официальный сайт ВОИС
Для удобства навигации:
Перейти в начало каталога
Дела по доменам общего пользования
Дела по национальным доменам
Arbitration and Mediation Center
Martha Stewart Living Omnimedia, Inc. v. XC2
Case No. D2003-0944
1. The Parties
The Complainant is Martha Stewart Living Omnimedia, Inc., New York, New York, United States of America, represented by Kenyon & Kenyon, United States of America.
The Respondent is XC2, Hong Kong, SAR of China.
2. The Domain Name and Registrar
The disputed domain name <marthastewartkids.com> is registered with Namezero.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 26, 2003. On November 28, 2003, the Center transmitted by email to Namezero a request for registrar verification in connection with the domain name at issue. On December 10, 2003, Namezero 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 administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of 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").
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 December 11, 2003.
In accordance with the Rules, paragraph 5(a), the due date for Response was
December 31, 2003. The Respondent did not submit any response. Accordingly,
the Center notified the Respondent’s default on January 6, 2004.
The Center appointed Peter G. Nitter as the sole panel in this matter on January 14, 2004.
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
Complainant is a publicly traded company, which employs approximately 580 employees,
and in 2002 had revenues of USD 295 million. Complainant uses the brand name
"Martha Stewart", emanating from its founder and current Chief Creative
Officer, Martha Stewart. The brand name is used across four business segments
– Publishing, Television, Merchandising and Internet/Direct Commerce – in which
the Complainant is a provider of "how to" ideas, products and other
resources for the home.
Complainant publishes several magazines, including Martha Stewart Living, Martha
Stewart Weddings, Martha Stewart Baby and Martha Stewart Kids. The magazine
Martha Stewart Kids has been published since 2001 and currently has a circulation
of 200,000 to 220,000 per issue.
Complainant is the owner of several trademarks containing the designation MARTHA
STEWART, such as MARTHA STEWART EVERYDAY, MARTHA STEWART LIVING, MARTHA STEWART
HOME and MARTHA STEWART WEDDINGS (the "Martha Stewart Marks").
Both in the United States and in other countries such as Australia, Brazil,
Canada, the countries of the European Union, Hong Kong, SAR of China, Japan
and several others, the Complainant has registered several trademarks comprising
the designation MARTHA STEWART. The first of these registrations, AT HOME WITH
MARTHA STEWART, was registered 14 November, 1989.
5. Parties’ Contentions
The domain name is identical or confusingly similar to the trademarks and service
marks in which the Complainant, Martha Stewart Living Omnimedia, Inc. ("MSLO")
has long-standing rights.
The Complainant has rights in several marks containing the designation "Martha
Stewart," thus they also have rights in the mark "Martha Stewart."
The Complainant publishes the magazine "Martha Stewart Kids" and
thus has the right to the mark "Martha Stewart Kids."
The domain name at issue is identical to the magazine name "Martha Stewart
Kids," and is nearly identical to the other Martha Stewart Marks that the
Complainant holds and to Martha Stewart Living Omnimedia, the Complainant’s
well-known trade name.
The addition of a common, generic word such as "kids" does not reduce
the likelihood of confusion. Hence, the domain name is identical or virtually
identical to the name of MSLO’s magazine "Martha Stewart Kids" and
to the trademark and service mark registrations held by the Complainant.
The Respondent has no rights or legitimate interests in respect of the domain
The Respondent’s intent is to divert Internet traffic to its own website for
purposes of making a profit. Respondent uses the domain name to connect to websites
offering goods and services not at all related to the Complainant or to Martha
Stewart personally. Some of the links for topics like "Martha Stewart"
and "Martha Stewart Kids Magazine" will take the user to websites
that sell discounted magazines, most of which are competitors of the Complainant’s
Respondent is clearly using the domain name in bad faith.
By its website activities, the Respondent for commercial gain has attempted
to attract Internet users who, being familiar with the Martha Stewart Marks
and the magazine Martha Stewart Kids, would be confused as to the source, sponsorship
or endorsement of the website or the products or services offered by the Complainant.
The Respondent is trying to confuse consumers and disrupt the business of a
competitor. The Respondent is intentionally trying to redirect users to its
website and thereby capitalizing on the confusion. Furthermore, the Respondent
intents to trade on the goodwill of the Complainant. All of these circumstances
are according to practice under the Policy, evidence of the Respondent’s bad
The bad faith is especially pronounced when the Respondent’s website provides
links to websites belonging to the Complainant’s competitors.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has as far as the Panel can see no registered rights to the
mark MARTHA STEWART KIDS. The Complainant has however registered rights to several
marks containing the designation MARTHA STEWART. These numerous registered and
used marks, combined with the fact that the designation is closely linked to
the very famous founder of the company, Martha Stewart, that the Complainant’s
well-known trade name also comprises the designation, and that the Complainant
is the proprietor of the domain name <marthastewart.com>, leads to the
conclusion that the Complainant has rights in the mark MARTHA STEWART.
The Complainant also claims to have exclusive rights in the mark MARTHA STEWART
KIDS. Those rights would have to be based on the mark’s strong notoriety.
