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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Martha Stewart Living Omnimedia, Inc. v. Domain Deals
Case No. D2007-0289
1. The Parties
Complainant is Martha Stewart Living Omnimedia, Inc., New York, New York, United States of America, represented by John R. Cuti, United States of America.
Respondent is Domain Deals, West Orange, New Jersey, United States of America.
2. The Domain Name and Registrar
The disputed domain name <marthastewartshow.com> (the “Domain Name”)
is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2007. On March 1, 2007, the Center transmitted by email to eNom Inc. a request for registrar verification in connection with the Domain Name. On that same day, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing contact details. 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 Respondent of the Complaint, and the proceedings commenced on March 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 29, 2007.
The Center appointed Harrie R. Samaras as the sole
panelist in this matter on April 18, 2007. 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 describes itself as an integrated content company offering products and services in a variety of fields ranging from furniture to flowers. It is a publicly traded United States of America company with approximately 650 employees. Complainant promotes its products and services under the MARTHA STEWART and MARTHA brands, which refer to the name of Complainant’s founder, Martha Stewart. The MARTHA and MARTHA STEWART brands have become synonymous to consumers and the general public with high quality.
Complainant is divided into four business segments – Internet/Direct Commerce, Broadcasting, Publishing and Merchandising. Complainant’s internet/direct commerce segment includes the “www.marthastewart.com” web site, which offers content on topics such as crafts, cooking, entertaining, gardening, holidays, decorating and home keeping; its direct-to-consumer flower business at “www.marthasflowers.com”; and an online store at “www.marthastewartstore.com”.
The broadcasting segment of Complainant’s business features the Emmy Award-winning television show Martha Stewart Living, Martha, the nationally-syndicated daily lifestyle series hosted by Martha Stewart, and the Martha Stewart Living Radio channel on SIRIUS Satellite Radio. Complainant’s television programs are broadcast in the United States of America, Canada and Australia, among other countries.
Complainant’s publishing division encompasses magazines, books and syndicated newspaper columns, including Complainant’s award winning Martha Stewart Living and Martha Stewart Weddings magazines. Complainant’s book library comprises more than 50 titles, consisting either of Martha Stewart Living books or books authored by Martha Stewart. The merchandising division offers an expanding array of products for the home at multiple price points under MARTHA STEWART-related trademarks. For example, mass market products are sold as part of the MARTHA STEWART EVERYDAY collection, while high-end specialty products, including furniture and tableware, are sold through the Martha Stewart Signature and Martha Stewart Collection lines.
Complainant has exclusive rights in the marks MARTHA and MARTHA STEWART, as well as variations thereof, including MARTHASTEWART.COM, MARTHA STEWART EVERYDAY, MARTHA STEWART LIVING, MARTHA STEWART SIGNATURE, FROM MARTHA’S HOME, ASK MARTHA and MARTHA’S FLOWERS, among others (the MARTHA and MARTHA STEWART marks and variations thereof are collectively referred to herein as the “Marks”). The Marks have been used continuously in commerce since at least as early as 1989. Complainant has established a family of marks that incorporate the terms MARTHA and MARTHA STEWART or close variations thereof, which are used in connection with a wide variety of goods and services.
The Marks have been and are used in numerous countries by and on behalf of Complainant. Further, Complainant owns trademark applications and registrations for the Marks in several countries, including the United States of America, Australia, Brazil, Canada, China, the countries of the European Union, Hong Kong SAR of China, Japan, Mexico, New Zealand, Norway, Peru and Taiwan Province of China. Among these various registrations and applications is Complainant’s U.S. Reg. No. 1947885 for the mark MARTHA STEWART LIVING for “entertainment services in the nature of television programs,” with a date of first use of September 19, 1993; U.S. Reg. No. 2339976 for the mark MARTHA STEWART LIVING and Design for “entertainment services in the nature of television programs,” with a date of first use of September 1993; and U.S. Reg. No. 3156889 for the mark MARTHA for “entertainment services in the nature of an on-going television program,” with a date of first use of September 12, 2005.
In addition to Complainant’s various trademark applications and registrations for the Marks, Complainant is the owner of various domain names incorporating the Marks, through which it offers various goods and services under the Marks. Such domain names include <marthastewart.com> and <marthasflowers.com>.
