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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Krause Publications, Inc. v. BWI Domains
Case No. D2008-1352
1. The Parties
The Complainant is Krause Publications, Inc., of Iola, Wisconsin, United States of America, represented by Greenebaum Doll & McDonald PLLC, United States of America.
The Respondent is BWI Domains, of Grand Cayman, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <gundigest.com> (the вЂњDomain NameвЂќ) is registered with Rebel.com Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the вЂњCenterвЂќ) on September 4, 2008. On September 5, 2008, the Center transmitted by email to Rebel.com Services Corp a request for registrar verification in connection with the Domain Name. On September 8, 2008, Rebel.com Services Corp 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 Domain Name. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the вЂњPolicyвЂќ), the Rules for Uniform Domain Name Dispute Resolution Policy (the вЂњRulesвЂќ), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the вЂњSupplemental RulesвЂќ).
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 September 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2008. The Respondent did not submit any response. Accordingly, the Center notified the RespondentвЂ™s default on October 8, 2008.
The Center appointed Warwick Smith as the sole panelist in this matter on October 14, 2008. 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.
Because no response was filed, the Panel has checked the record, which shows that the Center has discharged its responsibility under paragraph 2(a) of the Rules, to notify the Complaint to the Respondent. Although the courier pack containing the Complaint could not be delivered to the address provided in the Whois particulars for the Domain Name, and the email transmission to the вЂњPostmasterвЂќ address failed, it appears that the Complaint and the Notice of Commencement of Administrative Proceeding were successfully transmitted to the RespondentвЂ™s email address provided in the Whois particulars for the Domain Name. Accordingly, it appears that the Respondent has received actual notice of the Complaint.
4. Factual Background
The following (uncontested) statement of facts is taken from the Complaint.
The Complainant is one of the worldвЂ™s largest publishers of leisure-time magazines and books. It currently publishes over 40 periodicals in fourteen different areas of interest. The Complainant is also a substantial publisher of new books and editions.
The Complainant and its predecessors in title have used the mark GUN DIGEST from as early as 1944. The GUN DIGEST mark is promoted through advertising in various media, including catalogues and other publications, and it is also promoted at trade shows. The ComplainantвЂ™s GUN DIGEST mark receives media attention nationally in the United States of America (вЂњUnited StatesвЂќ).
The Complainant has produced samples of some of its advertising material in which the GUN DIGEST mark is used and also various online publications showing use of the GUN DIGEST mark by various online or other publishers. The вЂњGun DigestвЂќ magazine circulation for 2007 was 62,000, and the вЂњGun DigestвЂќ book circulation in the same year was 136,700. Twelve new GUN DIGEST book titles were published in 2007.
The Complainant has produced evidence showing that it is the registered proprietor of the word mark GUN DIGEST in the United States. The relevant extract from the principal register maintained by the United States Patent and Trademark Office, shows a filing date of June 13, 1995 and refers to a first use in commerce in 1944. The registration covers reference books containing articles and information relating to guns, in international class 16. The Complainant holds a separate GUN DIGEST registration in the United States, covering magazines which are concerned with the subject of guns.
The Respondent and the Domain Name
The Domain Name was registered on May 20, 2001. It points to a portal website (вЂњthe RespondentвЂ™s websiteвЂќ), providing links to various third party sites, most of which appear to be concerned with the subject of guns.
The Complainant has produced a copy of the RespondentвЂ™s website printed on June 23, 2008. The home page of the RespondentвЂ™s website prominently features the Domain Name, above the words вЂњWhat you need, when you need itвЂќ. The page contains a number of click-on search items, grouped under the heading вЂњRelated SearchesвЂќ. All of the links but one is clearly related to guns (the exception was a вЂњMagazine SubscriptionsвЂќ link). Contrary to what one might have expected, a вЂњprices on used gunsвЂќ link took the site visitor to a web page containing sponsored links to third party websites relating to cars. вЂњRelated searchesвЂќ on the вЂњprices on used gunsвЂќ page of the RespondentвЂ™s website were to websites listed under general categories such as вЂњemploymentвЂќ, вЂњdatingвЂќ, вЂњringtonesвЂќ, etc.
