Complainant is Heinrich Bauer North America, Inc. of Englewood Cliffs, New Jersey, United States of America ("United States"), represented by Michael Best & Friedrich, LLP, United States.
Respondent is Domain Vault, Domain Vault LLC of Dallas, Texas, United States / Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States, represented by Paul Keating, Spain. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with N LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 6, 2015. On October 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 8, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 9, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 13, 2015.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 19, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on November 9, 2015. On November 9, 2015, Respondent's representative requested an extension of time to file its Response. In accordance with the Rules, the extended due date for Response was November 12, 2015. Respondent did not submit any response. Accordingly, the Center again notified Respondent of its default on November 13, 2015.
The Center appointed Richard Page as the sole panelist in this matter on November 19, 2015. 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
Since at least as early as July 2, 1972, Complainant has published and sold a weekly magazine entitled Woman's World. Complainant's Woman's World magazine includes information on recipes, health, clothing, relationships, and contests. Woman's World magazine is a family-friendly publication, often sold at grocery stores, drug stores, and newsstands. The contents of each issue are previewed on the cover.
Complainant is the owner of the United States federally registered trademark WOMAN'S WORLD (the "WOMAN'S WORLD Mark" No. 1179068. The application to register the WOMAN'S WORLD Mark was filed by Creative Graphics Development, Inc. (Complainant's earlier corporate name) on July 9, 1979 and the registration issued on November 24, 1981. Creative Graphics Development, Inc. changed its name to Heinrich Bauer North America, Inc. on October 23, 1980.
The Disputed Domain Name was registered on May 10, 2002. 5. Parties' Contentions A. Complainant
Complainant contends that its United States trademark registration is prima facie evidence of the validity of the WOMAN'S WORLD Mark and is entitled to great deference from UDRP panels. Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415. Complainant alleges that the WOMAN'S WORLD Mark is distinctive and wellknown. Complainant further alleges that the Woman's World magazine is one of the most popular in the United States. Since 1986 (the earliest date for which sales data is readily available), over 2.1 billion copies of Woman's World magazine have been sold. The magazine sells more copies on newsstands than any other magazine in the United States and is currently available at approximately 133,000 retail outlets.
The Disputed Domain Name incorporates the entirety of the WOMAN'S WORLD Mark and none of the modifications by Respondent distinguish the Disputed Domain Name from the WOMAN'S WORLD Mark. The Disputed Domain Name merely deletes an apostrophe and affixes the generic Top-Level Domain ("gTLD") ".com." According to Complainant, neither of these modifications distinguishes the Disputed Domain Name from the WOMAN'S WORLD Mark. Complainant argues that the Disputed Domain Name is identical or confusingly similar to its WOMAN'S WORLD Mark.
Complainant contends that Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods or services. Also, Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, Respondent is using the Disputed Domain Name to direct Internet users to pay-per-click link farm parking pages which offer ads for goods and services competitive to those offered by Complainant under its WOMAN'S WORLD Mark and other ads for pornography and sexually-themed services which are contrary to the family-friendly reputation of Woman's World magazine.
Complainant alleges that it is not merely a coincidence that much of the subject matter of the ads on Respondents "www." website and the subject matter of Complainant's magazine is identical. Respondent's use of the Disputed Domain Name in this fashion seeks to take advantage of Complainant's mark by creating confusion as to Complainant's sponsorship or affiliation with Respondent's site, or otherwise by diverting Internet users seeking information about Complainant's magazine. The use of the Disputed Domain Name, which is confusingly similar to the WOMAN'S WORLD Mark, to falsely suggest a relationship with Complainant is not a bona fide offering of goods or services, nor is it a noncommercial or fair use of the Disputed Domain Name, especially when such use is made to drive traffic to competitors of Complainant for Respondent's financial gain.
Complainant further contends that Respondent is not commonly known by the Disputed Domain Name. Further, Complainant is unaware of any trademark registrations owned by Respondent for the Disputed Domain Name or any variation thereof. Complainant has not consented to Respondent's use of the Disputed Domain Name.
Complainant concludes that Respondent's use of the Disputed Domain Name does not evidence any rights or legitimate interests in the Disputed Domain Name, but rather shows Respondent's use of the Disputed Domain Name is solely for Respondent's financial gain.
Complainant alleges that the above-described actions of Respondent constitute bad faith pursuant to the elements of the Policy, paragraph 4(b)(iv). Respondent is intentionally using the Disputed Domain Name to attract Internet users for commercial gain to its website by creating confusion with the WOMAN'S WORLD Mark as to the source of Respondent's website. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Respondent is not obliged to participate in a domain name dispute proceeding, but when it fails to do so, asserted facts that are not unreasonable may be taken as true and Respondent is subject to the inferences that flow naturally from the information provided by Complainant: (See Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441.)
Even though Respondent has failed to file a Response or to contest Complainant's assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,
ii) that Respondent has no rights or legitimate interest in respect of the Disputed Domain Name; and,
iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
A United States trademark registration is prima facie evidence of the validity of the WOMAN'S WORLD Mark and is entitled to deference from UDRP panels. Asian World of Martial Arts Inc. v. Texas International Property Associates, D2007-1415, supra. The WOMAN'S WORLD Mark is distinctive and wellknown. Respondent has not challenged Complainant's assertion of trademark rights. Therefore, the Panel considers that Complainant has enforceable trademark rights for purposes of this proceeding.
The Disputed Domain Name incorporates the entirety of the WOMAN'S WORLD Mark and none of the modifications by Respondent distinguishes the Disputed Domain Name from the WOMAN'S WORLD Mark. The Disputed Domain Name merely deletes an apostrophe and affixes the gTLD ".com". Therefore, the Disputed Domain Name is confusingly similar to its WOMAN'S WORLD Mark. Complainant has satisfied the elements of the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights to or legitimate interests in the Disputed Domain Name. Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") reflects that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interest of Respondent, Respondent carries the burden of demonstrating it has rights or a legitimate interest in the Disputed Domain Name. Where Respondent fails to do so, a Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Complainant has alleged that it has not consented to Respondent's use of the Disputed Domain Name, Respondent is not commonly known by the Disputed Domain Name, Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods or services, and Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
Respondent has not responded.
Therefore, the Panel finds that Complainant has adequately demonstrated Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Complainant alleges that the above-described actions of Respondent constitute bad faith pursuant to the Policy, paragraph 4(b)(iv).
The Panel finds that Respondent registered and is using the Disputed Domain Name to direct Internet users to pay-per-click link farm parking pages which offer ads for goods and services competitive to those offered by Complainant under its WOMAN'S WORLD Mark and other ads for pornography and sexually-themed services which are contrary to the family-friendly reputation of Woman's World magazine.
The Panel finds that Respondent's registration and use of the Disputed Domain Name in this fashion seeks to take advantage of the WOMAN'S WORLD Mark creating confusion as to Complainant's sponsorship or affiliation with Respondent's site and by diverting Internet users seeking information about Complainant's magazine. The Panel further finds that Respondent's motive is for financial gain.
Therefore, Complainant has shown bad faith under the Policy, paragraph 4(b)(iv) and met the requirements of the Policy, paragraph 4(a)(iii). 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to the Complainant.
Richard W. Page
Sole Panelist
Date: November 28, 2015
Full & Egal Universal Law Academy