IBCC,WIPO Case No. D2000-0102.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant establishes a prima facie case against the Respondent on this ground, the burden shifts to the Respondent to rebut it. The overall burden of proof remains with the Complainant. See, e.g., Document Technologies, Inc. v. International Electronic Communications, Inc.,WIPO Case No. D2000-0270.
In this case, the Panel finds that the Complainant has presented a prima facie case against the Respondent. The Respondent has chosen not to respond to that Complaint. There is no evidence in the case file which suggests to the Panel that the Respondent might have a right or legitimate interest in the disputed domain name. As indicated in the Complaint, the disputed domain name reverts to a simple website which provides a list of links relating to subject matters such as real estate and “display homes” – subjects generally associated with the Complainant’s publication. From this, the Panel has inferred that the Respondent receives “click through” revenue from this website. In similar circumstances to this case, previous panels have found that such a use is not legitimate: see Primedia Specialty Group Inc. v. Vernon Pursley, supra.
By choosing to submit no reply, the Respondent has provided no explanation or evidence as to what the connection is between the disputed domain name and its activities. In the absence of such an explanation, the Panel considers that the only reasonable inference is that the Respondent registered the disputed domain name to exploit the value of the Complainant’s mark. Such a use cannot be a basis for a right or legitimate interest under the Policy.
Accordingly, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Bad faith may be demonstrated where the evidence indicates that the Respondent registered and used the disputed domain name primarily with a view to taking unfair advantage of the Complainant’s registered trademark rights and reputation. See e.g. SingTel Optus Pty v. Xnet,WIPO Case No. D2004-0734.
The Panel notes that a number of matters are unexplained in or unclear from the Complainant. The Complainant indicates that it first registered the disputed domain name in April 2003 (then to lose the registration late last year). However the WhoIs details indicate an earlier registration of the disputed domain name. This is, to this Panel, somewhat suggestive that the term “Ranch and Coast” may not have had an exclusive association with the Complainant. The Respondent is also registered as resident in Hong Kong. There was no evidence in this case of the Complainant’s reputation in Hong Kong. The circumstances in which the Complainant claims to have lost the registration of the dispute domain name are also unclear. Despite suggesting that it renewed the registration of the disputed domain name (for which only indirect evidence is provided), the Complainant indicates that it lost that registration because its website “went down”. How these vague circumstances resulted in the disputed domain name being put up for auction is not clearly explained.
In this case, there is no direct evidence as to the Respondent’s motivation in registering and then using the disputed domain name. However, as indicated in the Complaint, the Respondent’s website provides links to third party websites generally associated with the subject matter of the Complainant’s magazine. There is no evidence of an objective connection between the Respondent and the mark “Ranch and Coast”. The conjoined term “Ranch and Coast” is also not so obviously descriptive to the panel to suggest that it has a common meaning, unassociated with the Complainant.
Further, by submitting no response, the Respondent has not taken issue with the claims in the Complaint. The current use of the disputed domain name is suggestive of bad faith. If the Complainant did, through error, lose the registration of the disputed domain name, it would not be surprising to find that it had been “snapped up” by a registrant seeking to exploit the trademark value in it. The Complainant has been using its mark for a substantial period. The Complainant also claims (although without direct evidence) to have been the registrant of the disputed domain name itself for a substantial period.
In these circumstances, the Panel considers there is a reasonable inference of bad faith registration and use. Accordingly, the Panel finds that the Complainant has established its case under paragraph 4(a)(iii) 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.
James A. Barker
Sole Panelist
Dated: May 24, 2011
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