Another of the links on the вЂњprices on used gunsвЂќ subpage of the RespondentвЂ™s website was to a website at вЂњwww.business.comвЂќ, featuring labeling guns for use in the retail trade.
The вЂњMagazine SubscriptionsвЂќ subpage of the RespondentвЂ™s website contained a number of click-through links to third party websites at which magazines were offered for sale. A look at one of these links (to the website at вЂњwww.magazines.comвЂќ) shows that the word вЂњmagazinesвЂќ was used as a reference to the commonly-known form of reading material, and not as a reference to that part of a gun in which bullets are located before the gun is fired. For example, there were magazines offered for sale dealing with matters such as health and fitness, entertainment, and business and finance вЂ“ nothing to do with guns at all.
The вЂњGun MagazinesвЂќ subpage contained a link to a page at the вЂњwww.magazines.comвЂќ website, which did adverte a monthly magazine called вЂњGunsвЂќ. Prices on this page of the вЂњwww.magazines.comвЂќ website were expressed in dollars, and a вЂњ1-800вЂќ telephone number was provided. The same web page featured certain other gun-related magazines, which appeared to be products of the ComplainantвЂ™s competitors. One of them was the вЂњAmerican HandgunnerвЂќ magazine. Other links from the RespondentвЂ™s website were to a gun-related website at вЂњwww.shortyusa.comвЂќ and a gun-related shopping page at вЂњwww.shopping.yahoo.comвЂќ.
The Complainant also produced archived web pages from the RespondentвЂ™s website, from the years 2001, 2002, and 2003 (printed from the Wayback Machine at вЂњwww.archive.orgвЂќ). Each of these web pages were typical landing pages, with click-on links to third party websites grouped under a variety of headings (e.g., finance, sports, insurance, auto, shopping, health, etc). Each page prominently featured the Domain Name and the question вЂњLooking for something?вЂќ. Beneath that question there followed text inviting the site visitor to click on one of the links or use the search function on the web page to find what he or she was looking for. None of the click-through category headings on the 2001, 2002, or 2003 pages from the RespondentвЂ™s website which the Complainant produced, appeared to be in any way related to guns.
The Complainant has not authorised the Respondent to use or register any of the ComplainantвЂ™s trademarks, and to the best of the ComplainantвЂ™s belief, the Respondent does not operate any business under a name consisting of or incorporating the expression вЂњGun DigestвЂќ.
The Respondent has previously been found guilty of cybersquatting in cases decided under the Policy. The Respondent was the unsuccessful respondent in Gene Kelly Image Trust v. BWI Domain Manager,
WIPO Case No. D2008-0342 and in Det Berlingske Officin A/S v. BWI Domain Manager,
WIPO Case No. D2007-1717. The Respondent was also an unsuccessful respondent in a number of cases decided by National Arbitration Forum Panels вЂ“ Keystone Automotive Operations Inc. v. BWI Domain Manager, NAF Case No. 1177906; Choice Hotels International, Inc. v. BWI Domains, NAF Case No. 1174416; American Girl, LLC v. BWI Domain Manager, NAF Case No. 1104431; AARP v. BWI Domain Manager, NAF Case No. 1094042; and AMFM, Inc. v. BWI Domain Manager, NAF Case No. 1084750.
5. PartiesвЂ™ Contentions
The Complainant contends:
1. The Domain Name is identical to the ComplainantвЂ™s GUN DIGEST mark.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following:
(a) The Complainant has not authorised the Respondent to use or register any of the ComplainantвЂ™s trademarks.
(b) The Respondent does not operate any business under any name consisting of or incorporating the expression вЂњGun DigestвЂќ.
(c) The Respondent has not used the expression вЂњGun DigestвЂќ in connection with any bona fide offering of goods or services. Using the ComplainantвЂ™s trademark as a domain name to divert traffic to the RespondentвЂ™s website is not a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of the Domain Name.
(d) The ComplainantвЂ™s use of its GUNDIGEST mark predates the RespondentвЂ™s registration of the Domain Name, by at least 57 years.
3. The Respondent has registered and used the Domain Name in bad faith:
(a) Use of a domain name in connection with a portal site can be bad faith use. Offering goods and services through the RespondentвЂ™s website which are related to the ComplainantвЂ™s products takes advantage of the ComplainantвЂ™s reputation, even if the Respondent does not offer the same services directly. Because the Respondent has registered and is using the Domain Name in connection with a portal site linking to websites of the ComplainantвЂ™s competitors, that is sufficient to establish bad faith registration and use.
