Domain name - Domain name dispute resolution policy - U.S. registered trademark- Canada registered trademark - Identical - Confusingly similar - Legitimate interest and rights in domain name -- Registration and use in bad faith - No submission by Respondent.

Complainant was registrant of United States and Canada registered trademarks NICHE.  Complainant has used the marks in connection with its publication of an art & craft magazine.  Respondent registered the domain name, NICHEMAGAZINE.COM, over 10 years after Complainant had established a business in connection with the marks.  Respondent has used the domain name for its website, featuring interactive audio and hip hop culture.  Respondent failed to submit a Response to the Complaint and was noted in default.

Held, Name Transferred to Complainant.

It is clear that the domain name NICHEMAGAZINE.COM is identical or confusingly similar to the trademarks registered and used by Complainant, NICHE.  The Panel also found that adding the term “magazine” does not change the appearance, sound, or meaning of Complainant’s registered marks. The failure of Respondent to produce a response to the Complaint and, hence, sufficient evidence to rebut Complainant’s allegations entitles the Panel to conclude that Respondent has no rights or legitimate interests in respect of the domain name at issue.
 
Although Complainant’s and Respondent’s services differ, the Panel determined that a likelihood of confusion as to the source or endorsement of Respondent’s website has been created as a result of the similarities between the marks and the domain name.  Moreover, Respondent has not responded to the Complaint and, therefore, does not deny that the domain name was registered and used in bad faith, as alleged by Complainant.   The Panel also took into consideration that the domain name was registered over 10 years after the Complainant had established a business in connection with the marks.  
 
 

Policies referred to

ICANN Uniform Domain Name Dispute Policy, Policy, adopted August 26, 1999
ICANN Rules
The Forum’s Supplemental Rules

Registration Agreements referred to
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Cases referred to
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Panel Decision referred to

Parfums Christian Dior v. QTR Corp., No. D2000-0023 (WIPO Mar. 9, 2000).

State Farm v. Kaufman, FA 94335 (Nat. Arb. Forum April 24, 2000).
 

Kalina, Panelist: -

Parties

The Complainant is Niche Magazine, Baltimore, MD, USA ("Complainant"). The Respondent is NICHE Interactive Audio Magazine, Ontario, Canada, ("Respondent").

Registrar and Disputed Domain Name(s)

The domain name at issue is "NICHEMAGAZINE.COM", registered with Network Solutions Inc ("NSI").

Panelist(s)

The Panelist certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as the panelist in this proceeding.

Judge Harold Kalina (Ret.) as Panelist.
 
 

Procedural History

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 06/19/2000; The Forum received a hard copy of the Complaint on 06/19/2000. 

On 06/21/2000, NSI confirmed by e-mail to The Forum that the domain name "NICHEMAGAZINE.COM" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 4.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On 06/27/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 07/17/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by e-mail. 

On 07/17/2000, having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, The Forum transmitted to the parties a Notification of Respondent Default. 

On July 28, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed Judge Harold Kalina (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that The Forum has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, The Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

Relief Sought

The Complainant requests that the domain name be transferred from the Respondent to the Complainant. 

Parties’ Contentions

A. Complainant

The Complainant contends that the Respondent has registered a domain name that is identical and confusingly similar to its trademark registered for and in use by the Complainant. Further, the Complainant contends that the Respondent has no rights or legitimate interests to the domain name, and that the respondent has registered and is using the domain name in bad faith. 

The Complainant contends that the Respondent is diminishing the value of its registered mark, and unfairly trading upon its good name. The Complainant asserts that the Respondent could have chosen a domain name that was closer to its business name.

B. Respondent 

The Respondent submitted no response in this matter. As a result, all reasonable inferences of fact in the allegation of the Complainant will be deemed true.

Findings

The Complainant has published an art & craft magazine under the trademark "NICHE" since 1988. The Complainant owns trademarks in the United States and Canada. (U.S. registration date11/28/1989; No. 1,568,316) (Canada registration No. 1,045,241).

The Respondent registered the domain name in question on 03/18/1999. The domain name links to the Respondent’s website, featuring interactive audio and hip hop culture.

DISCUSSION 

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

The Complainant has rights in the registered trademark "NICHE", which is the name of the Complainant’s magazine. The Respondent’s domain name is identical and confusingly similar to the Complainant’s mark. Adding the descriptive term "magazine" does not change the appearance, sound, or meaning of the Complainant’s registered mark. See State Farm v. Kaufman, FA 94335 (Nat. Arb. Forum April 24, 2000) (finding that <statefarmdirect.com> is confusingly similar to Complaint’s registered mark).

Rights or Legitimate Interests

The Respondent asserts no rights or legitimate interests in the domain name in question. The failure of Respondent to produce evidence sufficient to rebut Complainant's allegations entitles the Panel to conclude that Respondent has no such rights or legitimate interests in respect of the domain name at issue. See Parfums Christian Dior v. QTR Corp., No. D2000-0023 (WIPO Mar. 9, 2000).

Registration and Use in Bad Faith

The Respondent has not responded to the Complaint and, therefore, does not deny that the domain name was registered and is being used in bad faith, as alleged by Complainant.

The Respondent uses the domain name in question to misleadingly divert consumers to the Respondent’s website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark. Policy 4(b)(iv). The Complainant holds rights in the registered mark, NICHE. The Respondent registered the domain name in question over 10 years after the Complainant had established a business in connection with this mark.

While the services differ, a likelihood of confusion as to the source or endorsement of Respondent’s website has been created as a result of the similarities between the Complainant’s mark and the domain name in question. Policy 4(b)(iv). 

Based on the above, the panel determines that the Respondent registered and used the domain name in bad faith.

Decision

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted. 

Accordingly, for all of the foregoing reasons, it is ordered that the domain name, "NICHEMAGAZINE.COM", be transferred from the Respondent to the
Complainant.