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and Mediation Center
Kensington Publishing Corporation v. LaPorte
Case No. D2006-0014
1. The Parties
The Complainant is Kensington Publishing Corporation, New York, New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, New York, New York, United States of America.
The Respondent is LaPorte Holdings, Los Angeles, California, United States
2. The Domain Name and Registrar
The disputed domain name <kensingtonpublishing.com> is registered with
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2006. On January 9, 2006, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain name at issue. On January 9, 2006, NameKing.com 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 12, 2006. The Center verified that the Complaint together with the amendment to 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 January 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2006.
The Center appointed Ira S. Sacks as the sole panelist
in this matter on March 2, 2006. 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,
4. Factual Background
The Complainant in this proceeding, Kensington Publishing Corp. is the last remaining independent U.S. publisher of hardcover, trade and mass-market paperback books and has been in business for over 31 years. Complainant accounts for about 7% of all mass-market paperback sales in the U.S. Complainant advertises in numerous nationally circulated magazines and print publications, such as USA Today, The New York Times and the Romantic Times Magazine, as well as through television and radio advertisements. Over the last five years, Complainant has spent over $15 million on advertising and promotion.
The Complainant’s books are distributed through
numerous channels of trade, including Barnes and Nobles, Borders, Waldenbooks,
Wal-Mart, Target, Costco, Sam’s Club, over the internet and through various
outlets in the Los Angeles area. Through its Kensington, Zebra, Pinnacle, Brava,
Dafina and Citadel press imprints, the company releases close to 500 new books
per year and has a backlist of more than 2,500 titles. The Complainant’s
main website is at <http://www.kensingtonbooks.com>.
The Complainant owns a federal registration for the KENSINGTON mark in the United States, Registration No. 1,863,184, which issued on November 15, 1994. Complainant also owns registrations for the KENSINGTON mark in Canada, the European Community, Australia and New Zealand.
The disputed domain name <kensingtonpublishing.com>
was registered on December 11, 2003. As of that date, Complainant had been using
its Kensington Publishing Corp. trade name for nearly 20 years, its KENSINGTON
mark as an imprint on books for over 12 years and had obtained a federal trademark
registration for its mark in the U.S. At the time the Complaint was filed, upon
entering Respondent’s domain name, an internet user was directed to a
website identifying it as a source “for all your educational needs.”
The site contained links for “Authors,” “Books,” “Book
Publisher,” “Romances,” “Zebra” (which is the
name of one of Complainant’s publishing imprints and the subject of Complainant’s
U.S. Trademark Registration No. 1,752,540, which was registered on February
16, 1993) and “Submissions.” The website at the domain name prominently
featured the domain name and contained a set of popular links, many of which
related to publishing and books.
5. Parties’ Contentions
The Complainant contends that the disputed domain name <kensingtonpublishing.com> incorporates without alteration Complainant’s registered KENSINGTON mark, making it confusingly similar thereto. The Complainant contends that the addition of the generic term, “publishing” increases the likelihood of confusion because it is an apt term for Complainant’s business and that the domain name leads to a landing page that includes direct or indirect links to web pages where KENSINGTON products can be purchased – using one of Complainant’s publishing imprints (Zebra) as a hyperlink – which will confuse consumers into believing the domain name links to websites sponsored by Complainant.
The Complainant further contends that no relationship exists between Complainant and Respondent and Complainant has never licensed, permitted, or authorized Respondent to own or use the domain name.
Complainant also contends that Respondent is not making legitimate noncommercial or fair use of the domain name. Instead, Respondent is using the domain name to divert consumers to a website which links to other sites so as to commercially benefit Respondent.
Finally, Complainant contends that Respondent has registered and is using the disputed domain name in bad faith. First, Complainant contends that Respondent has taken Kensington’s trade name and trademark as the dominant part of the domain name so as to trade off of the goodwill of the KENSINGTON mark. Second, Complainant contends that Respondent has been repeatedly found to be the alter ego for Henry Chan, a notorious cybersquatter, and that in or about 2003, Henry Chan began to transfer his portfolio of some 25,000-plus domain names to other entities, including LaPorte Holdings, Inc. Third, Complainant contends that the domain name causes mousetrapping,1 which enables Respondent to earn additional fees.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that the domain name should be transferred or cancelled:
(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which if proved by respondent, shall be evidence of the respondent’s rights to or legitimate interests in a domain name for the purpose of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar to Complainant’s Trademark
KENSINGTON, the salient feature of the domain name, is identical to a mark
in which Complainant has shown prior rights. The addition of the generic term,
“publishing” is not a distinguishing feature, and in this case,
increases the likelihood of confusion because it is an apt term for Complainant’s
business. See Infospace.com Inc. v. Infospace Technology Co. Ltd., WIPO
Case No. D2000-0074; Chanel, Inc. v. Cologne Zone, WIPO
Case No. D2000-1809; Chanel, Inc. v. IGGI Networks, Inc., WIPO
Case No. D2000-1831; Chanel, Inc. v. Designer Exposure, WIPO
Case No. D2000-1832. Indeed, Complainant is a book publisher and uses the
word “publishing” in its trade name, Kensington Publishing Corp.
Moreover, the domain name goes to a landing page that includes direct or indirect links to web pages where KENSINGTON products can be purchased – using one of Complainant’s publishing imprints (Zebra) as a hyperlink – showing that Respondent intends Internet users to associate the term KENSINGTON in the domain name with Complainant and to be confused into believing the domain name links to websites sponsored by Complainant.
