WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

McMullen Argus Publishing Inc. v. Moniker Privacy Services/Jay Bean, MDNH, Inc.

Case No. D2007-0676

1. The Parties

Complainant is McMullen Argus Publishing Inc., New York, New York, United States of America, represented by Donovan & Yee, LLP, New York, New York, United States of America.

Respondent is Jay Bean, MDNH, Inc., Las Vegas, Nevada, United States of America, represented by John Berryhill, Media, Pennsylvania, United States of America. Moniker Privacy Services appears to be merely a privacy services provider.

2. The Domain Name and Registrar

The disputed domain name <europeancar.com> 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. On May 9, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue, and Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an Amended Complaint on May 15, 2007. The Center verified that the Complaint, together with the Amended 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 May 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response June 10, 2007. The Response was filed with the Center June 12, 2007.¹

Complainant requested a single-member Panel. Exercising its right under paragraph 5(b)(iv) of the Rules, Respondent requested a three-member panel. The Center appointed Richard G. Lyon, Andrew Mansfield, and David E. Sorkin as panelists in this matter on July 18, 2007. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. Each member of the Panel has submitted his 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 is a publishing house based in California, United States of America. Among its publications is a magazine named EUROPEAN CAR that is devoted to European cars on sale in the United States of America and around the world and many other activities related to foreign automobiles. This magazine has a substantial readership and advertising revenues in the United States of America and other countries. Complainant owns a trademark for EUROPEAN CAR that was registered in the United States Patent and Trademark Office (USPTO) in 1997 based upon a first use in commerce of 1991. Complainant claims to have published its EUROPEAN CAR magazine since 1969. The USPTO records indicate that the mark is registered for “magazine concerning foreign automobiles.” Complainant’s principal website is “www.europeancarweb.com”.

Respondent uses the disputed domain name for a pay-per-click website entitled “Europeancar.com, your autos and transportation resource.” Tabs across the top of the page include links to topics such as car insurance, car rentals, and automobile loans, under which is a section called “related links” that includes hyperlinks to a number of third-party websites that offer such goods and services. Below that section is a page entitled “favored categories” that includes many other topics, unrelated to automobiles, that are standard on pay-per-click websites. About one-third of the links on this web page relate to automobiles or automotive-related topics. Respondent does not claim to operate any of the businesses that may be accessed by means of the hyperlinks on its website, and the Panel’s review of Respondent’s website suggests that none of them is operated by Respondent.

The disputed domain name was initially registered in 1999, and an examination of its content on the wayback machine at “www.archive.org” indicates that from 2000 to 2006 it resolved to an interactive website involving many aspects of European-made automobiles.

5. Parties’ Contentions

A. Complainant contends as follows:

The disputed domain name is identical to Complainant’s registered mark except for the “.com” top-level identifier.

Respondent has never been known by the disputed domain name; it is not reflected in any of its contact details as revealed by the Whois database. Complainant has not authorized Respondent’s use of its trademark. Use of the disputed domain name for click-through revenues when making use of the mark of another is neither legitimate nor bona fide under the Policy.

The websites linked on Respondent’s site are not particularly limited to or focused upon European automobiles, so Respondent could have chosen any other name than Complainant’s federally-registered mark. Choosing that mark is evidence of registering the domain name to take advantage of the value associated with Complainant and its mark. The Panel may infer knowledge of Complainant’s mark because of its wide use in commerce over the past 30+ years, and from the fact that nothing on Respondent’s website relates to European automobiles rather than automobiles generally. Consumers are likely to be confused as to the source of the website and are led to believe that there is an affiliation or sponsorship of Respondent by Complainant. Obtaining fees every time someone clicks through Respondent’s website is commercial activity that similarly takes advantage of Complainant’s mark and is similarly evidence of bad faith.

B. Respondent contends as follows:

Complainant’s trademark rights are limited to the category for which they are registered, magazines concerning foreign automobiles. While not descriptive in respect of magazines, “european car” is a descriptive term when used for automotive-related businesses such as Respondent’s. Many other automotive companies make use of the same phrase in their names and websites. As Respondent is not using the disputed domain name for magazine services, it is not competitive with Complainant and not within the monopoly afforded by Complainant’s trademark.

Under United States trademark law, any party is free to use the term “european car” for any purpose other than printed magazines, the category for which Complainant has its registered mark. Many Policy decisions have endorsed this contention in connection with owners of magazine marks seeking to exclude others who use descriptive terms that incorporate the magazine mark for services that they describe. As Respondent’s use preceded notice of this dispute, Respondent was using the disputed domain name for a bona fide offering of the services and is within the safe harbor of paragraph 4(c)(ii) of the Policy.

