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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Forbes Inc. and Forbes Management Company Inc. v. C. Lee Nunn

Case No. D2000-1069

 

1. The Parties

The Complainants are Forbes Inc. and Forbes Management Company Inc., which are corporations organized and existing under the laws of the State of New York, with a postal address of 60 Fifth Avenue, New York, NY 10011, USA.

The Respondent is C. Lee Nunn, with a postal address of Forbes Publishing, 245-M Mt. Herman #210, Scotts Valley, CA, U.S.A.

 

2. The Domain Name and Registrar

The dispute concerns the domain name "forbespublish.com" (hereinafter "the Domain Name") registered with Network Solutions, Inc. (the Registrar) of 505 Huntmar Park Drive, Herndon, Virginia 22170, U.S.A.

 

3. Procedural History

On August 15 and 16, 2000, the Complainants submitted a Complaint electronically and by hard copy, respectively, to the World Intellectual Property Organization Arbitration and Mediation Center (the WIPO Center) for a decision in accordance with the Uniform Domain Name Dispute Resolution Policy (the Policy), 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).

On August 18, 2000, the WIPO Center acknowledged receipt of the said Complaint.

On August 23, 2000, the WIPO Center sent a Request for Registrar Verification to the Registrar. On August 24, 2000, the Registrar confirmed to the WIPO Center that it was the Registrar of the said Domain Name and also that the current registrant of the said Domain Name was the Respondent.

On August 24, 2000, having found that the Complainants had satisfied the formal requirements of the Policy, the Rules, and the Supplementary Rules, the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding (the Notification) by post/courier, facsimile, and e-mail to the Respondent and transmitted electronically copies of said documents to the Complainants, ICANN, and the Registrar. The said Notification particularized the formal date of the commencement of this administrative proceeding as August 24, 2000, and required the Respondent to submit a Response to the Complaint within 20 calendar days from the date of receipt of the Notification, failing which the Respondent would be considered to be in default.

The Respondent failed to file the Response with the WIPO Center by the last date, i.e. September 12, 2000. On September 13, 2000, the WIPO Center sent the Notification of Respondent Default to the Respondent by post/courier, facsimile, and e-mail and copied it to the Complainants via e-mail. The Complainants elected to have the dispute decided by a single-member panel (the Panel). On September 27, 2000, the WIPO Center appointed Mr. Terrell C. Birch to be the panelist after receiving a Statement of Acceptance and Declaration of Impartiality and Independence from him and sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Complainants and the Respondent and copied it to the Panel by e-mail. On the same day, the WIPO Center sent a Transmission of Case File to the Panel, with an electronic version of a Model Form of Administrative Panel Decision.

The Panel finds that the WIPO Center has discharged its obligations and responsibility under the Rules. The Panel will hereby issue its Decision based on the Complaint, the Policy, the Rules, and the Supplementary Rules, without the benefit of any Response from the Respondent.

 

4. Factual Background

Complaints owns numerous trademark registrations and applications, inter alia, for the mark FORBES (hereinafter "the FORBES Marks"). Because Respondents are in default, the factual allegations of the Complaint have not been denied and are basically as follows:

Complainants also own numerous domain names, including but not limited to WWW.FORBES.COM and has operated a FORBES World Wide Web site under that domain name since about May 1996 and has registered the domain names forbespublishing.com and forbescustompublishing.com, among others. The FORBES Marks of the Complainants clearly antedate any apparent use or registration of the domain name www.forbespublish.com(hereinafter "the Domain Name") and are in full force and effect and have not been abandoned. Complainants therefore has the prima facie exclusive prior right to use the FORBES Marks throughout the world and at the very least throughout the United States and its territories, in connection with its registered services and in connection with its associated marketing and promotional activities such as in internet domain names and its web sites. Complainants have spent multiple millions of dollars in promoting the FORBES Marks.

As a result of its marketing and advertising efforts, Complainants have created enormous monetary value, reputation, and good will in Complainants’ FORBES Marks. These trademarks and service marks are symbols of the Complainants’ high-quality reputation and valuable good will, and have become, through extensive use and advertising, famous and well known service marks throughout the U.S.

Complainants are not related to Respondent, have no contracts or agreements with Respondent, have no business relationship or transactions with Respondent, and have no privity with Respondent whatsoever. Complainants have not granted their permission or consent to the use and appropriation of any FORBES Marks or any colorable imitations thereof in Respondent’s Domain Name, or in any manner whatsoever.

On or about January 24, 2000, Complainants notified Respondent of their objections to Respondent’s use of the Domain Name, and demanded that Respondent cease and desist from further use of that name, cancel the Domain Name registration, or transfer the registration to Complainants, and promise not to register any other domain names containing Complainants’ FORBES Marks. That letter was sent certified mail, return receipt requested, and was received by Respondent. On February 22, 1999, having received a response from the Respondent offering to sell the Domain Name to Complainants for $20,000, Complainants sent a subsequent cease and desist letter rejecting Respondent’s offer and repeating the demands of January 24, 2000.