According to the Complainant, the magazine Martha Stewart Kids has been published
since 2001, and that each issue currently has a circulation of approximately
200,000 to 220,000 copies. The Panel cannot see that this definitely proves
that MARTHA STEWART KIDS has such a strong notoriety that the Complainant has
achieved exclusive rights to such a trademark.
However, this is not decisive in this matter. According to the Policy, paragraph
4(a)(i), it is sufficient if the domain name is confusingly similar to a trademark
owned by the Complainant. The question can thus be formulated as to whether
the domain name is confusingly similar to the mark MARTHA STEWART, in which
the Complainant has rights.
The domain name consists of the mark MARTHA STEWART with the addition of the
word "kids." Previous cases under the Policy have shown that simply
adding a common or generic term, such as in this case the word "kids,"
to a famous mark is not sufficient to give the domain name an individual meaning
and prevent the overall impression that the domain name has some sort of connection
with the Complainant, see WIPO Cases Nos.
D2001-0174, D2000-0022, D2000-0477
and NAF Case No. FA 95404.
As the Complainant sells a magazine called "Martha Stewart Kids,"
the said suffix is rather than having a segregating effect, quite fitted to
strengthen the impression that the domain name belongs to, or is affiliated
with the Complainant. It is highly likely that Internet users will be lead to
believe that the domain name belongs to the Complainant.
This must especially be so when the trademark contains such distinct words
as MARTHA STEWART, the mark is exceptionally well known and refers to a very
famous physical person having the same name and being closely connected to the
Hence, the Panel finds that the domain name in question is confusingly similar
to a mark in which the Complainant has rights, and the prerequisite in the Policy,
paragraph 4(a)(i) is fulfilled.
B. Rights or Legitimate Interests
The Panel has considered the assertion made by the Complainant as to the lack
of rights or legitimate interests of the Respondent in respect of the domain
name at issue.
The Complainant claims that the Respondent uses the domain name to divert users
to its own website for commercial gain, by offering goods and services not connected
with the Complainant on the site, and also having links to sites selling such
goods and services, these often being goods and services provided by competitors
of the Complainant.
The Panel has visited the "www.marthastewartkids.com" website, in
order to investigate whether evidence could be found as to the Respondent’s
rights or legitimacy of interest in the contested domain name.
At present the site does not appear in the same form as it is presented in
the Complaint, Exhibits E to H.
However, the website still contains links to other sites offering discounted
magazines, both the Complainant’s magazines and its competitors’. Furthermore,
the website still contains links to different sites offering other sorts of
goods and services, under the heading "Popular Searches," with no
relation to the Complainant. Topics under the heading are for example "Kids,"
"Crafts," "Recipes" and "Birthdays."
The Panel is of the opinion that the site, also as it now appears, is used
to divert customers to sites offering goods and services with no affiliation
to the Complainant.
There is nothing on the site indicating that the Respondent is offering the
goods in bona fide. The Complainant is very well known all over the world and
there is no reason to believe that the Respondent was not familiar with the
company and the person Martha Stewart.
Neither is there any information on the site indicating that the Respondent
has been commonly known by the domain name.
Thus, the panel has found nothing on or outside of the website as being evidence
of the Respondent’s legitimate interest in the domain name.
Hence, the Panel finds that the Respondent does not have rights or legitimate
interests in the domain name, and the prerequisites in the Policy, paragraph
4(a)(ii) are therefore fulfilled.
C. Registered and Used in Bad Faith
According to the Policy, paragraph 4(b)(iv) it is to be regarded as evidence
of bad faith if by using the domain name the Respondent, for commercial gain,
intentionally attempts to attract Internet users to his website, by creating
a likelihood of confusion with the Complainant’s mark.
In this case it is clear that the Respondent is using the domain name in such
a manner. The Respondent registered a domain name that is identical to the name
of a magazine. The magazine is distributed by a company whose name comprises
the distinct parts of the magazine and disputed domain name, originating from
its famous founder, Martha Stewart. The Respondent must have been familiar with
these facts when the domain name was registered.
The domain name is currently used for attracting Internet traffic to the website
for again diverting the users to sites offering various goods and services.
The Panel finds that this is done by intentionally confusing the users as to
the source, sponsorship, affiliation or endorsement of the website, as most
users will be familiar with Martha Stewart and the Complainant’s business, and
probably will believe the site is owned by the Complainant. Some of the goods
and services offered originate from the Complainant, but most of what is offered
does not. The Respondent is capitalizing on this confusion, something that in
previous panel decisions under the Policy has been considered evidence of bad
faith, see WIPO Case No. D2000-0326.
The Respondent is thus also making profit by exploiting the Complainant’s goodwill
as a widely known provider of goods and services, something that also is evidence
of use in bad faith, see WIPO Case No. D2000-0654.
Finally, the question of use of a domain name in bad faith is especially clear
if the site contains links to websites belonging to competitors of the Complainant,
see WIPO Case No. D2002-0835. In this
case the website for example contains links to magazines like "Better Homes
and Gardens" and "Country Homes," which are in direct competition
to the Complainant’s products.
Hence, the Panel finds that the domain name is registered and used in bad faith
by the Respondent, and the condition in the Policy, paragraph 4(a)(iii) is fulfilled.
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, <marthastewartkids.com>,
be transferred to the Complainant.
Peter G. Nitter
Date: January 23, 2004