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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

McMullen Argus Publishing Inc. v. Bret S. Chrismer

Case No. D2007-0703

1. The Parties

The Complainant is McMullen Argus Publishing Inc., a corporation with offices in New York, New York, United States of America, represented by Donovan & Yee, LLP, United States of America.

The Respondent is Bret S. Chrismer, an individual with an address in Springfield, Missouri, United States of America, represented by The Neil Smith Law Firm, LLC, United States of America.

2. The Domain Names and Registrars

The disputed domain names <streetrodder.com> and <streetrodder.net> are registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on May 11, 2007. On May 15, 2007, the Center transmitted by email to Network Solutions a request for registrar verification for each of the domain names at issue. On the same day, Network Solutions, transmitted by email to the Center its verification response for each domain name. The response confirmed that Respondent is listed as the registrant, provided contact information for the administrative and technical contacts, and confirmed several details of the applicable registration agreements. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“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 May 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 10, 2007. The Response was filed with the Center on June 11, 2007.¹

The Center appointed Debra J. Stanek as the sole panelist in this matter on June 27, 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 has published a magazine entitled Street Rodder, in the United States and elsewhere for over thirty years. Complainant owns a federal trademark registration for the word mark STREET RODDER for “periodicals, namely a magazine about automobiles”, issued in 1992.

Complainant also operates an internet website under the <streetrodderweb.com> domain name to promote its STREET RODDER publication.

The disputed domain names were registered in 1997. The web page for each of the disputed domain names presents information about automobiles under the heading “The StreetRodder Network” and contains the following disclaimer:

The StreetRodder Network is in no way, shape or form, related to or owned by, Street Rodder Magazine, Primedia, or K-iII Communications Corp.”

Complainant objected to Respondent’s use of the <streetrodder.com> domain name in July 23, 1999 letter and again in a letter dated February 5, 2007. Both letters demand that Respondent cease all use of the <streetrodder.com> domain name and transfer it to Complainant.

5. Parties’ Contentions

A. Complainant

Complainant makes the following contentions:

- Complainant first used the mark STREET RODDER for its magazine in 1972. The magazine focuses on automobiles produced before 1949. Since that time, the mark, as applied to the magazine, has become well known and Complainant has established good will in its mark. The STREET RODDER mark has acquired secondary meaning and is exclusively associated with Complainant and its goods.

- The disputed domain names are identical and confusingly similar to Complainant’s mark.

- Respondent has no rights or legitimate interests in either of the disputed domain names. Complainant has not authorized Respondent to use its mark. Neither of the disputed domain names is Respondent’s trade or company name. Respondent is not commonly known by either name, neither of which bears any relationship to any business of Respondent. Complainant was unable to locate an entity or business name registration for Respondent in the online records of the Missouri Secretary of State or in an online “Yellowpages” search.

The Respondent registered and is using the disputed domain names in bad faith because:

- Respondent registered the domain names long after Complainant established rights in its mark.

- Respondent’s use of the disputed domain names will cause confusion or will suggest some affiliation with Complainant. The websites to which the domain names devolve present information and links to automobile-related websites, including customized antique cars. Further, Respondent’s sites include a “magazine rack”, where Respondent can generate revenue when visitors subscribe to the offered publications.

- Respondent’s knowledge of Complainant’s rights in its STREET RODDER mark can be inferred by the fact that Complainant’s use predates Respondent’s registration of the domain names and is further evidenced by the fact that Respondent’s websites include a disclaimer of any affiliation with Complainant’s publication.

- Complainant asserts that it “is in the nature of magazine titles to give some indication of what is contained in the magazine”, but asserts that over time and with exclusive use those magazine titles can become very valuable trademarks.

- Respondent’s websites overlaps with Complainant’s publication and Complainant’s “www.streetrodderweb.com” site – by providing information and sources about antique automobiles and their customization and fabrication.

- The disputed domain names have disrupted Complainant’s business by tricking visitors who intend to visit Complainant’s website. Complainant also asserts that in response to its cease and desist letter, it engaged in communications with Respondent that resulted in “extreme and excessive” monetary demands of “somewhere between $600,000 and $700,000”.

B. Respondent

Respondent makes the following contentions:

Respondent concedes that disputed domain names are identical to Complainant’s mark.

