WIPO Arbitration
and Mediation Center
ADMINISTRATIVE PANEL DECISION
International Data Group, Inc. v. The Applied Media Companies,
Inc.
Case No. D2000-0191
1. The Parties
The Complainant is International Data Group, Inc., 5 Speen Street, Framingham,
MA 01701, USA . According to Network Solutions, Inc.’s WHOIS database, the Respondent
is Dennis Pierman and/or The Applied Media Companies, Inc., 243 Church Street,
NW, Suite 300C, Vienna, VA. 22180, USA.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is {publish.org} (the "Domain Name"), which
Domain Name is registered with Network Solutions, Inc. (the "Registrar").
3. Procedural History
A Complaint was submitted to the World Intellectual Property Organization Arbitration
and Mediation Center (the "WIPO Center") on March 21, 2000. On April
7, 2000, the Registrar confirmed by reply e-mail that the Domain Name is registered
with the Registrar that the Respondent was the current registrant of the name
and that the ICANN Uniform Domain Name Disputed Resolution Policy (the "Policy")
is in effect. The reply also contained contact information for the Respondent.
The Panel finds that the Policy is applicable to this dispute.
No formal deficiencies having been recorded, on April 3, 2000, a Notification
of Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification") was transmitted to the Respondent, setting a deadline of
April 22, 2000, by which the Respondent could file a Response to the Complaint.
The Commencement Notification was transmitted to the Respondent by e-mail to
the e-mail addresses specified in the Registrar’ Whois confirmation. In addition,
the Complaint was sent by facsimile to the listed fax numbers and express courier
to all available postal addresses. Having reviewed the communications records
in the case file, the Panel finds that the WIPO Center has discharged its responsibility
under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution
Policy, as approved by ICANN on October 24, 1999 (the "Uniform Rules")
"to employ reasonably available means calculated to achieve actual notice
to Respondent."
On April 25, 2000, having received no Response from the designated respondent,
using the same contact details and methods as were used for the Commencement
Notification, the WIPO Center transmitted to the parties a Notification of Respondent
Default.
Having received this Panel’s Statement of Acceptance and Declaration of Impartiality
and Independence, on May 25, 2000, the WIPO Center transmitted to the parties
a Notification of Appointment of Administrative Panel and Projected Decision
Date was June 8, 2000. The Sole Panelist finds that the Panel was properly constituted
and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules.
4. Factual Background
The Panel finds that the following facts appear from the Complaint and documents
submitted with the Complaint and have not been disputed by that the Respondent.
Complainant is the owner of the PUBLISH trademark registered in the United
States Patent and Trademark Office on August 13, 1996 (Registration Number 1993302)
for a magazine for electronic publishing. Complainant’s PUBLISH is a media publication
specifically created for graphic design and Web Publishing professionals who
use computer technology to produce print, online, interactive and multimedia
documents. Complainant also has a web site that covers the same general subjects
at www.publish.com and is the registered owner of publish.net.
The Domain Name has not been an active web site since it was registered on
January 29, 1998. A certified letter was sent on September 18, 1998, by Complainant
to Respondent demanding that it cease and desist use of the Domain Name. No
response was received. No use of the Domain Name by Respondent is alleged by
the Complainant.
5. Parties’ Contentions
A. Complainant
Complainant contends that Respondent has registered as a domain name a mark
which is identical or confusingly similar to the trademarks registered and used
by Complainant, that the Respondent has no rights or legitimate interests in
respect to the Domain Name, and that the Respondent has registered and is using
the Domain Name in bad faith.
B. Respondent
Respondent has not contested the allegations of the Complaint.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles
the Panel is to use in determining the dispute: "A Panel shall decide 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
applicable." Since all parties are domiciled in the United States, to the
extent that it would assist the Panel in determining whether the Complainant
has met its burden as established by Paragraph 4(a) of the Policy, the
Panel will look to the principles of the law of the United States.
Paragraph 4(a) of the Policy directs that the Complainant must prove each
of the following: "(i) that 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) that the respondent has no legitimate
interests in respect of the domain name; and, (iii) the domain name has been
registered and used in bad faith."
It is not necessary for this Panel to decide whether the Domain Name violates
Paragraph 4(a)(i) or 4(a)(ii) 1 of the
Policy because Complainant has failed to allege a violation of Paragraph 4(a)(iii).
To violate Paragraph 4(a)(iii) of the Policy that the Respondent must both
register and use the domain name in question in bad faith. See, e.g.,
World Wrestling Federation Entertainment, Inc. v. Michael Bosman, Case No. D99-0001
(January 14, 2000). But the Complainant has not alleged facts constituting use
in bad faith or, indeed, has alleged use in bad faith at all 2.
Paragraph V (12) (3) of the Complaint, which is the only paragraph of the Complaint
relevant to this issue, provides:
"If the Respondent had conducted an initial trademark search, he would
have had discovered the Publish Trademark which was registered on August 13,
1996. In addition, the domain, PUBLISH.COM was registered on April 2, 1992.
Both the trademark and domain registrations were made prior to the Respondent’s
registration of PUBLISH.ORG on January 29, 1998. Therefore, the Respondent registered
his domain in bad faith. [emphasis added]"
Even if one gives the Complaint the benefit of the doubt, the facts most favorable
to Complainant that can be gleamed from it is that Respondent has not used the
Domain Name at all. While Paragraph 4(b) 3
of the Policy provides some guidance on Paragraph 4(a)(iii) of the Policy,
it does not speak to the issue of whether non-use can constitute use in bad
faith. That issue has been the subject of other proceedings. See Cellular
One Group v. Paul Brien, Case No. D2000-0025 (March
10, 2000). But the facts here are substantially different from those in that
case. Unlike the mark in that case, Complainant’s trademark is not a coined
word, nor was it registered a substantial time prior to Respondent’s registration
of the Domain Name, nor is it a particularly well know or famous mark, except
perhaps in the narrow market segment Complainant serves. Importantly, Complainant’s
mark is a common English word that could also be used to refer to other products
(for example non-electronic publishing) without infringing Complainant’s rights.
7. Decision
For all of the foregoing reasons, the Panel decides that Complainant has not
overcome its burden to prove that the Respondent’s Domain Name has been registered
and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i)
of the Policy, Complainant’s request that the registration of the Domain Name
{publish.org} be transferred to the Complainant is denied.
Thomas D. Halket
Presiding Panelist
