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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Starline Publications, Inc. v. Gioacchino Zerbo

Case No. D2008-1822

1. The Parties

The Complainant is Starline Publications, Inc. of New Jersey, United States of America, represented by McCarter & English, LLP, United States of America.

The Respondent is Gioacchino Zerbo of Senna Comasco, Italy, represented by Avvocato Valerio Donnini, Italy.

2. The Domain Name and Registrar

The disputed domain name <blackmenmagazine.com> is registered with Fabulous.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2008. On November 26, 2008, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the disputed domain name. On November 27, 2008, Fabulous.com transmitted by email to the Center its verification disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 2, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in electronic format on December 3, 2008 and in hardcopy on December 9, 2008. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 December 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2008. The Response was filed with the Center on December 30, 2008.

The Center appointed Richard Hill as the sole panelist in this matter on January 14, 2009. 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.

The Panel further notes the Complainant has requested on January 6, 2009 to submit a supplemental filing but taking into account the present record and exercising its discretion as afforded in paragraphs 10 and 12 of the Rules, declines to grant the Complainant’s request.

4. Factual Background

The Complainant owns the registered trademark BLACK MEN. This mark was registered in 2007, but was first used in commerce in 1997, for the Complainant’s magazine “Black Men”.

The registrant details were changed after these proceedings were initiated, thus forcing the Complainant to file an amended Complaint. The registrar has confirmed the current registrant as being the Respondent.

The domain name was previously registered under the name of “Michele Dinoia” (“previous registrant”). Both the previous registrant and the current Respondent have a history of registering domain names that incorporate trademarks, and many of those domain names have been transferred by UDRP panels.

The website at the disputed domain name contains links to direct competitors of the Complainant and what appear to be click-through advertising links.

5. Parties’ Contentions

A. Complainant

According to the Complainant, it is a leading publisher of magazines, including “Black Men” magazine. It also owns and operates the website “www.blackmenpub.com” to promote its BLACK MEN magazine. It has continuously used the trademark BLACK MEN for magazines since 1997. BLACK MEN has been the registered trademark of Complainant in the United States since October 30, 2007 for “magazines dealing with lifestyle, namely, health, fitness, fashion, sports, sexuality, relationships, politics and finance” in international class 016 (printed matter). The Complainant states that it has never licensed or otherwise permitted the Respondent to use its mark.

The Complainant alleges that the disputed domain name wholly incorporates the BLACK MEN mark, adding only the term “magazine” -- which describes Complainant’s goods -- and the generic top-level domain (“gTLD”) “.com.” If a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words. And the term “magazine” is merely descriptive of Complainant’s product. The Complainant cites UDRP cases to support its conclusion that the disputed domain name is confusingly similar, in the sense of the Policy, to its mark.

According to the Complainant, there is no evidence that either the previous or the current registrant (the Respondent) used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services before receiving notice of the dispute. Furthermore, the Respondent has never been commonly known either by the name “Black Men Magazine” or the disputed domain name. Instead, all indications are that he uses and is known by the name “Michele Dinoia” or “Gioacchino Zerbo.”

Finally, says the Complainant, the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name without intent to misleadingly divert consumers for commercial gain or to tarnish the BLACK MEN mark. The Respondent instead has consistently attempted to profit from its unauthorized registration and use of the disputed domain name.

The Complainant alleges that the Respondent uses the disputed domain name for financial gain. The main page of the website at the disputed domain name is typical of those established by cybersquatters: a plethora of categories related to the business of the mark owner that link to sponsors who are either direct competitors of the mark owner or who offer for sale products of direct competitors of the mark owner. In this case, the categories include King Magazine, XXL Magazine, Smooth Magazine, and Sista Magazine, among others, all of which compete for the same readership and advertisers as Complainant’s Black Men Magazine. The website also has click-through links to other websites, a service from which the Respondent likely draws revenue. This establishes bad faith use and registration under the Policy.