(b) The Respondent registered the Domain Name in bad faith for the purpose of disrupting the business of the Complainant, and the Complainant is a competitor of the Respondent (the term вЂњcompetitorвЂќ embraces not only direct commercial competitors, but any person acting in opposition to another). In this case, the Respondent is a competitor because it benefits from using the ComplainantвЂ™s mark to drive traffic to the RespondentвЂ™s website, where it derives revenue from linking to sites offering goods and services which are related to those offered by the Complainant, but which are products of the ComplainantвЂ™s competitors. Both the Complainant and the Respondent offer gun-related products through the Internet, and because these goods are promoted in overlapping trade channels, the Complainant and the Respondent are competitors.
(c) Diverting potential customers of the Complainant to the RespondentвЂ™s website by use of the ComplainantвЂ™s GUN DIGEST trademark disrupts the ComplainantвЂ™s business. That business disruption was the primary intention of the Respondent in registering and using the Domain Name.
(d) The Respondent registered the Domain Name with the intention of causing confusion as to the source, sponsorship, or affiliation of the RespondentвЂ™s website. The Respondent did that to divert Internet traffic from the ComplainantвЂ™s websites to the RespondentвЂ™s website, for commercial gain.
(e) The ComplainantвЂ™s GUN DIGEST trademark is a famous mark which has been in use for a very long time. The Respondent has been guilty of вЂњopportunistic bad faithвЂќ, in diverting Internet traffic from the ComplainantвЂ™s websites for the RespondentвЂ™s commercial benefit.
(7) The Respondent has registered the Domain Name in order to prevent the Complainant from reflecting its GUN DIGEST mark in a corresponding domain name, and the Respondent has engaged in a pattern of such conduct.
The Respondent did not reply to the ComplainantвЂ™s contentions.
6. Discussion and Findings
A. What the Complainant must prove
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to вЂњdecide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicableвЂќ.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires a panel to вЂњdecide the dispute based on the complaintвЂќ. Under paragraph 14(b) of the Rules, the panel may draw such inferences from a respondentвЂ™s failure to comply with the Rules (e.g., by failing to file a response), as the panel considers appropriate.
B. Identical or Confusingly Similar
The Complainant has proved this part of its Complaint. It is the registered proprietor of the word mark GUN DIGEST in the United States, and the Domain Name is identical to that mark (the вЂњ.comвЂќ suffix is not taken into account in the comparison which paragraph 4(a)(i) of the Policy requires).
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) before any notice to the respondent of the dispute, use by the respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) where the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) where the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
If the circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible evidence, that it does have a right or a legitimate interest in the Domain Name.
That approach is summarized at paragraph 2.1 of the CenterвЂ™s online document вЂњWIPO Overview of WIPO Panel Views on Selected UDRP QuestionsвЂќ, as follows:
вЂњ[A] Complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRPвЂќ.
In this case, the Domain Name is identical to the ComplainantвЂ™s GUN DIGEST mark, and the Complainant has not authorised the Respondent to use its mark, whether in a domain name or otherwise. There is nothing in the evidence to suggest that the Respondent, or any business operated by it, might be commonly known by the Domain Name. Those circumstances in combination are sufficient to establish a prima facie case that the Respondent has no rights or legitimate interests in respect of the Domain Name. The evidentiary onus, therefore, shifts to the Respondent.
The Respondent has not filed any response, and has, therefore, failed to discharge that evidentiary onus. Furthermore, there is nothing in the evidence which has been presented which would suggest that the Respondent might have some right or legitimate interest in respect of the Domain Name. Paragraph 4(c)(ii) of the Policy cannot apply, and for the reasons set out in Section 6.D. of this Decision, the Panel is satisfied that the use which the Respondent has been making of the Domain Name has been neither вЂњfairвЂќ, вЂњlegitimateвЂќ, nor in connection with any bona fide offering of goods or services.