Complainant and its products and services offered
under the Marks have been the recipients of extensive media coverage throughout
the world. For example, complainant has been covered in such publications as
The New York Times, Business Week, Japan Today, Salon.com, Forbes, The Street.com,
and the BBC News.
5. Parties’ Contentions
1. Identical or Confusingly Similar
Complainant contends that it is the owner of the Marks, including U.S. trademark registrations for the mark MARTHA and MARTHA STEWART LIVING for television shows and the mark MARTHASTEWART.COM for on-line retail and information services. The Domain Name <marthastewartshow.com,> is based upon and wholly incorporates Complainant’s MARTHA and MARTHASTEWART.COM marks and the name MARTHA STEWART. The Domain Name is thus confusingly similar to Complainant’s Marks. The addition of the “.com” suffix does not serve to distinguish the Domain Name from the Marks.
In addition, Complainant contends that the Domain Name is confusingly similar to Complainant’s MARTHASTEWART.COM mark and the Marks owned by Complainant, including the marks MARTHA, MARTHA STEWART LIVING, MARTHA STEWART EVERYDAY and others, because it takes a dominant portion of such marks, namely the words “Martha” or “Martha Stewart,” and merely adds the generic word “show.” The addition of a common, generic word such as “show” does not lessen the extent to which the Domain Name is confusingly similar to Complainant’s trademarks.
Additionally, Complainant contends that given that one of Complainant’s primary business properties is the nationally syndicated television show “Martha,” the Domain Name is likely to cause confusion or to deceive others by implying that Complainant is affiliated with the web site operated by Respondent under the Domain Name.
2. Legitimate Rights or Interests
Complainant contends that the Marks have been continuously used in commerce since at least as early as 1989. At no time has Complainant ever authorized or otherwise consented to Respondent’s use of the Domain Name or any variation thereof. Respondent is not engaged in any legitimate use of the Domain Name as contemplated by paragraph 4 (c) of the Policy. The Domain Name was not used in connection with a bona fide offering of goods or services by Respondent.
Complainant contends that Respondent does not maintain a legitimate web site at the Domain Name. Instead, Respondent appears to offer a web site at the Domain Name that is in fact a “parking” site run by Parkingspa.com. The site offers nothing more than a collection of links for a wide range of goods and services. Although the primary focus of the links seems to be home decorating and related goods and services, they are offered by on-line retailers and under brands that are not affiliated in any way with Complainant. In fact, numerous links are associated with vendors that sell products that directly compete with those sold under the Marks – for example, there are links to web sites operated by Pottery Barn, Ballard Designs, J.C. Penney and Croscill, each of which sells housewares, linens and/or furniture that compete with Complainant’s products. Some of the links are for goods and services that are completely unrelated to those offered by Complainant – airline tickets and used cars, for example – thus wrongly associating Complainant with markets in which it has no expertise. That the Domain Name includes links to Complainant’s competitors heightens the presumption that such use of the Domain Name is not a bona fide offering of goods or services.
Complainant contends that Respondent has not commonly been known by the Domain Name or any variation thereof prior to Respondent’s registration of the Domain Name. Respondent’s use of the web site located at the Domain Name to generate ad revenue by linking consumers to Complainant’s competitors demonstrates that Respondent is not making any legitimate noncommercial or fair use of the domain name.
3. Registered and Used in Bad Faith
Complainant contends that the Domain Name was registered and created on December 8, 2004. Complainant’s Marks have continuously been used in commerce since at least as early as 1989, fifteen years before Respondent’s registration of the Domain Name. Further, the Marks have received extensive unsolicited media attention, having been prominently featured in numerous publications with local, national and international audiences including, for example, The New York Times and Business Week. Indeed, as of the time Respondent registered the Domain Name, the Marks were well-known.
Complainant contends that the evidence of Respondent’s bad faith use and registration of the Domain Name includes the fact that Respondent registered the Domain Name with actual and constructive knowledge of the proprietary and famous nature of the Marks, without any legitimate rights or interests in the Domain Name. Here, Respondent cannot credibly claim to have been unaware of the Marks, which have been used in connection with extensive commercial activities worldwide for many years.
