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and Mediation Center
ADMINISTRATIVE PANEL DECISION
McMullen Argus Publishing Inc. v. Moniker Privacy Services / Traverito Traverito
Case No. D2007-0680
1. The Parties
The Complainant is McMullen Argus Publishing Inc. of California in the United States of America, represented by Donovan & Yee, LLP, United States of America.
The Respondents to the Complaint are Moniker Privacy Services, Pompano Beach, Florida in the United States of America and Traverito Traverito of Barcelona in Spain.
2. The Domain Name and Registrar
The disputed domain name <streetchopper.com> (the “Domain Name”) is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2007, naming the then listed registrant of the Domain Name, Moniker Privacy Services. On May 10, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On May 16, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response providing the name of the apparent underlying/beneficial registrant as Traverito Traverito and providing the contact details. In response to a notification of change in registrant information by the Center, the Complainant filed an amendment to the Complaint on May 22, 2007. The Center verified that the Complaint together with the amendment to 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 Respondents of the Complaint, and the proceedings commenced on May 31, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2007. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on June 25, 2007.
The Center appointed William P. Knight as the sole panelist in this matter on July 16, 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.
In accordance with the Rules, paragraph 12, on August 31, 2007, the Panel issued Procedural Order No. 1 noting that the Complainant provided little determinative supporting evidence for its assertion of its ownership of worldwide reputation in respect of the trademark STREET CHOPPER and for its assertion that that the Domain Name was registered in bad faith. The Order extended an opportunity to the Complainant to file such evidence in support of its Complaint no later than August 14, 2007 and to the Respondents to file their response no later than August 28, 2007. At the same time, in accordance with the Rules, paragraph 10(c), the due date for Decision in this matter was extended to August 30, 2007.
On August 15, 2007, the Center received from the Complainant a Declaration of the publisher of the Streetchopper magazine in support of the Complainant in its Complaint. On August 16, 2007, the Center transmitted the Declaration to the Respondents. The Respondents have not submitted any response.
4. Factual Background
The Domain Name was registered on May 4, 2002.
The Complainant filed for registration of the trademark STREET CHOPPER in the United States on October 9, 2002 and secured USPTO registration 2,829,895 on April 6, 2004.
The attorneys for the Complainant wrote to Moniker Privacy Services by letters dated February 5, 2007 and March 7, 2007, on each occasion stating that they acted for PRIMEDIA Specialty Group Inc and its related companies, which they stated were the publishers of the “Street Chopper” Magazine.
The Domain Name is not being used at all, other than as a “portal site” or “landing page” with links to various other links relating to motorcycles (including the “Street Chopper” magazine offered by third party resellers).
5. Parties’ Contentions
The Complaint states that the Complainant has published a magazine about motor cycles called “Street Chopper” in the United States of America, Canada “and several other countries” since “at least as early as 1969” or “over 30 years”. This magazine is said to have had in 2004 a large circulation and larger readership.
In accordance with paragraph 4(a) of the Policy, the Complainant asserts, inter alia, as follows:
(i) that the Domain Name is confusingly similar to the name of the magazine published by the Complainant and to its registered trademark; and
(ii) that the Respondents have no rights nor any legitimate interests in respect of the Domain Name.
The Complainant’s assertions in respect of (i) and (ii) are supported, in short, by the obvious similarity between the Domain Name and the name of the magazine published by the Complainant and to its registered trademark and by the fact that the Complainant asserts that it has given no permission to the Respondents to use the Domain Name.
The Complainant argues that the Domain Name is being maintained in bad faith. In support of this contention, the Complainant asserts that use in bad faith is evidenced by the fact that the only apparent purpose and use of the Domain Name is to redirect Internet users to the products and services of suppliers other than the Complainant, although including resellers of the “Street Chopper” magazine, presumably in consideration of click-through fees.
In addition, the Complainant contends that the Respondents must have been aware of the Complainant’s rights in the STREET CHOPPER mark when registering the Domain Name because of their present use, referred to above, and because of the Complainant’s long use of the trademark. However, there is no evidence provided that the Respondents were the original registrants, or may have acquired the Domain Name only after the STREET CHOPPER mark was registered, a matter of significance in this case where the Domain Name was registered prior to the registration of the Complainant’s trademark in the United States of America.
Finally, the Complainant asserts that bad faith is established by a statement on the WHOIS record of the registrar “This name may be for sale – Make an unsolicited offer” and that the address and telephone contact details provided by Traverito Traverito appear to be false – although there is no suggestion that the address and contact details for Moniker Privacy Services is incorrect.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy.
However, the Respondents have had ample opportunity to respond to the allegations of the Complainant and have not done so. The Respondents cannot be in a better position by failing to respond than if the Respondents had chosen to take advantage of the opportunities afforded to them, expressly, by paragraph 4(c) of the Policy.
Paragraph 15(a) of the Rules instructs the Panel to decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. In the absence of any response from the Respondents, the onus upon the Complainant will be satisfied if a conclusion which is capable of being drawn from the evidence provided by the Complainant is not contradicted by the Respondents.
On the other hand, the Respondents’ default should not be regarded as a verification of every unsupported assertion in the Complaint resulting in an automatic decision in favor of the Complainant. Paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order for its Complaint to succeed.
A. Identical or Confusingly Similar
The Complainant is the owner of the STREET CHOPPER trademark registered in the United States of America, the application for which having been filed on October 9, 2002.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark STREET CHOPPER and, accordingly, paragraph 4(a)(i) of the Policy is satisfied in this case.
