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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Primedia Specialty Group Inc. v. This Domain is For Sale, Alan Lam

Case No. D2007-0789

1. The Parties

Complainant is Primedia Specialty Group Inc., New York, New York, United States of America, represented by Donovan & Yee, LLP, United States of America.

Respondent is This Domain is For Sale, Alan Lam, San Francisco, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <hondatuning.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2007. On May 31, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On June 1, 2007, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the 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 June 11, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2007. The Response was filed with the Center on June 30, 2007.

The Center appointed Sandra J. Franklin as the sole panelist in this matter on July 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 has been publishing a magazine under the mark HONDA TUNING since 1988. Early in 2007, Respondent registered the domain name <hondatuning.com>.

5. Parties’ Contentions

A. Complainant makes the following assertions:

1. Respondent’s <hondatuning.com> domain name is confusingly similar to Complainant’s HONDA TUNING mark.

2. Respondent does not have any rights or legitimate interests in the <hondatuning.com> domain name.

3. Respondent registered and used the <hondatuning.com> domain name in bad faith.

B. Respondent states that Complainant does not have trademark rights in HONDA TUNING.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

(3) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has not registered the name “honda tuning” as a trademark. However, the Panel notes that the Policy can apply to an unregistered trademark, provided the mark at issue has acquired sufficient distinctiveness through use and promotion to identify the source of the particular service with Complainant.

Paragraph 4(a)(i) of the Policy refers to a “trademark or service mark” in which the complainant has rights, and does not expressly limit the application of the Policy to a registered trademark or service mark. Indeed, the WIPO Final Report on the Internet Domain Name Process (The Management of Internet Names and Address: Intellectual Property Issues, April 1999), from which the Policy is derived, does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names. See also The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; see also MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205; Emmanuel Vincent Seal trading as Complete Sports Betting v. Ron Basset, WIPO Case No. D2002-1058). This Panel affirms in this case that it is not necessary for Complainant to have a registered mark to establish rights.

Complainant states that it has been publishing “honda tuning”, a leading magazine in its field, since 1988, and now has a monthly circulation of 40,000 and estimated readership of 313,000. Complainant also provided evidence of its active presence on the Internet under the name “honda tuning magazine”. The Panel finds that Complainant has established sufficient distinctiveness in its publishing field, with almost 20 years of continuous commercial use, for the purposes of establishing rights under the Policy.

Respondent’s <hondatuning.com> domain name is confusingly similar to HONDA TUNING, in which the Complainant has demonstrated sufficient rights, pursuant to Policy paragraph 4(a)(i). The domain name contains the term “honda tuning” in its entirety and simply adds the generic top-level domain “.com”, and this is not enough to distinguish the domain name.

The Panel finds that Complainant has satisfied Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

Complainant states, and Respondent confirms, that Respondent is passively holding the domain name <hondatuning.com>, other than generating click-through revenue. Numerous panels before have held that the use of a domain name found to be confusingly similar to an established mark for the purpose of collecting click-through fees is neither a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy paragraph 4(c)(iii). See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee, did not evidence rights or legitimate interests in the domain name).

Further, Respondent admitted in his response that he is not offering goods or services under the domain name <hondatuning.com>, and stated “I just park all my domain names with sedo as a default setting”. He mentions that a site “will be created by Honda enthusiasts” but doesn’t mention how, when or where that might come about. The Panel finds that Respondent has not established any rights or legitimate interests in the <hondatuning.com> domain name, and that Complainant has satisfied Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Respondent is using the <hondatuning.com> domain name simply to post links to other sites, thereby receiving click-through revenue. Such use of Complainant’s mark and its goodwill for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy paragraph 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy paragraph 4(b)(iv)).

The Panel also notes that Respondent is also listed as “This Domain is For Sale” and Respondent provides a direct link for making an offer. The record further indicates that Respondent is in the business of purchasing and reselling domain names. This in itself is not bad faith, but when a respondent obtains a domain name containing another’s trademark, primarily for the purpose of reselling it at a profit, this is a further indication of bad faith. See MatchNet plc v. MAC Trading, WIPO Case No. D2000-0205, where the panel found bad faith where the Respondent presented false registration information to Network Solutions Inc. by listing its address as including the word(s): “ONSALEHIREPURCHASEORANYIDEA”, and went on to state “This is prima facie evidence that the Respondents has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant”. This is precisely what Respondent did in this case.