Finally, Complainant contends that although Respondent registered the Domain Name more than two years ago, Respondent has merely parked it with Parkingspa.com in an effort to generate revenue from consumers who mistakenly visit the site, and in such time has not made any legitimate commercial use of the Domain Name. Respondent’s failure to use, or to even make preparations to use, the Domain Name in connection with the offering of a legitimate web site after more than two years constitutes strong evidence of bad faith registration and use.
Respondent having been duly notified of the Complaint
and these proceedings, did not reply to Complainant’s contentions or take
any part in the proceedings.
6. Discussion and Findings
Where a party fails to
present evidence in its control, the panel may draw adverse inferences regarding
those facts. 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). Insofar as Respondent has defaulted,
it is therefore appropriate to accept the facts asserted by Complainant and
to draw adverse inferences of fact against Respondent. Nonetheless, Paragraph
4(a) of the Policy requires that the Complainant must prove each of the following
three elements to obtain an order that a domain name should be cancelled or
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is uncontested that Complainant has established rights in its Marks and domain names.
Furthermore, the Panel finds that the Domain Name is confusingly similar to
the Marks because the Domain Name uses the dominant portion of the Marks, namely
the words “Martha” or “Martha Stewart,” and merely adds
the generic word “show.” The addition of a common, generic word
such as “show” does not lessen the extent to which the Domain Name
is confusingly similar to Complainant’s Marks. See, e.g., Martha Stewart
Living Omnimedia, Inc. v. Josh Gorton, WIPO
Case No. D2005-1109 (December 13, 2005) (finding that the domain names <marthastewartfoundation.com>
and <marthastewartfoundation.org> were confusingly similar to the mark
MARTHA STEWART); Martha Stewart Living Omnimedia, Inc. v. XC2, WIPO
Case No. D2003-0944 (January 23, 2004) (finding that the addition of the
generic word “kids” does not prevent the domain name from being
confusingly similar to complainant’s mark). Moreover, given the fact that
one aspect of Complainant’s businesses is the nationally syndicated television
show “Martha,” the use of “show” in the Domain Name
is more likely to exacerbate confusion than to avoid it. Dolce International
Holdings, Inc. v. Dolce Hotels, WIPO Case
No. D2005-0269 (June 21, 2005).
Lastly, it is well settled that the use of lower case letter format and the
addition of the gTLD “.net” or “.org” are not significant
in determining whether a domain name is identical or confusingly similar to
a trademark. CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO
Case No. D2000-0834 (September 4, 2000); Blue Sky Software Corp. v. Digital
Sierra Inc., WIPO Case No. D2000-0165
(April 27, 2000).
The Panel therefore holds that Complainant has established element (i) above.
B. Rights or Legitimate Interests
It is uncontested that Complainant has not licensed
or otherwise authorized Respondent to use the Marks or any variations of them
for any purpose. Insofar as Complainant has made a prima facie showing
that Respondent lacks rights to the Domain Name (Spencer Douglass, MGA v.
Bail Yes Bonding, WIPO Case No. D2004-0261
(June 1, 2004)), this shifts the burden to Respondent to show by concrete evidence
that it has rights or legitimate interests in the Domain Name. See, e.g., Document
Technologies, Inc. v. International Electronic Communications, Inc., WIPO
Case No. D2000-0270 (June 6, 2000). Pursuant to paragraph 4(c) of the Policy,
Respondent may satisfy its burden by demonstrating any of the following:
(i) use 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 before any notice of the dispute; or
(ii) that it has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) that it was making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark.
Respondent has provided no evidence to carry its burden. For example, there is no evidence that Respondent has been commonly known by the Domain Name.
Furthermore, Respondent has not used the Domain name
in connection with a bona fide offering of goods or services. The web
site associated with the Domain Name offers a collection of links for a wide
range of goods and services, but the primary focus of the links by far is home
decorating and related goods and services (e.g., the first page of the web site
begins with “Home Decorating” in a prominent position and lists
as other pages “Home Decor Ideas”, “Home Decor Catalogs”,
“Decorative Paintings”, “Nautical Home Decor” and “Home
Decor Accessories”). In fact, many of the links are associated with vendors
that sell products which directly compete with those sold by Complainant under
the Marks, such as links to web sites operated by Pottery Barn, Ballard Designs,
J.C. Penney and Croscill. The fact that the web site associated with the Domain
Name includes links to Complainant’s competitors leads to the inference
that “Respondent was aware of Complainant’s well-known business
and its mark and intended to exploit the mark.” Edmunds.com, Inc. v.