B. Rights or Legitimate Interests
The Respondents were entitled, and had every opportunity, to demonstrate some right or legitimate interest with respect to the Domain Name, and paragraph 4(c) of the Policy gives good examples of how the Respondents could have done so. The Respondents have given no explanation.
No apparent effort has been made by the Respondents to use the Domain Name for any legitimate purpose. The Respondents appear to use the Domain Name solely for the purpose of posting sponsored links one of which refers to “Street Chopper Magazine”, and to other apparently motor-cycle related products and suppliers. So far as can be seen from the Respondents’ website, they do not use the business name “Street Chopper” or otherwise use a mark including the words of the Domain Name.
The Panel, therefore, agrees with the Complainant’s submission that the Respondents do not have any rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy directs that the Complainant must establish that the Domain Name has been registered and is being used in bad faith.
As mentioned above, in its Complaint, the Complainant asserted that it has published a magazine about motor cycles called “Street Chopper” in the United States of America, Canada “and several other countries” since “at least as early as 1969” or “over 30 years”. This magazine is said to have had in 2004 a large circulation and larger readership. However, no evidence in support of these contentions was provided with the Complaint.
The Complainant provides in further support of its contentions details concerning a website at “http://www.streetchopperweb.com”. This is a domain name that expresses itself to be operated by Primedia Inc. of a different address from that of the Complainant in California.
As a result of the fact that the Complainant made assertions but omitted supporting evidence, the Panel determined that it should give the Complainant an opportunity to provide such evidence, and so issued Panel Order No. 1 in these proceedings. As a result, the Complainant has lodged the Declaration of a person describing himself as “the publisher of the Streetchopper magazine” made on August 14, 2007.
In his Declaration, the publisher states that he has held this position since January 2006. He repeats the assertion that the magazine STREET CHOPPER was first published in 1969 and that it is the Complainant which has been publishing the magazine “for over three decades”. The publisher does not appear to be making these statements from personal knowledge, but from undisclosed sources. In support of this assertion, he provides a document filed in the United States Patent and Trademark Office which again makes an unsupported assertion of use since 1969.
Furthermore, the publisher states that the Complainant was a subsidiary of “the Primedia corporate entities, but on August 1, 2007, Primedia completed the sale of all the stock of [the Complainant] to Source Interlink Companies, Inc.”
The Panel cannot find that the Complainant has or had any reputation in the STREET CHOPPER trademark before October 9, 2002 or outside the United States of America in the absence of objective evidence in support of this contention. As the learned Panelist in Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan,
WIPO Case No. D2004-0383 stated:
“Panelists’ inferring factual or legal conclusions from complainants’ unsupported allegations coupled with no response are occasionally necessary (and appropriate), because matters involving a respondent’s motive, intent, purpose, and other subjective factors determinative under Paragraphs 4(a)(ii) and 4(a)(iii) will not always be susceptible of direct proof, at least without the discovery and cross-examination that are unavailable to a complainant or a panelist in proceedings under the Policy. A complainant must often prove such matters with a prima facie showing that, when unchallenged, a panelist can accept.”
“In contrast, renown or goodwill of a mark is an objective matter entirely within the knowledge of and documentation available to a complainant. Every plaintiff in an infringement action must prove as an affirmative aspect of his case that his mark has commercial recognition at the date of infringement; a complainant under the Policy must do so to show that the domain name was registered in bad faith. … In these circumstances no favorable inference is justified from a naked allegation of a legal conclusion, even in the absence of a denial from Respondent.”
Furthermore, in this case, the evidence of the Complainant itself is confusing, suggesting that the reputation required to bring a Complaint based upon unregistered rights may belong to another company or other companies. The evidence is internally inconsistent as to who has published the Streetchopper magazine and why any goodwill acquired now has vested in the Complainant.
All the evidence does show is that the Complainant is the owner of the STREET CHOPPER trademark, at least in the United States of America and at least since the date of filing of its trademark application on October 9, 2002.
Since, therefore, the evidence of the Complainant only establishes that the Domain Name was registered on May 4, 2002 whilst the Complainant applied for its trademark with the USPTO on October 9, 2002 and because the Complainant chose not to support its allegations of longstanding prior reputation in any way, it fell to the Complainant to provide some further evidence to establish that registration was in bad faith. However:
(a) no evidence was provided that either of the current Respondents were the original registrants of the Domain Name nor to support a finding that the Domain Name was acquired by the Respondents or either of them after, and therefore possibly with the knowledge of, the Complainant’s proved first use of its trademark rights;
(b) no evidence was provided that either of the Respondents clearly registered the Domain Name to take advantage of confusion between the Domain Name and any rights of the Complainant then known or foreseeable at the date of registration by whomever registered the Domain Name. See for example ExecuJet Holdings Ltd. v. Air Alpha America, Inc.,
WIPO Case D2002-0669;
(c) no evidence was provided that the use of the Domain Name as at the date of or soon after its registration was the same as it is today, namely one referring to motorcycle products and services, or the magazine of the Complainant; and
(d) no other evidence was provided which might lead to the conclusion that the person or entity behind the 2002 registration of the Domain Name could or would have been aware of the magazine and website of the Complainant or its related entity/ies.
Based on the foregoing this Panel is unable on balance on the evidence provided in these proceedings to form a conclusion that the Respondents registered the Domain Name in bad faith, in the sense required by the Policy. Were it necessary to decide, the Panel would readily agree with the contentions of the Complainant regarding the Respondents’ current use of the Domain Name, although not based upon the ambivalent statement appearing on the WHOIS record of the registrar but rather on the actual evidence of use provided by the Complainant.
For all the foregoing reasons, the Complaint is denied.
William P. Knight
Dated: August 30, 2007