Respondent has rights or legitimate interests in the domain name. He uses the domain names for the following bona fide activities: (1) hosting email addresses, (2) hosting other domain names, (3) providing news and information, (4) offering customized goods for sale, and (5) advertising other businesses.

Respondent has included content on each the “www.streetrodder.com” and “www.streetrodder.net” websites since 1998, which he has regularly updated. The content has included paid advertising.

Respondent, who is a “street rodding” enthusiast, considers himself to be a “street rodder”, a term that predates Complainant’s magazine, the title of which refers to the magazine’s readers. Respondent provides the affidavit of a former editor of Complainant’s publication, which attests to the fact that the term “street rodder” refers to a “street rodding” enthusiast. The affiant further states his belief the phrase “street rodder” does not identify Complainant’s magazine unless coupled with the word “magazine”.

Respondent asserts that there are “thousands of websites” devoted to “street rodding” and an “infinite” number of references to the subject on the internet. The Response includes a list of numerous “.com”, “.net” and “.org” domain names that include the term “streetrodder”. Respondent also provides quotations of headlines of numerous articles from newspapers throughout the United States that use the term “street rodder”.

Respondent did not register and is not using the domain names in bad faith.

Respondent asserts that there is no evidence that he intended to sell, rent, or transfer either of the domain names at the time of registration. Respondent refutes Complainant’s assertion that it made any monetary demands by asserting “at no point in time did [Respondent], or anyone acting on his behalf, offer to sell either domain name”.

There is no allegation or evidence that Respondent engaged in a pattern of conduct to prevent Complainant from registering a domain name that reflects its mark.

There is no evidence that Respondent registered either domain name for the primary purpose of disrupting Complainant’s business. Respondent has continuously engaged in commercial and non-commercial activity from 1998 to the present.

There is no evidence that Respondent intended to cause confusion between the domain names and Complainant at the time of the registrations. To the extent that there might be confusion, Respondent has included a clear disclaimer on every web page (including the home page) since 1998.

Finally, Respondent asserts that the Panel should, under applicable principles of U.S. law (where both parties are located), apply the doctrine of laches to bar Complainant from obtaining relief. In support, Respondent points to a 1999 letter from Complainant to Respondent stating that unless Respondent ceased use of <streetrodder.com>, it would immediately have “Network Solutions, Inc. place the domain on ‘hold’”. Respondent also notes that another panel has found that a two year delay in filing a complaint barred the transfer of domain name and was evidence of bad faith supporting a finding of reverse domain name hijacking.

6. Discussion and Findings

In order to prevail, Complainant must prove, as to each of the domain names:

(i) It is identical or confusingly similar to Complainant’s mark; and

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

(iii) The disputed domain name has been registered and is being used in bad faith.

Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a Respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a Respondent’s bad faith registration and use, see Policy, paragraph 4(b).

A. Identical or Confusingly Similar

Complainant has established its rights in the mark STREET RODDER by providing proof of its federal trademark registration. As Respondent concedes, the disputed domain names are identical to Complainant’s mark. In considering identity, the “.com” and “.net” top-level domains and the lack of a space between the terms “street” and “rodder” are not relevant.

Accordingly, the Panel finds that Respondent’s domain names are identical to a mark in which Complainant has rights.

B. Rights or Legitimate Interests

The Panel, consistent with the consensus view, finds that Complainant may establish that Respondent has no rights or legitimate interests in respect of the domain names by making a prima facie showing that respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes a prima facie case, respondent has burden of showing rights or legitimate interests in the domain name).

Paragraph 4(c) of the Policy sets out the following examples:

(i) before any notice to you of the dispute, your 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; or

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

(iii) you are 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 at issue.

The Panel finds that Complainant has made a prima facie showing as to the examples set out in Paragraph 4(c)(ii) and (iii) of the Policy. Complainant submitted evidence that neither Respondent nor Respondent’s business have been known by the name “StreetRodder”. See Policy, paragraph 4(c)(ii). Complainant also submitted evidence that Respondent’s use of the domain names includes commercial purposes. See Policy, paragraph 4(c)(iii).

It is less clear that Complainant made a prima facie showing as to the example set out in Paragraph 4(c)(i). Paragraph 4(c)(i) provides that use of a domain name in connection with a bona fide offering of goods or services “before any notice to you of the dispute”, demonstrates rights or legitimate interests to the domain name. The Complaint referenced only Complainant’s 2007 cease and desist letter, making no mention of its earlier, 1999 letter regarding the <streetrodder.com> domain name.

