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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Reed Elsevier Properties, Inc., Reed Elsevier, Inc. v. Titan Net a.k.a. Kentech, Inc.

Case No. D2006-1298

 

1. The Parties

The Complainants are Reed Elsevier Properties, Inc., of Wilmington, Delaware, United States of America, and Reed Elsevier, Inc., of Newton, Massachusetts, United States of America, represented by Fulbright & Jaworski, LLP, United States of America.

The Respondent is Titan Net a.k.a. Kentech, Inc., of Eldoret, Kenya.

 

2. The Domain Names and Registrars

The disputed domain name <martindalehubbel.org> is registered with Intercosmos Media Group Inc. d/b/a directNIC.com.

The disputed domain names <dailyvariety.org> and <varietymagazine.org> are registered with Domain Contender, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2006. On October 9, 2006, the Center transmitted by email to Domain Contender, LLC and Intercosmos Media Group Inc. d/b/a directNIC.com a request for registrar verification in connection with the domain names at issue. On October 10, 2006, Intercosmos Media Group Inc. d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the domain name <martindalehubbel.org> and providing the contact details for the administrative, billing, and technical contact. On October 10, 2006, Domain Contender, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the domain names <dailyvariety.org> and <varietymagazine.org> 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 October 31, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 24, 2006.

The Center appointed Brigitte Joppich as the sole panelist in this matter on December 5, 2006. 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

A. The Complainant

Reed Elsevier Properties Inc., owner of the MARTINDALE-HUBBELL and VARIETY marks, and Reed Elsevier Inc., licensee of the marks, will collectively be referred to as “the Complainant” hereinafter.

The Complainant, through one of its operating divisions, Martindale-Hubbell, is in the business of providing information and directory services in the fields of law and business under the marks MARTINDALE.COM (Reg. No. 2,796,593, registered on December 23, 2003), MARTINDALE-HUBBELL DISPUTE RESOLUTION DIRECTORY (Reg. No. 2,724,776, registered on June 10, 2003), MARTINDALE-HUBBELL (Reg. No. 2,057,030, registered on April 29, 1997), MARTINDALE-HUBBELL (Reg. No. 1,542,506, registered on June 6, 1989) and MARTINDALE-HUBBELL LAWYERS.COM (Reg. No. 2,989,601, registered on August 30, 2005) which are all registered with the United States Patent and Trademark Office (“USPTO”). Through Martindale-Hubbell and its predecessors in interest, the Complainant has offered printed information and directory services under the MARTINDALE mark since as early as 1868 and under the MARTINDALE-HUBBELL mark since as early as 1931. The Complainant asserts that its USPTO registration number 1,542,506 for the MARTINDALE-HUBBELL mark is now incontestable under U.S. Trademark Law 15 U.S.C. § 1065. The Complainant also maintains a sizeable presence on the Internet through its MARTINDALE.COM related websites, which result in over 15 million hits per month. As a result of the Complainant’s extensive marketing efforts, the MARTINDALE products, marks, and domain names have become recognized by consumers throughout the world as designating the Complainant as the source of the products.

The Complainant is further in the business of publishing magazines, newsletters and online materials relating to the entertainment industry, including the television, film and movie sectors. The Complainant holds rights in the trademarks VARIETY (Reg. No. 1,350,618, registered on July 23, 1985), DAILY VARIETY & Design (Reg. No. 1,640,471, registered on April 9, 1991), VARIETY (Reg. No. 2,113,971, registered on November 18, 1997), VARIETY (Reg. No. 2,299,316, registered on December 14, 1999), VARIETY.COM (Reg. No. 2,251,363, registered on June 8, 1999), VARIETY EXTRA (Reg. No. 2,398,913, registered on October 31, 2000), VARIETY (Stylized) (Reg. No. 2,295,074, registered on November 30, 1999), VARIETY (Reg. No. 2,417,890, registered on January 2, 2001), VARIETY (Stylized) (Reg. No. 2,476,922, registered on August 14, 2001) and VARIETY EXTRA (Reg. No. 2,444,331, registered on April 17, 2001) which are all registered with the USPTO. Through its licensees and predecessors, the Complainant has published the weekly entertainment magazine VARIETY since 1905 and the daily trade magazine DAILY VARIETY since 1933. The Complainant asserts that its USPTO registrations Nos. 1,350,618, 1,640,471, 2,113,971 and 2,251,363 are incontestable under U.S. Trademark Law 15 U.S.C. § 1065. The Complainant promotes all of its VARIETY magazines and publications under the domain names <variety.com> and <dailyvariety.com> (collectively the “VARIETY Domain Names”). The website accessible through “www.variety.com” is listed among the top five most frequently visited sites among magazines and e-zines. By virtue of the Complainant’s extensive marketing of its VARIETY and DAILY VARIETY publications, the Complainant’s VARIETY marks and domain names have become recognized by consumers throughout the world as designating the Complainant as the source of the products so marked.