Complainant has not shown that Respondent registered or used the disputed domain name in bad faith. Bad faith under the Policy requires a showing of “specific intent directed toward the Complainant,” which is not present in this case. As the phrase at issue is descriptive and Respondent is using it for services described in it, no such intent can be shown here. The phrase EUROPEAN CAR is widely used in publications and websites in its descriptive sense and Respondent’s making use of it in this manner does not constitute bad faith. Complainant has presented no evidence that either registration or use was undertaken “with an intent to exploit, trade upon, or in any manner abuse the Complainant’s limited claim of right in connection with a title of a magazine.”

6. Discussion and Findings

A. Identical or Confusingly Similar.

Complainant succeeds on this Policy element. A Panel’s determination under paragraph 4(a)(i) of the Policy is based upon a comparison between the Complainant’s mark and Respondent’s domain name, without regard to the breadth of Complainant’s trademark rights. In this proceeding the two are identical, so the Policy requirement is met.

B. Rights or Legitimate Interests.

Because of the Panel’s conclusion under paragraph 4(a)(iii) of the Policy, the Panel does not address this Policy element except to the extent it influences whether or not bad faith in registration has been established.

C. Registered and Used in Bad Faith.

Both parties to this proceeding seek victory by asking the Panel to accept as hard-and-fast rules general principles that have been developed in particular cases and that are often subject to exceptions or applicable only under different factual showings.

Complainant must do more than just show pay-per-click use to establish bad faith. Contrary to Complainant’s assertions, pay-per-click websites are not in and of themselves unlawful or illegitimate, e.g., Terana, S.A. v. RareNames, WebReg, WIPO Case No. D2007-0489; Fratelli Carli S.p.A. v. Linda Norcross, WIPO Case No. D2006-0988. Complainant has provided little evidence (as opposed to allegations of counsel) that Respondent selected the disputed domain name for a free ride upon Complainant’s mark. Complainant has made no showing that consumers and Internet users have been or are likely to be confused or to associate Respondent’s services with Complainant’s, and the Panel’s examination of the parties’ respective websites bears out this observation. There is no obvious imitation of Complainant or its services. Complainant has made no showing of a “pattern” of cybersquatting that might bring the case under paragraph 4(b)(ii) of the Policy.

Panels have often noted that the more descriptive a mark, the more difficult becomes Complainant’s burden of proof to establish registration and use with Complainant’s mark as a target. See e.g., TLR v. United Engineering Services LLC, WIPO Case No. D2007-0148; American Appraisal Associates Inc. v. R Hagar, Kinja LLC, WIPO Case No. D2006-1556. And in factual circumstances very similar to those at issue in this proceeding, a number of panels have held that use comparable to that demonstrated by Respondent is bona fide for purposes of paragraph 4(a)(ii) and that registration in bad faith is lacking. See especially Mariah Media Inc. v. First Place® Internet Inc., WIPO Case No. D2006-1275; see also Canned Foods, Inc. v Ult. Search Inc., NAF Claim Number: FA0012000096320.

Respondent is using the disputed domain name for an automotive-related business and did so prior to the commencement of these proceedings or any notice of this dispute. The website bears some relationship to the descriptive phrase for which Respondent claims to have registered the disputed domain name. Complainant’s mark is not “famous” in the trademark sense; Respondent has submitted evidence of use of the phrase by numerous others, in both trademarks and domain names, indicating that it enjoys far less than a single, universal recognition. Complainant and Respondent are not direct competitors. Particularly noteworthy is the fact that the disputed domain name has been registered and put to similar use by a party other than the mark owner for more than seven years.

The Panel does not subscribe to Respondent’s arguments that “common words” are always fair game for domain names, even if the words are “descriptive” under trademark law,² or that a magazine owner’s Policy rights in a “descriptive” mark are always limited solely to competing magazines. On a proper factual record bad faith in registration and use could be established.³ On the circumstances presented in the record before the Panel here, however,⁴ we are unwilling to depart from the Policy precedent cited above. While Complainant’s contention that there is nothing “European” about Respondent’s site gives some pause, on balance the Panel cannot conclude that Complainant has carried its burden of demonstrating that, more likely than not, the Respondent registered the Domain Name in bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Dated: July 24, 2007

¹ As neither Complainant nor the Panel was prejudiced by the two-day delay, the Panel has determined to consider the out-of-time Response.

² Nor do a majority of panels, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.2

³ A respondent’s mistaken view of trademark law or the scope of a mark owner’s rights under Policy precedent certainly does not absolve conduct amounting to bad faith, Respondent’s intimations to the contrary notwithstanding. See The New England Vein & Laser Center, P.C. v. Vein Centers for Excellence, Inc., WIPO Case No. D2005-1318; Julie & Jason, Inc. d/b/a The Mah Jongg Maven v. Faye Scher d/b/a Where the Winds Blow, WIPO Case No. D2005-0073.

⁴ The record in this case is far less than the “substantial” one present in Mariah Media Inc. v. First Place® Internet Inc., WIPO Case No. D2006-1275, cited above.