The Complainant notes that the domain name registration was changed after these proceedings were initiated. It alleges that the Respondent’s activity subsequent to its receipt of the original Complaint is a clear example of cyberflight. “Cyberflight” is an attempt to avoid or delay judicial or UDRP proceedings by changing domain name registration details or registrars after learning of the complaint. The Complainant served the previous registrant with a copy of the original Complaint at 5:20 P.M. (Eastern time) on November 25, 2008. The previous registrant modified the name and contact information of the registrant at 5:40 P.M. (Eastern time) on that same day. Cyberflight is in and of itself a clear indication of both bad faith registration and use under paragraph 4(b) of the Policy. The Complainant cites UDRP cases to support this position.

In addition, says the Complainant, the previous registrant’s unauthorized registration of domain names incorporating the famous marks of others is not limited to the disputed domain name. The previous registrant appears to be a professional cybersquatter with a history of owning domain names that wholly incorporate or are confusingly similar to famous trademarks. The following are examples of the previous registrant’s domain names that were transferred via UDRP proceedings: <wwwfootlocker.com>, <kidsrus.com>, <anheuserbusch.com>, <wwwcircuitcity.com>, <foxmoviechannel.com>, <wwwnetscape.net>, <wwwalcoa.com>, <choicehotel.com>, <quality-inn.com>, <disneycostumes.com>, <wwwcnnmoney.com>, <ellsfargo.com>, <bamkofamerica.com>, <wwwleggmason.com>, <wwwamazom.com>, <wwwtruevalue.com>, and <putnaminvestment.com>. The current Respondent -- Gioacchino Zerbo -- also appears to be a professional cybersquatter with a history of owning domain names that wholly incorporate or are confusingly similar to famous trademarks. The following are examples of the current Respondent’s domain names that were transferred via UDRP proceedings: <mobileoil.com>, <yamahagolfcars.com>, <whirpool.com>, <internetexplorer.com>, and <wwwrei.com>. Registration of multiple domain names that a person knows are identical, confusingly similar, or dilutive of marks of others is strong evidence of bad faith intent to profit from such marks.

In sum, says the Complainant, the Respondent registered and is using the disputed domain name in bad faith, to generate click-through revenue for itself at the expense of the Complainant and the goodwill associated with the BLACK MEN mark. Furthermore, it is clear that the Respondent has engaged in a pattern and practice of registering domain names incorporating widely-known marks in an effort to personally profit from the registration of such marks. Accordingly, the Respondent’s bad faith use and registration of the disputed domain name is abundantly evident.

B. Respondent

Filing a Response in the name of Gioacchino Zerbo, the Respondent alleges that the Complainant’s assertions regarding the holding of United States (“U.S.”) service mark registration for the mark BLACK MEN are based on an incomplete representation of facts. First, the Complainant’s trademark is different from the disputed domain name. Further, the registration of the Complainant’s mark BLACK MEN took place only on October 30, 2007; the disputed domain name was registered years earlier, on March 25, 2002, as admitted by the Complainant itself. Clearly, the Complainant had no rights in the words “black men”, at the time the domain name was registered, because no such mark was existing at that time. Thus, the requirement of paragraph 4(a)(i) of the Policy is not satisfied by the Complainant: a complainant must have rights in a trademark which precede the date when the disputed domain name was registered. Otherwise the Complainant does not meet the requirements of this paragraph and so he cannot succeed. The Respondent cites UDRP cases to support this position.

The Respondent states that the Complainant can, of course, contend, that it has common law rights which are sufficient under the Policy. But to establish a common law mark, the mark must have acquired a secondary meaning. The Complainant has not carried its burden of proof with respect to trademark status, i.e., lack of genericness and secondary meaning. The other evidence provided by Complainant does not establish a secondary meaning sufficient to create a common law mark, especially in this case, since the Complainant has not proved that the first use in commerce of the name “Black Men Magazine” took place before the registration of the domain name.

The Respondent states that it can demonstrate it had a legitimate interest in the disputed domain name, because there is evidence that it was using the domain name in connection with a bona fide offering of a service to a client, prior of being notified of the Complaint against him, namely because the disputed domain name is comprised of generic and/or descriptive terms. The Respondent cites UDRP cases to support this position.

The Respondent states that no confusion is possible between the Complainant’s magazine and Respondent’s website, since the Complainant’s publication is a lifestyle magazine for Black American men, with pictures of half-naked women and articles on things like sex, cars, sports and fashion, whereas the website at the disputed domain name offers free vanity e-mail and free forum services, providing information about the biographies of outstanding African American figures.