The domain name <martindalehubbel.org> was registered on January 11, 2006, the domain names <varietymagazine.org> and <dailyvariety.org> were registered on February 4, 2006 and February 6, 2006, respectively.

 

5. Parties’ Contentions

A. Complainant

In terms of the identity of the Respondent, the Complainant contends that Kentech Inc. is the same as Titan Net and that the Respondent, under a variety of aliases, has a history of registering trademark-related domain names which have been the subject of a number of UDRP decisions. This contention is based on the fact that the administrative and technical contact information for Titan Net and Kentech, Inc. on the Whois records for the disputed domain names is virtually identical. The Complainant relies on numerous UDRP cases in support of this allegation, namely Dr. Ing. h.c. F. Porsche AG v. Kentech, Inc. a.k.a. Helois Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc., WIPO Case No. D2005-0890boxter-club.com et al, Boardroom Inc. v. Titan Net, WIPO Case No. D2006-0481bottomlinepersonal.org, Societe des Hotels Meridien v. Spiral Matrix/Kentech Inc., WIPO Case No. D2005-1196boraboralemeridien.com et al and Warna Co Inc., Warnaco U.S., Inc., Ocean Pacific Apparel Corp. v. Kentech, Inc.,/Titan Net, WIPO Case No. D2006-0391nancyganz.org et al.

The Complainant contends that each of the three elements specified in the Policy, paragraph 4(a), are given in the present case:

(i) The Complainant contends that the domain names are confusingly similar to the Complainant’s MARTINDALE-HUBBELL and VARIETY trademarks. With regard to the domain name <martindalehubbel.org> the Complainant contends that the domain name consists of a common misspelling of the Complainant’s MARTINDALE-HUBBELL mark and that such a minor variation, which remains visually and phonetically similar to the Complainants’ mark, is not an alteration that prevents a finding of confusing similarity under the Policy. Furthermore, the Complainant contends that the domain name <dailyvariety.org> is identical to the Complainant’s trademark DAILY VARIETY and that the domain name <varietymagazine.com> is comprised of the Complainant’s VARIETY mark plus the generic term “magazine” and that it is well settled under UDRP law that the incorporation of a well-known trademark into a domain name together with a generic term satisfies the requirements of the Policy, paragraph 4(a)(i).

(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name for the following reasons: The Respondent has registered domain names identical or confusingly similar to the Complainant’s well known trademarks; the Respondent is not a licensee of Reed Elsevier nor is the Respondent otherwise authorized to use Reed Elsevier’s MARTINDALE-HUBBELL or VARIETY marks for any purpose; the Respondent is not commonly known either as “martindalehubbel.org”, “dailyvariety.org” or “varietymagazine.org”; the Respondent is using the domain names to redirect Internet users to revenue-generating websites featuring links to, among others, various commercial websites offering products and services that are generally related to the kind of products and services offered by the Complainant through their respective marks, which is neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use of the domain names.

(iii) The Complainant contends that the domain names were registered in bad faith since the Respondent had knowledge of the Complainant’s well-known and highly distinctive marks at the time of the registration. The Complainant contends that the bad faith registration is indicated by the fact that the Respondent has registered all three of the infringing domain names, which are virtually identical to the Complainant’s trademarks. Furthermore, the Complainant contends that the domain names are also being used in bad faith because the Respondent is using the domain names to attract Internet consumers to websites containing links to third parties sites for the purpose of generating click-through-revenues from such links and thus attempts (for commercial purposes) to attract Internet users to its websites by creating a likelihood of confusion with the Complainant’s well-known marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites and of the products or services posted on or linked to the Respondent’s websites. Furthermore, the Complainant contends that the Respondent is acting in bad faith as it has a history of registering domain names incorporating the marks of third parties, and has therefore also registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name and has engaged in a pattern of such conduct. Finally, the Complainant contends that the Respondent’s bad faith is proven by the fact that the Respondent failed to respond to the Complainant’s cease and desist letters informing it of the Complainant’s registered trademarks and demanding that it permanently cease all use of the domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Under the Policy, paragraph 4(a), the Complainant must prove that each of the following three elements are present:

(i) the domain names are identical or confusingly similar to the Complainant’s trademarks, and

(ii) the Respondent has no rights or legitimate interests in respect of the domain names, and

(iii) the domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

To establish confusing similarity it is not required to establish that the registration and use of the domain name cause confusion as to the source, but whether the mark and the alphanumeric string constituting the domain name when directly compared are confusingly similar.

