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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nielsen Media Research, Inc. v. Domains for Sale, Inc.
Case No. D2002-0020
1. The Parties
The Complainant in this administrative proceeding is Nielsen Media Research, Inc., a Delaware Corporation with its principal place of business in New York, New York, USA.
The Respondent is Domains For Sale, Inc., which is said to be located in New York, New York, USA.
2. The Domain Name and Registrar
The domain name at issue is <nielsenmediaresearch.com>.
The Registrar of this domain name is Tucows, Inc. of Toronto, Canada.
3. Procedural History
The Complaint has been submitted pursuant to the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the Rules), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules).
The Complaint was received by e-mail on January 10, 2002, and in hardcopy on January 15, 2002, by the WIPO Arbitration and Mediation Center (the Center). It named John Barry as the Respondent. It also indicated that a number of different names have been used to designate the registrant at earlier times since Complainant was alerted to the disputed domain name.
On January 18, 2002, the Center contacted the Registrar, Tucows, Inc., seeking confirmation of data in the Complaint. The Registrar's response of January 21, 2002, confirmed that the disputed domain name was registered with it but stated that the then current registrant's name was Domains For Sale, Inc. The Registrar also stated that the "domain name is currently on hold to ensure that no changes occur to the ownership or Registrar for the duration of the dispute."
The Center then advised the Complainant concerning the registrant's name and contact data provided by the Registrar and indicated that amendment of the Complaint would be appropriate. An amended Complaint was submitted to the Center by the Complainant on January 23, 2002. In it, the named Respondent is the registrant named in the records of the Registrar.
After completing a check for compliance with formal requirements, the Center on January 24, 2002, dispatched to Respondent a Notification of Complaint and Commencement of Administrative Proceedings, using the contact information provided by the Registrar. The Notification stated that the last day for sending a Response to the Center would be February 13, 2002.
No Response was received by the Center. On February 15, 2002, a Notification of Respondent Default was directed by the Center to the Respondent.
However, on February 27, 2002, the Center received an email message from "John Barry", the name given in the originally filed Complaint as the name of the registrant of the disputed domain name. The message said: "I, John Barry ("Respondent") do not oppose the Complaint, and ask that the Panel order the domain name <nielsenmediaresearch.com> transferred to NEILSEN MEDIA RESEARCH."
Also on February 27, 2002, the Complainant advised the Center that Complainant had brought a suit involving the disputed domain name against John Barry in the United States District Court for the Southern District of New York.
The Center inquired of the Complainant whether the Administrative Proceeding should continue. Complainant expressed a desired that the Proceeding continue.
William L. Mathis was invited to serve as the sole Panelist in the Administrative Proceeding, and he provided to the Center his Statement of Acceptance and Declaration of Impartiality and Independence. A notice of the appointment of the panel was sent to the parties on March 11, 2002.
4. Factual Background
Complainant produces and sells audience estimates and television ratings which provide a projection of the size and composition of television program audiences. Such ratings are said to be the primary method used by television companies and advertisers to determine who is watching which television programs. Moreover, since 1996, the Complainant has spent substantial sums of money promoting its NIELSEN MEDIA RESEARCH name and mark in connection with its ratings.
Complainant owns a number of United States trademark and service mark registrations of the mark NIELSEN MEDIA RESEARCH as used in connection with its products and services. These include Reg. No. 2,367,336, issued July 8, 2000; Reg. No. 2,448,024, issued May 1, 2001; Reg. No. 2,502,257, issued October 30, 2001; and Reg. No. 2,512,912, issued November 27, 2001. All such registrations are on the Principal Register.
Since June 1995, Complainant has owned the domain name <nielsenmedia.com> and maintains its official web site at that address.
After noting that the Whois database listings for the disputed domain name reflected numerous changes in the name and contact data pertaining to the registrant over a short period of time, the Complaint states a belief that "the same individual or group owns the registration and has been changing the registration information in an effort to conceal the person or group's true identity." Complaint, paragraph 6.
With respect to Respondent's use of the disputed domain name, the Complaint alleges that it has been used only to forward Internet users to other web sites. Some examples of such web sites are given. Two of them display graphic images which, if linked to Complainant's trademark, would tend in Complainant's view to tarnish Complainant's mark.
Complainant alleges further that it has not granted to Respondent a license or other permission to use Complainant's trademark, that Respondent has not been known by the term Nielsen Media Research, that Respondent has never had any legitimate business relating to or incorporating the words Nielsen Media Research, and that Respondent does not own any trademark or trade name registration relating to such term.
On November 30, 2001, a complaint letter was sent on Complainant's behalf to the domain name registrant but was returned to the sender. Attempts at telephone contacts also were unsuccessful, except for one that was directed to the phone number provided in the Whois database for the then registrant, This Domain is For Sale. A message was left at that number, and the message was returned with an offer to sell the disputed domain name for "the same amount [he] sells [his] other Web sites for: $1000."