According to the Respondent, the Complainant has not met its burden of proof by a preponderance of the credible, relevant and admissible evidence that the Respondent has no rights or legitimate interest in respect to the domain name. As long as the domain name is actually generic or common, as long as the Respondent does not harm third parties and as long as legitimate trademark owners do not hold rights to any of the names that the Respondent owns, the Respondent’s activity is normally not classified as illegitimate under the Policy. The Respondent cites UDRP cases to support this position. And the Respondent notes that the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph.2.2 states:

If a respondent is using a generic word to describe his product/business or to profit from the generic value of the word without intending to take advantage of complainant’s rights in that word, then it has a legitimate interest.

The Respondent states that it had no intent to divert consumers or to tarnish the trademark at issue, nor has the Complainant brought evidence to prove its assertions. There is no evidence that consumers seeing the Complainant’s sites would be likely to believe that there is any connection between the Complainant and the Respondent.

According to the Respondent, the Complainant’s argument that consumers seeing the Respondents’ site would be more likely to believe that there is any connection between the Complainant and the Respondent, is clearly weak, as it did not provide any serious evidence to support its statements.

The Respondent states that the Complainant has not provided any evidence of facts which might indicate that the Respondent knew or should have known of the Complainant’s service mark or that the domain name was registered with the intent of capitalizing on the Complainant’s trademark interests or even that the Respondent was aware of the Complainant’s existence. The Complainant has failed to prove by a preponderance of the evidence that the Respondent had actual or constructive notice of the Complainant’s marks at the time the domain name was transferred to the Respondent.

According to the Respondent, the question to be considered in this regard is whether, and if so to what extent, the Respondent was aware of any prior rights that the Complainant had as at the date he registered the disputed domain name. The Complainant has not provided any evidence which suggests that the former domain name holder knew of the Complainant as at the date of registration (March 25, 2002) or that the Respondent knew of the Complainant at the date of the transfer of the contested domain name (November 25, 2008). The first publicly available information, to be considered of any relevance, was that the Complainant had filed a service mark application, but this was more than three years after the registration of the domain name.

The Respondent reiterates that the Complainant has not provided any evidence of facts which might indicate that the registrant knew or should have known of the Complainant’s service mark and registered the domain name with the intent of capitalizing on the Complainant’s interests or even that registrant was aware of the Complainant’s existence when it registered the domain name. Moreover, the mark is registered only in the U.S., and only in U.S. could the mark BLACK MEN have acquired distinctiveness, while both the first and second Respondents are Italian citizens, living in Italy, and could not be aware of the existence of a trademark on such words; the Complainant did not bring any evidence of the reasons why the Respondent should have been aware of the existence itself of the Complainant.

According to the Respondent, there is no evidence that it was using the disputed domain name to sell products that are competitive with those of the Complainant. Clearly, anybody who goes to the website at the disputed domain name would know immediately that it has not reached the Complainant.

The Respondent contends that the disputed domain name was not registered primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant or to a competitor of that Complainant. The Complainant has not met its burden of proof under the paragraph 4(a)(iii) of the Policy, as no evidence was provided that the domain name was both registered and is being used in bad faith. There is no evidence to support either basis for bad faith registration and use.

The Respondent states that it has no pattern of engaging in preventing trademark owners from reflecting their marks in corresponding domain names or intentionally attempting to attract for commercial gain Internet users to the site by creating confusion with the Complainant’s mark.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Respondent argues that the Complainant acquired the registered trademark BLACK MEN only after the registration of the disputed domain name. But he admits that the Complainant can, of course, contend that it has common law rights which would be sufficient under the Policy, and which may predate the registration. Indeed, it is well settled that the term “trademark or service mark” as used in paragraph 4(a)(i) of the Policy encompasses both registered marks and common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc., WIPO Case No. D2002-0005, The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218.

In the present case the Complainant does contend that it has common law trademark rights that predate the registration and, in the opinion of the Panel, provides sufficient evidence to establish that its common law rights go back to 1997, well before registration of the disputed domain name. Thus, the Panel holds that the Complainant does have rights in the mark BLACK MEN that predate the registration of the disputed domain name.