The Complainant has proved this part of its Complaint.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that a respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant or to a competitor of the complainant, for valuable consideration in excess of the respondentвЂ™s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the complainant from reflecting the complainantвЂ™s trademark or service mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondentвЂ™s website or other on-line location, by creating a likelihood of confusion with the complainantвЂ™s mark as to the source, sponsorship, affiliation, or endorsement of the respondentвЂ™s website or location or of a product or service on the respondentвЂ™s website or location.
The Panel is also satisfied that the Respondent registered, has been, and is using, the Domain Name in bad faith. The Panel has come to that view for the following reasons:
1. The Panel is satisfied that the Respondent must have known of the Complainant and its GUN DIGEST mark when the Respondent registered the Domain Name. First, the Domain Name is identical to the ComplainantвЂ™s mark, and the ComplainantвЂ™s publication appears to be very well known in gun-related circles, particularly in the United States. The gun-related links and the other links on the RespondentвЂ™s website, appear to be primarily targeted at the United States market (e.g., there are links to sites offering products quoted in dollars, the use of вЂњ1-800вЂќ telephone numbers, and references to publications such as the вЂњAmerican HandgunnerвЂќ magazine). Secondly, the Respondent has offered no explanation for its choice of the Domain Name. The early use of the Domain Name (in 2001, 2002, and 2003), was for nothing more than a broadly-based landing page, with no apparent connection to guns whatsoever. Why register a domain name called вЂњgun digestвЂќ, if that domain name was to be pointed to a website having no connection with guns? In the absence of any explanation from the Respondent (or from any other party who may have been the original registrant of the Domain Name back in 2001), the obvious inference is that the original registrant (whether it was the Respondent or someone else) was aware that the Domain Name was identical to the ComplainantвЂ™s trademark and wished to attract to the RespondentвЂ™s website Internet users who were looking for the ComplainantвЂ™s website. Thirdly, the Respondent is an experienced domain name buyer and reseller, and it is improbable that it would have registered or acquired the Domain Name without turning its mind to the existence or otherwise of third party trademark rights corresponding to the Domain Name. As the Respondent appears to have been targeting the United States market, it seems likely that its attention would have been directed to ascertaining what commercial meaning (if any) Internet users in the United States would be likely to attribute to the expression вЂњgun digestвЂќ. It seems improbable that any such considerations would not have led the Respondent to the Complainant and its вЂњGun DigestвЂќ magazine. Finally, the RespondentвЂ™s track record as a respondent in complaints filed under the Policy, is entirely consistent with the Respondent having registered and used the Domain Name with full knowledge of the Complainant and its rights, and with a view to trading off the ComplainantвЂ™s goodwill in its GUN DIGEST mark.
2. If (as the Panel has found) the Respondent was aware of the Complainant and its GUN DIGEST mark when it registered the Domain Name (whether as the original registrant in 2001, or as a subsequent registrant on purchasing the Domain Name at some later date), the Respondent must have appreciated that some Internet users would mistakenly come to the RespondentвЂ™s website, believing it to be a website operated by or associated with the Complainant. If the Respondent appreciated that likelihood, but proceeded in any event, the Panel can only conclude (in the absence of any explanation from the Respondent) that the Respondent intended to create that kind of confusion.
3. The RespondentвЂ™s website has clearly been used for commercial gain вЂ“ the Respondent is running a business, and it can be presumed that it would not have provided a platform with links to commercial websites operated by third parties, if it was not receiving some remuneration for so doing (probably in the form of pay-per-click revenue earned every time a visitor to the RespondentвЂ™s website clicked on one of the sponsored third party links).
4. Having regard to the foregoing matters, the Panel is satisfied that, by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the RespondentвЂ™s website, by creating a likelihood of confusion with the ComplainantвЂ™s mark as to the source, sponsorship, affiliation, or endorsement of the RespondentвЂ™s website. That confusion has been exacerbated by the prominent use of the Domain Name on the RespondentвЂ™s website, and by the use of the RespondentвЂ™s website to provide links to third party sites, some of which are operated by the ComplainantвЂ™s competitors, which are substantially concerned with guns. The circumstances fall squarely within paragraph 4(b)(iv) of the Policy, and the Complaint of bad faith registration and use must, therefore, be upheld.
In the circumstances, it is not necessary for the Panel to consider the other submissions made by the Complainant.
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 <gundigest.com> be transferred to the Complainant.
Dated: October 28, 2008