The Complaint alleges that $1000 is more than the out-of-pocket expense for registering the disputed domain name.
5. Parties’ Contentions
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant's trademark and service mark.
Complainant also contends that Respondent has no legitimate interest in the disputed domain name.
Complainant contends further that the disputed domain name was registered and has been used in bad faith in that (1) Respondent had actual or constructive notice of Complainant's mark at the time he registered the domain name, (2) Respondent's pattern of providing false and changing contact information constituted an illegitimate attempt to conceal his identity, and (3) Respondent registered the domain name in order to sell it for a profit.
Complainant seeks a transfer of the disputed domain name to Complainant.
Respondent has offered no contentions either formally or informally.
6. Discussion and Findings
In this case, the Panel is satisfied that the formalities provided for in the Policy, the Rules, and the Supplemental Rules have been satisfied and that the Center has taken all steps necessary to notify the Respondent of the filing of the Complaint and the institution of this proceeding.
Under the Policy, a decision calling for the transfer of a disputed domain name is justified when three elements have been established. These are
(i) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent's domain name has been registered and is being used in bad faith.
Complainant's ownership of rights in the mark NIELSEN MEDIA RESEARCH is established by the Principal Register Trademark Registrations referred to above. Section 1057(a) of Title 15, U.S. Code, provides: "A certificate of registration of a mark upon the principal register ... shall be prima facie evidence ... of the registrant's ownership of the mark."
Respondent's domain name is identical to Complainant's registered trademark except for the existence of spaces between the words in the trademark and the addition of an ordinary suffix in the domain. Such differences are irrelevant. See, for example, the Panel decisions in Microsoft Corp. v. Amit Mehorta, WIPO Case No. D2000-0053, and Sanrio Company, Ltd. v. Neric Lau, WIPO Case No. D2000-0172. Accordingly, the Panel finds that the disputed domain name has been shown to be confusingly similar to a trademark and/or service mark in which Complainant has rights.
Turning to the issue of whether Respondent has legitimate interests in the disputed domain name, the Panel notes Respondent's default and failure to provide information. Complainant's undisputed allegations showing that Respondent had no legitimate interest in the name are convincing, and the Panel so finds.
With respect to the issue of whether Respondent's domain name has been registered and used in bad faith, Section 4.b. of the Policy describes, in the alternative, four sets of circumstances any one of which, if established, may justify a finding of bad faith registration and use of a domain name. One of these is of particular interest here. It is
Section 4.b.(i), which reads:
"circumstances indicating that [Respondent] ... registered or [Respondent] ... acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of ... [Respondent's] documented out-of-pocket costs directly related to the domain name."
It is not likely that Respondent's selection for his domain name of a composite of all three of the words which make up Complainant's trademark and name could have taken place without Respondent having targeted Complainant for something. The evidence shows that, by December 8, 2001, the domain name registration records had been changed so that the Whois database records would communicate Respondent's purpose. Complaint Exhibit F shows that, on that date, the name given for the registrant was "This Domain is For Sale" and the name given for each of the Administrative Contact, the Technical Contact and the Billing Contact, was "This Domain, is For Sale." Considering the universe of entities which could have an interest in legitimate use of the particular domain name <nielsenmediaresearch.com>, it is evident also that Complainant must have been visualized by Respondent as a potential buyer.
Respondent's December 9, 2001, offer to sell the disputed domain name to Complainant for $1000 completes the picture. According to the uncontradicted evidence provided in the Complaint, the $1000 amount is in excess of what Respondent's out-of-pocket costs directly related to the domain name would have been. Moreover, Respondent's representation in the message to Complainant that the asking price here was the same as Respondent's asking price for other domain names indicates that Respondent was dealing in domain names as a business.
Accordingly, the Panel finds that the circumstances described in Section 4.b.(i) of the Policy were present in this case. The existence of such circumstances provides proof that the disputed domain name has been registered and is being used in bad faith, and the Panel so finds.
Complainant quite properly points in the Complaint to a number of other evidentiary bases in this case for a finding of Respondent's bad faith registration and use of the disputed domain name. None of these has been found by the Panel to be inadequate. However, if view of the clarity of the proofs concerning the circumstances described in Section 4.b.(i) of the Policy and the definitive character of the finding set forth above with respect to bad faith, the Panel will not discuss here the additional bases advanced by Complainant.
Having satisfied all of the criteria provided for in the Policy, Complainant is found to be entitled to a decision requiring transfer of the disputed domain name to Complainant.
Accordingly, the Panel orders that the domain name <nielsenmediaresearch.com> be transferred to the Complainant.
William L. Mathis
Dated: March 22, 2002