WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Dennis Publishing, Inc. v. Arjun

Case No. D2002-0997

The Complainant is Dennis Publishing, Inc., C/O Stephen Colvin, New York, NY 10018, of United States of America, represented by Jacobs, deBrauwere & Dehn, LLP of United States of America.

The Respondent is Arjun, Sao Paolo 01003901 SP, of Brazil.

The disputed domain name <maximmagazine.com> is registered with Melbourne IT, of Melbourne, Australia.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 25, 2002. On October 28, 2002, the Center transmitted by email to Melbourne IT a request for registrar verification in connection with the domain name at issue. On October 29, 2002, Melbourne IT transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 the Respondent of the Complaint, and the proceedings commenced on October 30, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2002. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 21, 2002 .

The Center appointed Antonio Millé as the sole panelist in this matter on November 28, 2002. 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.

On December 5, 2002, the Panelist received via courier a complete copy of the Complaint and the corresponding enclosures.

The trademark upon which the Complaint is based is MAXIM.

The Complainant attached copies proving that these trademarks are registered as of it ownership in International Class 16 or its equivalent national class, for use in connection with publications in: Australia; Benelux countries; Brazil; Canada; Croatia; Chile; European Union; France; Germany; Israel; Lithuania; Mexico; New Zealand; Panama; Singapore; Switzerland; Turkey; Ukraine; United Kingdom; United States of America; and Venezuela.

The Complainant also has proved having filed trademark registration applications for the MAXIM trademark in numerous other countries.

As per the Complaint, the use of the disputed Domain Name redirect the navigation to the site at http://www.yourwebguide.com/maximmagazine.php3., but once the Panelist used the Domain Name as an Internet address, he obtained an error message stating that the Web page in this URL was not accessible at this time. Using the URL provided by the Complainant, the Panelist accessed to a Web site apparently owned by "Rediff Communications, Ltd." of India, offering subscriptions to different magazines for the male public including the ones published by the Complainant and others published by competitors of the Complainant. The presentation of the site suggest that exist some linkage between the Web site and the publisher of the printed material.

A revision of the Who-is database of Network Solutions (http://www.netsol.com/cgi-bin/whois/whois?STRING=maximmagazine.com&SearchType=do&STRING2.x=34&STRING2.y=10) allowed the Panelist to verify that the Respondent during the registration process entered "sao paolo" as city name, denomination that do not exist in the Brazilian state of Sao Paulo.

The Complainant contend that :

(a) "The subject domain name consists of the exact trademark MAXIM, the word "magazine" and the TLD ‘.com’ … the addition of the word "magazine" in the subject domain name is likely to increase confusion (the Domain Name in dispute) is confusingly similar, and indeed, effectively identical to Complainant’s MAXIM mark".

(b) "While goods and services are now being offered on the Respondent’s Site, it is a well-established principle that bona fide use does not exist when such use constitutes a deliberate infringement of another’s rights … given the worldwide fame of the MAXIM mark and further given that Respondent’s Site sells subscriptions to magazines published by Complainant, Complainant’s affiliates and by competitors of Complainant, there can be no other plausible explanation for Respondent’s conduct in the selection of the domain name <maximmagazine.com> other than that Respondent selected and used the subject domain name with the intent to attract Internet users to Respondent’s Site for commercial gain by trading on the fame of the MAXIM mark; conduct that cannot constitute bona fide use".

(c) "Respondent Arjun has not been commonly known by the domain name <maximmagazine.com>, nor is Respondent’s business name MAXIM, or a derivative or variant thereof. Complainant is not aware of the mark MAXIM being a trademark of Respondent in any jurisdiction".

(d) "Respondent Arjun has no connection to, license or relationship with Mr. Felix Dennis, MAXIM Magazine, Complainant Dennis Publishing, Inc., or any company or division affiliated with any of these entities ... Respondent is not an authorized distributor of Complainant’s magazine".

(e) "The subject domain name is being used for commercial purposes, and Respondent obviously derives commercial profit from the sale of magazine subscriptions and from the web traffic driven to other websites via the promotional links on the Site. … Furthermore, Respondent is using the MAXIM mark in the <maximmagazine.com> domain name in order to divert consumers searching for the online version of Complainant’s MAXIM Magazine and to confuse consumers into believing that Respondent’s sale of magazine subscriptions, including sale of subscriptions to Complainant’s magazines, is sponsored by or affiliated with Complainant.".

(f) "Respondent could have registered a domain name that describes Respondent ’s primary commercial activities (i.e., selling subscriptions to men’s magazines) without incorporating the MAXIM mark … Instead, Respondent’s chose to use a domain name incorporating the famous mark of one of the world’s most popular men’s lifestyle magazine, and thereby appropriated an indicia of ownership of the MAXIM mark with the intention to divert consumers seeking Complainant’s products to Respondent’s website and/or to mislead consumers as to the ownership and/or sponsorship of Respondent’s website".

(g) "Respondent registered a domain name exactly incorporating Complainant’s mark, combined with the word "magazine" which precisely describes Complainant’s product, and uses the web site accessed by the domain name to sell subscriptions to Complainant’s products in itself proves that Respondent had actual knowledge of Complainant’s pre-existing, superior rights in the mark MAXIM and intended to profit from the use of the mark in the subject registered domain name. Such conduct demonstrates Respondent’s bad faith.".