As the Complainant correctly notes, the disputed domain name wholly incorporates its mark, adding only the term “magazine”, which describes the Complainant’s product. This is not sufficient to distinguish the disputed domain name from the Complainant’s mark. On the contrary, it exacerbates the confusion. In PRIMEDIA Magazine Finance Inc. v. Zuccarini, WIPO Case No. D2000-1186, the learned panel found that “[a]n Internet user wishing to visit Complainant’s website may well type in �seventeen-mag.com’ or �seventeen-magazine.com’, believing that such domain names would enable the user to visit Complainant’s site.”, and that this resulted in confusing similarity in the sense of the Policy.

Thus, the Panel holds that the disputed domain name is confusingly similar, in the sense of the Policy, to the Complainant’s mark.

B. Rights or Legitimate Interests

The Respondent asserts that the Complainant has not met its burden of proof by a preponderance of the credible, relevant and admissible evidence that Respondent has no rights or legitimate interests in respect of the disputed domain name. The Panel disagrees, for the reasons that are set forth below, under the discussion of the third element of the Policy.

The Respondent correctly notes that the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph.2.2 states:

If a respondent is using a generic word to describe his product/business or to profit from the generic value of the word without intending to take advantage of complainant’s rights in that word, then it has a legitimate interest. (Emphasis added)

But the Respondent is not solely using the generic term “black men” in the disputed domain name. He is using the term “black men magazine”, which specifically refers to a publication targeted at “Black Men”. It is the view of the Panel that the evidence does not support a finding that the Respondent has rights or a legitimate interest in the disputed domain name. On the contrary, as discussed below, the Panel finds that the evidence indicates bad faith registration and use.

The Panel holds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant correctly notes that the domain name registration was changed after these proceedings were initiated. Such attempts to avoid or delay judicial or UDRP proceedings by changing domain registration details or registrars after learning of the complaint have been referred to as cyberflight, see PREPADOM v. Domain Drop S.A., WIPO Case No. D2006-0917. Cyberflight is in and of itself an indication of both bad faith registration and use under paragraph 4(b) of the Policy. See, e.g., Tomas Sziranyi v. RegisterFly.com, WIPO Case No. D2006-0320; PREPADOM v. Domain Drop S.A., WIPO Case No. D2006-0917; Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696.

The Respondent states that he has no pattern of registering domain names so as intentionally to attempt to attract for commercial gain Internet users to its sites by creating confusion with the Complainant’s mark. The evidence provided by the Complainant shows otherwise. Both the previous registrant and the Respondent have histories of registering domain names which have been found by previous UDRP panels to contain known trademarks, for the purpose of attracting Internet users for commercial gain by creating confusion with those marks: see the numerous UDRP cases cited by the Complainant.

As noted above, the Respondent is not using the generic term “black men” in the disputed domain name. He is using the term “black men magazine”, which specifically refers to a publication targeted at black men. The Panel cannot accept the Respondent’s assertion that the addition of the term “magazine” to the generic term “black men” is fortuitous. On the contrary, the Panel takes the view that the Respondent (who has a history of registering domain names that incorporate third party trademarks) deliberately targeted the Complainant’s mark, and this with the intent to attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website, which is in violation of paragraph 4(b)(iv) of the Policy.

The Respondent argues that the Complainant has not provided any evidence that the previous registrant knew of the Complainant at the date of registration. But the previous registrant’s use of the disputed domain name, the change in registrant details some time on or around the filing of the Complaint, and the Respondent’s argument that, as an Italian, he was un aware of the Complainant, a U.S. company, while simultaneously alleging to discuss famous African American figures in his website, and his history of registering domain names containing trademarks, provides the requisite evidence. There is also little doubt in the Panel’s mind that the Respondent was well aware of the Complainant’s mark when it acquired the disputed domain name after the initiation of the present proceedings. If the Respondent had really wished to create a website “providing information about the biographies of outstanding African American figures” (as it claims), then surely a more appropriate choice for the domain name would not have incorporated the word “magazine”.

The Panel holds that the Respondent registered and is using the disputed domain name in bad faith in the sense of the Policy.

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 name <blackmenmagazine.com> be transferred to the Complainant.

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Richard Hill
Sole Panelist

Dated: January 21, 2009