v.
Niche Interactive Audio Magazine
[Indexed as: Niche Magazine v. Niche Interactive Audio Magazine]
[Indexed as: NICHEMAGAZINE.COM]
National Arbitration Forum
Decision
Claim No. FA0006000095039
Commenced: 27 June 2000
Judgment: 8 August 2000
Presiding Panelist: Judge Harold Kalina (Ret.)
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 Complainants registered
marks. The failure of Respondent to produce a response to the Complaint
and, hence, sufficient evidence to rebut Complainants allegations entitles
the Panel to conclude that Respondent has no rights or legitimate interests
in respect of the domain name at issue.
Although Complainants and Respondents services differ, the Panel
determined that a likelihood of confusion as to the source or endorsement
of Respondents 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 Forums Supplemental Rules
Registration Agreements referred to
--
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 ICANNs 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 Respondents 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 Complainants 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 Forums 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 Respondents 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 Complainants magazine. The Respondents domain name is identical and confusingly similar to the Complainants mark. Adding the descriptive term "magazine" does not change the appearance, sound, or meaning of the Complainants registered mark. See State Farm v. Kaufman, FA 94335 (Nat. Arb. Forum April 24, 2000) (finding that <statefarmdirect.com> is confusingly similar to Complaints 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 Respondents website for commercial gain, by creating a likelihood of confusion with the Complainants 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 Respondents website has been created as a result of the similarities between the Complainants 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.