The Panel need not decide whether the Complainant has established a prima facie case under this element of the Policy. In light of its determination, set out below, that Respondent has succeeded in establishing to the Panel’s satisfaction that it does have rights and legitimate interests in the disputed domain names.

Respondent has provided evidence that the term “street rodder” is used in the press and elsewhere to refer to enthusiasts of “street rodding” and has provided the affidavit of a former editor of Complainant’s publication regarding the meaning of the term². The website of the National Street Rod Association (“http://nsra-usa.com/members.htm”)³, defines a “street rod” as:

“One of the fastest growing groups of enthusiasts interested in the older cars are street rodders; the owners and builders of street rods. A street rod is the most practical type of old car. By definition a street rod is: An automobile of 1948 or earlier manufacture which has undergone some type of modernization, to include any of the following; engine, transmission, interior refinements, and any other modifications the builder desires.”

Respondent’s website deals with street rodding. Further Respondent has established that he has used the domain names for other types of legitimate offerings before Complainant’s first objection in 1999.

Accordingly, the Panel finds that Respondent has established rights and legitimate interests in each of the disputed domain names.

C. Registered and Used in Bad Faith

In light of the conclusion that Complainant has not established the second element, it is not necessary to address the issue of bad faith. However, in the interests of providing a complete explanation of its reasoning, the Panel notes that Complainant also failed to establish that the disputed domain names were registered and are being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which can establish bad faith, see Policy, Paragraph 4(b)(i)-(iv):

(i) registering the domain name primarily to sell it to complainant for more than documented out-of-pocket costs;

(ii) registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct;

(iii) registering the domain name primarily to disrupt the business of a competitor; or

(iv) using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the website or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement

Here, Complainant has provided no evidence that Respondent’s conduct falls within any of these circumstances.

Complainant’s assertion that Respondent demanded $600,000-$700,000 for the domain name – as assertion denied by Respondent – is unsupported by actual evidence. In any event, it does not establish, in this case, that Respondent’s purpose in registering the domain name was to sell it to Complainant.

The Complainant does not allege that Respondent has engaged in a pattern of cybersquatting. The Complainant and Respondent do not appear to be business competitors, therefore it does not appear that Respondent registered the name to disrupt a competitor’s business.

While Respondent does not deny using the domain names for commercial gain, it does not appear that he is intentionally trying to attract those who would otherwise be seeking Complainant’s site by creating a likelihood of confusion. Under the circumstances presented here, the Panel finds that use of a clear disclaimer in connection with legitimate offerings adequately serves to dispel any confusion that might be caused by each party’s use of the same term. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 3.5 (disclaimer cannot “cure” bad faith and may show knowledge of complainant’s mark; however, disclaimer may be found to show good faith or legitimate interest).

Accordingly, the Panel finds that Complainant has not established that Respondent registered and is using the domain names in bad faith.

D. Laches/Reverse Domain Name Hijacking

In light of the foregoing, the Panel need not address Respondent’s request to apply the doctrine of laches to deny the Complaint. Nor does the Panel interpret Respondent’s reference to domain name hijacking – in its discussion of another Panel’s decision dealing with laches – as a request for a finding of “reverse domain name hijacking” as defined in the Policy. See Rules, paragraph 1, s.v. “Reverse Domain Name Hijacking” (“using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”). Accordingly, the Panel makes no findings regarding reverse domain name hijacking.

7. Decision

For the foregoing reasons, the Complaint is denied.

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Debra J. Stanek
Sole Panelist

Dated: July 9, 2007

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¹ The Panel finds that in this case the Response was timely submitted because it was submitted on June 10, 2007 from the United States.

² The Panel does not, however, give weight to that portion of the affidavit that states the affiant’s belief that Complainant’s mark must be accompanied by the term “magazine” to be understood as a reference to Complainant or its magazine. Complainant has established federal trademark rights in the term STREET RODDER, standing alone, for its magazine.

³ Consistent with the consensus view, the Panel undertook limited factual research to find an independent definition of the term “street rod.” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 4.5 (Panel may visit site linked to disputed domain name and may undertake limited factual research into the public record).