(h) "There is no plausible good faith explanation for why Respondent would have registered a domain name containing the precise name of the magazine published by Complainant. The only conceivable explanation is that Respondent wished to obtain benefits from the public recognition and goodwill associated with MAXIM mark and MAXIM Magazine for Respondent’s own commercial benefit, which is demonstrative of opportunistic bad faith".

(i) "Respondent not only registered the domain name <maximmagazine.com> in bad faith, but it is also using the registration in bad faith. Respondent is using Complainant’s mark not only to sell subscriptions to Complainant’s magazine products, but also to sell pornographic magazine products and to provide links to gambling web sites which tarnishes and dilutes Complainant’s interest in the MAXIM mark by giving the impression that Complainant endorsed, sponsored or was otherwise associated or affiliated with Respondent’s Site and the pornographic magazine products and gambling services offered on or through the Site".

(j) "Finally, it is obvious that Respondent Arjun provided a false address and contact information to the domain name registrar since Complainant’s e-mails and mailing to Respondent were returned as undeliverable. In itself, the providing of false contact information constitutes acting in bad faith".

The Respondent did not reply to the Complainant’s contentions.

The Policy sets out in Paragraph 4(a) the cumulative elements that shall be proved by the Complainant in order to succeed in an administrative proceeding for abusive Domain Name registration. We will examine each one of these elements in the following points:

The Domain Name on dispute comprises three elements: a) the expression "maxim", which is the Complainant’s registered trademark; b) the word "magazine", a generic term that describes the Complainant’s class of products; and c) the particle "com", which is an attribute of the gTLD ".com" and therefore also a generic term.

The Panelist find that the addition of a generic term that univocally describe the kind of publication that the Complainant name with the trademark MAXIM induce the Internet users to confusion and make the Domain Name <maximmagazine.com> confusingly similar with this trademark. Such cause of similarity was recognized by previous decisions of the Center:

"Complainant’s ‘Wal-Mart’ mark is well known. Its use in a domain name with the common descriptive term ‘super’ is likely to cause consumers to associate the combination ‘superwal-mart.com’ with Complainant as the source of products on or sponsor of a website identified by that name. Complainant uses the term ‘super’ to identify certain of its own retail establishments, i.e., ‘Supercenters’ (Complaint, Annex D), thereby increasing the prospect that consumers would draw a connection between it and the disputed domain name. Wal-Mart Stores, Inc. v. Kenneth E. Crews Case No. D2000-0580.

"Respondent's addition of ‘-games’ to its domain name does nothing to reduce its confusing similarity with Nintendo's POKEMON® marks. Wal-Mart Stores, Inc. v. Walsucks & Walmarket Puerto Rico, No. D2000-0477 (WIPO July 20, 2000) ("The addition of a common or generic term following a trademark does not create a new or different mark in which Respondent has rights."); Parfums Christian Dior v. 1 Netpower, Inc., No. D2000-0022 (WIPO March 3, 2000,) (finding that four domain names that added the descriptive words ‘fashion’ or ‘cosmetics’ after the trademark were confusingly similar to the trademark); Chernow Communs., Inc. v. Kimball, No. D2000-0119 (WIPO May 18, 2000,) (‘the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark’)". Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219.

Therefore, the requirement of Paragraph 4.a.(i) is met.

Not "Maxim" nor "Magazine" are part of the corporate name of the person or entity registering the challenged Domain Name. The Respondent has not answered the complaint and therefore, it has not given any basis to a right or legitimate interest in respect of the use of the expression "Maxim" as a Domain Name. The conclusion about the lack of rights or legitimate interest that comes from this facts is confirmed by the lack of allegation by the Respondent of the existence of any of the circumstances listed in paragraph 4.c. of the Policy to demonstrate his rights or legitimate interest to use the Domain Name.

On these basis, the Panelist concludes that the Respondent has no legitimate interest in the Domain Name <maximmagazine.com>. Therefore, the requirement of Paragraph 4.a.(ii) is met.

The Complainant based the Complaint in this point on the existence of the circumstances set out in paragraphs 4.b.iv) of the Policy regarding the registration and use of the domain name in bad faith.

The use as Domain Name of the title of a well known publication in combination with the generic term that identify this variety of publications seems to the Panelist a typical expression of the conduct of those that "intentionally attempted to attract, for commercial gain, Internet users to a web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of this web site or location or of a product or service on such web site or location" (Policy, 4.b.iv) . This conviction is reinforced by the fact alleged and proved by the Complainant and not refuted by the Respondent, that the Internet user entering to the contended domain name in time previous to the dispute were redirected to another Web Site where was offered subscriptions to different publications, including the ones published by the Complainant and others published by competitors of the Complainant. In front of this circumstances, and remaining silent the Respondent about any legitimate reason that could drive the Respondent to registering and using "maximmagazine" as a Domain Name, the Panelist can not find any justification for such registration and use of a Domain Name that clearly and univocally evoke the Complainant trademark.

The use of false contact information, added to the circumstance of the error in the well known name of the city in which the Registrant is supposedly domiciled, served the Panelist as a ratification of a conduct in bad faith. This circumstance was took into account in previous decisions of the Center:

The Respondent’s bad faith is further demonstrated by the false contact information he provided to the registrar with which the domain names are registered. See Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362 (June 19, 2000) § 6A (finding bad faith, in part, because respondent provided false contact details to Register.com, Inc.).Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775.

Because of this, the Panelist arrives at the conclusion that the Respondent has registered and used the <maximmagazine.com>Domain Name in bad faith. Therefore, the requirement of paragraph 4.a.(iii) is met.

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 <maximmagazine.com> be transferred to the Complainant.