The elimination of the letter ‘l’ between “martindalehubbel” and “MARTINDALE-HUBBELL” does not significantly affect the visual impression made by the domain name as compared with the mark, and does not affect the pronunciation of the domain name as compared with the mark at all. The Panel therefore concludes that the domain name <martindalehubbel.org> is confusingly similar to a trademark in which the Complainant has prior exclusive rights as demonstrated by its trademark registration.

The domain name <dailyvariety.org> is identical to the word “DAILY VARIETY”, in which the Complainant has exclusive trademark rights.

The domain name <varietymagazine.org> is a composite of a complete and exact reproduction of the Complainant’s VARIETY mark and the word “magazine”, the very product promoted by the Complainant through the VARIETY mark. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of descriptive words (cf. Dr. Grandel GmbH v. Drg Randel Inc., WIPO Case No. D2005-0829 - drgrandel-online.com; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493 - 4microsoft2000.com; Reed Elsevier Properties Inc. v. David Allen, NAF Case No. FA96667 - varietymagazine.com and variety-magazine.com; Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. Ben Dover, NAF Case No. FA408246 - variety-magazine.com). The Panel therefore concludes that the domain name <varietymagazine.org> is confusingly similar to a trademark in which the Complainant has prior exclusive rights as demonstrated by its trademark registration.

Furthermore, it is also well established that the specific top level domain is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the Complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 - magnumpiering.com et al; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 - rollerblade.net).

Therefore the Panel finds that the Complainant has satisfied the requirements of the Policy, paragraph 4(a)(i), with regard to all three domain names.

B. Rights or Legitimate Interests

The Policy, paragraph 4(c), sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of the Policy, paragraph 4(a)(ii), i.e.

(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the service marks at issue.

The Complainant asserts that the Respondent has neither a license nor any other permission to use the Complainant’s trademarks. The Respondent does not deny these assertions. The Panel thus finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain names which wholly incorporate the Complainant’s marks.

The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain names.

The Respondent’s use of the domain names in order to redirect Internet users to websites apparently for the purpose of earning click-through-revenues from third parties’ ads and thus capitalizing on the Complainant’s marks is not a bona fide use pursuant to paragraph 4(c)(i) of the Policy.

Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in any of the domain names and that the requirement of the Policy, paragraph 4(a)(ii), is also satisfied with regard to all three domain names.

C. Registered and Used in Bad Faith

The Complainant’s trademarks are long established and known all over the world. It is therefore unlikely that the Respondent registered the domain names unaware of the Complainant’s rights in its marks. Furthermore, the fact that the Respondent has registered several domain names including the Complainant’s trademarks reveals further evidence that the Respondent knew about the Complainant’s trademarks when it registered the domain names.

This fact and the nature of the websites maintained by the Respondent make it clear that their purpose is to divert traffic intended for the Complainant’s site to its own, and thus to capitalize on the Complainant’s trademarks.

This qualifies as bad faith under the Policy, paragraph 4(b)(iv), in that the Respondent’s use of the domain names attempts to attract for apparent commercial gain Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or location or of a product or service on the Respondent’s websites.

Moreover, the Respondent has a history of registering domain names incorporating the marks of third parties. Accordingly, the Panel finds that the Respondent is acting in bad faith as it has likely registered the domain names in order to prevent the Complainant from reflecting its marks in corresponding domain names and has engaged in a pattern of such conduct. This qualifies as bad faith under the Policy, paragraph 4(b)(ii).

The Panel therefore concludes that the Respondent registered and is using the domain names <martindalehubbel.org>, <dailyvariety.org> and <varietymagazine.org> in bad faith and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied with regard to all three domain names.

 

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 names <martindalehubbel.org>, <dailyvariety.org> and <varietymagazine.org> be transferred to the Complainant.


Brigitte Joppich
Sole Panelist

Dated: December 31, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-1298.html

 

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