Ult. Search, Inc., WIPO Case No. D2001-1319
(February 1, 2002). It is well-established that “use which intentionally
trades on the fame of another can not constitute a “bona fide” offering
of goods or services.” Madonna Ciccone, p/k/a Madonna v. Dan Parisi
and “Madonna.com,” WIPO Case
No. D2000-0847 (October 12, 2000). Furthermore,
the mere “parking” of a domain name does not constitute a bona
fide offering of goods or services under Paragraph 4(c)(i) of the Policy.
See, e.g., Prada S.A. v. Mr. Chuan Sheng Wang, WIPO
Case No. D2003-0758; Hewlett-Packard Company v. Alvaro Collazo, FA0302000144628
(Nat. Arb. Forum March 5, 2003).
Likewise, Respondent is not making any legitimate noncommercial or fair use of the Domain Name without intent for commercial gain. Respondent’s use of the web site located at the Domain Name to generate ad revenue by linking consumers to Complainant’s competitors demonstrates that commercial use.
The Panel therefore holds that Complainant has established element (ii) above.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states nonexclusive circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
It is uncontested that the Domain Name was registered and created on December 8, 2004.
It is also uncontested that Complainant has continuously used the Marks in commerce
since at least as early as 1989, in addition to having trademark registrations
incorporating the Marks. Complainant’s use of the Marks began at least
fifteen years before Respondent registered the Domain Name. Based on this evidence
the Panel concludes that Respondent adopted, registered and has continued to
use the Domain Name in bad faith. See Kohler Co. v. Chris Friedland d/b/a
Faucet Direct Inc., FA 0207000115043 (Nat. Arb. Forum August 8, 2002); see
also Exxon Mobil Corp. v. fisher, WIPO
Case No. D2000-1412 (December 18, 2000) (respondent had actual and constructive
knowledge of EXXON mark given its world-wide prominence and thus respondent
registered the domain name in bad faith).
Respondent’s bad faith is further supported by the fact that the web
site associated with the Domain Name is parked with a service that provides
consumers with links to Complainant’s competitors. See Edmunds.com,
inc. v. Ult. Search, Inc., WIPO Case No.
D2001-1319 (February 1, 2002); V&S Vin & Spirit v. Young Nah,
WIPO Case No. D2004-0961 (December 31,
2004) (“The domain name is hosted by a company called TrafficZ.com, which
is dedicated to generating revenue from parked domains while providing accurate
metrics of each domain. It certainly must be the purpose of the Respondent to
intentionally trade off of the Complainant’s considerable good will and
value in the mark ABSOLUT and to divert traffic intended for the Complainant.”).
Although Respondent registered the Domain Name more than two years ago, Respondent
has merely parked it with Parkingspa.com in an effort to generate revenue from
consumers who mistakenly visit the site, rather than making any legitimate commercial
use of the Domain Name. Respondent’s failure to use, or even to make preparations
to use, the Domain Name in connection with the offering of a legitimate web
site after more than two years constitutes evidence of bad faith registration
and use. See Kate Spade, LLC v. Darmstadter Designs, WIPO
Case No. D2001-1384 (January 3, 2002) (“While a registrant should
be given sufficient time to make preparations to use the registered name, the
failure to make such preparations in almost three years since the registration
of the domain name at issue has been held to constitute bad faith registration
and use.”); Chernow Communications v. Jonathan D. Kimball, WIPO
Case No. D2000-0119 (May 18, 2000) (“It has been held that failure
to make a bona fide use of a domain name during a two-year period following
registration constitutes bad faith. The majority believes this reasoning is
sound. A registrant should be given sufficient time to make preparations to
use the registered domain name, but the ‘parking’ of a domain name
is evidence of bad faith registration and use.”).
The Panel therefore holds that Complainant has established element (iii) above.
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 <marthastewartshow.com> be transferred to the Complainant.
Harrie R. Samaras
Dated: May 2, 2007