On or about March 6, 2000, Respondent sent Complainants a letter stating that "Forbes Publishing" had changed its name to "American Book Publishing Group," and that the site for that entity was located at www.american-book.com.

On or about March 21, 2000, Complainants sent Respondent a letter requesting that Respondent voluntarily transfer the Domain Name to Complainants in view of Respondent’s decision to change the name of its business. Since there was no response to this letter, on or about May 4, 2000, Complainants sent Respondent another letter by Federal Express requesting transfer of the Domain Name and providing a Registrant Name Change Agreement to facilitate the transfer. The May 4, 2000 letter was returned to Complainants by Federal Express with an indication that it was "refused for signing" by Respondent.

 

5. Parties’ Contentions

A. Complainants

Essentially, the contentions of the Complainants are that the FORBES Marks are its trademarks and service marks and that Respondent has adopted a substantially identical word for the said Domain Name that is confusingly similar to Complainants’ FORBES Marks; that the Respondent has no rights or legitimate interests in the said Domain Name and that the said Domain Name has been registered and is being used by the Respondent in bad faith.

B. Respondent

In view of the fact that the Respondent has not filed a Response, the Panel is in no position to make out its contentions.

On the other hand, Respondent has filed a written authorization to WIPO to terminate Respondent’s ownership of the forbespublish.com Domain Name and transfer it to Complainants. A copy of this authorization is attached to this Decision and is incorporated by reference herein.

 

6. Discussion and Findings

6.1 Effect of Respondent’s Default

By paragraph 5(b)(i) of the Rules, it is expected of the Respondent to:

"[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…"

In the event of a default, under paragraph (14)(b) of the Rules:

"…the Panel shall draw such inferences therefrom as it considers appropriate."

As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques WIPO Case No. D2000-0004 (February 16, 2000):

"Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent."

In the instant administrative proceeding, the Respondent’s default entitles the Panel to conclude that the Respondent has no evidence to rebut the assertions of the Complainants. It enables the Panel to proceed to make a finding in favor of the Complainants.

6.2 Elements to be proven

However, paragraph 4(a) of the Policy envisages that for the Complaint to succeed, the Complainant must establish that:

i) the Respondent’s Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; and

ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

ii) the Respondent’s Domain Name has been registered and is being used in bad faith.

The panel in Cortefiel, S.A. v. Miguel Garcia Quintas WIPO Case No. D2000-0140 (April 24, 2000) notes that under the Policy, even if the respondent is in default,

"…the complainant must prove that each of these three elements are present."

6.3 Identical or Confusingly Similar

The Complainants claim and have established first use and ownership of the FORBES Marks. It has also shown long and substantial use. Ownership of the FORBES Marks is clearly in the Complainants. Under the Policy, all that is required of the Complainants is to establish its rights in the Marks, and the extent of the geographical area in which the rights accrue does not matter. The Panel has compared the said Domain Name with the Complainants’ FORBES Marks and finds that the second level domain (forbespublish.com) is substantially identical to the Complainants’ FORBES Marks in its use of the words "FORBES" and "PUBLISH." The Panel finds that there is such similarity in sound, appearance, and connotation between the FORBES Marks and domain names BUDGET RENT A CAR and the Domain Name (forbespublish.com) as to render said Domain Name confusingly similar to Complainants’ FORBES Marks.

6.4 Respondent’s Rights or Legitimate Interests in the Domain Name

Under paragraph 4(c) of the Policy, the Respondent may demonstrate its rights and interests in the said Domain Name by showing:

i) its use of, or demonstrable preparations to use, the said Domain Name or a name corresponding to the said Domain Name in connection with a bona fide offering of goods or services before any notice to him of the dispute; or

ii) he (as an individual, business, or other organization) has been commonly known by the said Domain Name, even if he has acquired no trademark or service mark rights; or

iii) he is making a legitimate noncommercial or fair use of the said Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The need for these findings is moot in view of Respondent’s capitulation to transfer ownership of its domain name registration to Complainants.

6.5 Registration and Use in Bad Faith

As stated by the panel in World Wrestling Federation Entertainment, Inc. v. Michael Bosman WIPO Case No. D99-0001 (January 14, 2000) in order for the Complainant to succeed:

"... the name must not only be registered in bad faith, but it must also be used in bad faith."

The need for these findings is moot in view of Respondent’s capitulation to transfer ownership of its domain name registration to Complainants.

 

7. Decision

For all the foregoing reasons, the Panel finds that the Complainants have prevailed in this proceeding by virtue of Respondent’s written capitulation. The Panel requires that the Domain Name be transferred to the Complainants.

 


Terrell C. Birch
Sole Panelist

Dated: October 25, 2000

 

Источник информации: https://internet-law.ru/intlaw/udrp/2000/d2000-1069.html

 

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