Based on the foregoing, the Panel is satisfied that the domain name is confusingly similar to Complainant’s mark as required under Paragraph 4(a)(i) of the Policy.
B. Respondent’s Lack of Rights or Legitimate Interests
Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name: (i) use of, or preparations to use, a domain name in connection with a bona fide offering of goods or services; (ii) the fact that respondent has commonly been known by a domain name; and (iii) legitimate non-commercial or fair use of a domain name.
A respondent is not obliged to participate in a domain
name dispute proceeding, but its failure to do so can lead to an administrative
panel accepting as true the assertions of a complainant which are not unreasonable
and leaves the respondent open to the legitimate inferences which flow from
the information provided by a complainant. See PepsiCo, Inc. v. Amilcar Perez
Lista d/b/a Cybersor, WIPO Case No. D2003-0174.
Complainant has provided evidence of its rights in the KENSINGTON Mark and that the Domain Name was registered by Respondent on or about December 11, 2003. Since the adoption and extensive use by the Complainant of the trademark KENSINGTON predates the first entry of <kensingtonpublishing.com> as a domain name, the burden is on the Respondent to establish the Respondent’s rights or legitimate interests the Respondent may have or have had in the domain name. Id. Based on Complainant’s submissions, the Panel considers that at that time Complainant had acquired a considerable reputation in the KENSINGTON Mark through sales of millions of dollars of books bearing the trade name or mark, and through extensive marketing and promotional activities over a period of more than twenty years.
Complainant contends that no relationship exists between Complainant and Respondent and Complainant has never licensed, permitted, or authorized Respondent to own or use the domain name.
Complainant further contends that Respondent is not making legitimate noncommercial or fair use of the domain name. Instead, Respondent is using the domain name to divert consumers to a website which links through to other sites, presumably to commercially benefit Respondent.
It is apparent that the Respondent registered the domain name <kensingtonpublishing.com> for the purpose of capitalizing on the Complainant’s trademark KENSINGTON and profiting from the goodwill that the Complainant has built up in its trademark.
These facts support a clear inference that the Respondent does not have a legitimate interest in the subject domain name and the Respondent has done nothing to rebut that inference.
Based on the foregoing, the Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).
C. Registered and Used in Bad Faith by Respondent
Respondent’s registration and use of the domain name is in bad faith. Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four factors set forth in the Policy:
(i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.
See Policy, paragraph 4(b).
Here, Respondent registered the domain name to capitalize
on the recognition of Complainant’s KENSINGTON mark and to financially
benefit therefrom. Respondent is using the domain name, which is confusingly
similar to and incorporates Complainant’s KENSINGTON mark, to divert Internet
traffic searching for KENSINGTON to an unaffiliated website featuring other
indicia of Complainant’s business, such as the name of one of its publishing
imprints (Zebra) in exchange for referral fees. This is bad faith. See, e.g.,
AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin,
WIPO Case No. D2002-0440; Park Place
Entertainment Corporation v. Intronational Gaming, Ltd., WIPO
Case No. D2002-0884.
Moreover, Respondent appears to be a notorious cybersquatter
and has previously been found to have registered and used domain names in bad
faith numerous times. See, e.g., Sociйtй des Hфtels Mйridien v. LaPorte
Holdings, Inc., WIPO Case No. D2004-0849;
Krome Studios Pty, Ltd. v. LaPorte Holdings, Inc., WIPO
Case No. D2004-0707; Medco Health Solutions, Inc. v. LaPorte Holdings,
Inc., WIPO Case No. D2004-0800; Nokia
Corporation v. Horoshiy, Inc., LaPorte Holdings, WIPO Case
No. D2004-0851; HBH, L.P. v. LaPorte Holdings, WIPO Case
No. D2004-0864; Sociйtй Franзaise du Radiotйlйphone - SFR v. LaPorte
Holdings, WIPO Case No. D2004-0926.
Indeed, the numerous decisions rendered against Respondent
show that Respondent’s behavior is part of an overall pattern of registering
and using domain names containing the registered marks of third parties for
illegitimate purposes and is further evidence of Respondent’s bad faith
registration and use of the domain name <kensingtonpublishing.com>. See,
e.g., Stella D’Oro Biscuit Co., Inc. v. The Patron Group, Inc., WIPO
Case No. D2000-0012; Nabisco Brands Company v. The Patron Group, Inc.,
WIPO Case No. D2000-0032; Parfums Christian
Dior v. 1 Netpower, Inc., WIPO Case No.
D2000-0022; J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust
Company of New York v. Resource Marketing, WIPO
Case No. D2000-0035.
Additionally, the domain name causes mousetrapping,
which has repeatedly been held by UDRP panels to be evidence of bad faith. See,
e.g., Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO
Case No. D2000-1415; AT&T Corp. v. Peter Carrington/Party Night Inc.,
WIPO Case No. D2002-0931; Dr. Pepper/Seven
Up., Inc. v. NA, WIPO Case No. D2003-0773.
Based on the foregoing, the Panel finds that Complainant
has shown sufficient facts to support a finding that Respondent registered and
used the domain name in bad faith pursuant to the Policy paragraph 4(a)(iii).
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, <kensingtonpublishing.com> be transferred to the Complainant.
Ira S. Sacks
Dated: March 13, 2006
1 Mousetrapping occurs when an internet user tries to close a domain name and exit pop-ups appear.