outside.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mariah Media Inc. v. First Place® Internet Inc.

Case No. D2006-1275

1. The Parties

The Complainant is Mariah Media Inc., Santa Fe, New Mexico, United States of America, represented by Winston & Strawn LLP, New York, New York, United States of America.

The Respondent is First Place® Internet Inc., Clearwater, Florida, United States of America, represented by John B. Berryhill, Media, Pennsylvania, United States of America.

2. The Domain Name and Registrar

The disputed domain name <outside.com> (the “Domain Name”) is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2006. On October 5, 2006, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On October 5, 2006, Tucows 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 and technical contact. The Center verified that 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 October 12, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response November 1, 2006. The Response was filed with the Center November 2, 2006.

The Center appointed W. Scott Blackmer, James W. Dabney and Geert Glas as panelists in this matter on November 22, 2006. The Panel finds that it was properly constituted. Each member of 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.

4. Factual Background

The Complainant is a Delaware corporation headquartered in New Mexico. As demonstrated by copies of OUTSIDE magazine and website pages furnished with the Complaint, the Complainant publishes OUTSIDE magazine and related products, such as books and digital video recordings (DVRs). The Complainant has also operated a website at “www.outsideonline.com” since 1995, offering vacation and trip planning guides and advice as well as articles from OUTSIDE magazine and information about outdoor adventure and sports events. Another website operated by the Complainant at “www.outsideinfo.com” features classified advertisements and information about travel-related clothing, equipment, and health and fitness products.

The Complainant asserts that it has published OUTSIDE magazine in the United States since 1977 and internationally since 1990; its monthly readership currently exceeds two million, with a paid circulation of over 650,000. The magazine and related products are advertised on the Complainant’s website, as well as on third-party websites such as “www.amazon.com.” Total revenues from OUTSIDE magazine (including advertising revenues from the print and online versions) exceeded US$85 million in 2005.

The Complainant also owns and operates OUTSIDE Television, which since 1998 has produced documentaries on travel, adventure, and environmental activities. These are telecast throughout the United States over the Complainant’s Outdoor Life Network cable television network and also licensed for distribution abroad.

The Complainant alleges that it expended over US$15 million in 2005 advertising OUTSIDE magazine in several media and promoting the magazine, documentaries, and related products at trade shows, seminars, conventions, film festivals, and sporting events, as well as advertising its products online. The Complainant has sponsored sporting events, rock music concerts, film festivals, and other entertainment events in the United States and other countries over a period of years, all branded with the OUTSIDE mark.

The Complainant holds numerous registered trademarks in the United States and other countries, all having to do with travel and outdoor sporting and recreational activities. The Complaint is expressly based on thirteen live trademarks registered to the Complainant by the United States Patent and Trademark Office (USPTO). Those that consist wholly or in part of the typed word “outside,” without other design elements, can be summarized as follows:

These registrations indicate a first use in commerce on dates ranging from December 1996 to July 2004.

The Complainant earlier obtained United States Registration No. 1507125 for a stylized version of the word “OUTSIDE,” used to label OUTSIDE magazine, on October 4, 1988. First use in commerce is shown as November 16, 1976.

The Complaint attaches substantial documentary evidence illustrating the use of these marks, as well as examples of advertising and unsolicited publicity such as media references, events reporting, and industry awards that feature one or more of the OUTSIDE marks.

The Respondent, according to the Declaration of William Blackwood submitted with the Response (and consistent with information found on Florida’s online fictitious names database), is not a legal entity but a registered fictitious name for Verandaglobal.com, Inc. (“Verandaglobal”), a Florida corporation. Mr. Blackwood is a “principal officer” of Verandaglobal. FIRST PLACE is a United States registered trademark by held by Verandaglobal.

Using the trade name “First Place® Internet, Inc.” as the name of the registrant, Verandaglobal has registered several domain names based on common English words and phrases. The domain names are used to direct Internet users to websites with automated, keyword-based, paid advertising links. In addition to the Domain Name, these include such domain names as <healthyfood.com>, <homefitness.com>, <lodges.com>, <activewear.com>, and <shelters.com>. According to the Response and the Blackwood Declaration, the Respondent contracts with an “advertising feed provider” that uses its own keyword-search database to deliver advertising links to the respective websites to which these domain names resolve. The Respondent states that these links are selected by the advertising feed provider’s search software as potentially relevant to the content of the domain name, which is effectively used as a search keyword. The Respondent receives revenue-sharing payments on the basis of the “keyword bid value” for search terms submitted by advertisers to the advertising feed provider.

The Registrar’s WHOIS database shows that the Domain Name was created in February 1993. It was not originally registered to the Respondent. As reported in the Blackwood Declaration, and as evidenced by an escrow “Closing Statement” included with the Response, Mr. Blackwood purchased the Domain Name from the prior registrant for US$13,000 on March 23, 2005.

It is undisputed that the Respondent put the Domain Name to use in a paid advertising scheme as described above. The Respondent’s “www.outside.com” website to which the Domain Name resolves displays the label “Outside.com,” along with a photograph of a mountain scene and the slogan, “Get outside!” Nothing on the home page (or “landing page”) of the website indicates its source, and there is no copyright notice or “about us” page. Instead, there are links labeled “outside,” “outside lighting,” “outdoor furniture,” “outdoor gear,” “whitewater rafting,” “cross country skiing,” “adventure trips,” and “Alaska trips.” There is also a search box offering the capability of searching “our comprehensive, search-friendly index.” Each of the links takes users to a web page headed in the same manner as the home page but displaying a different list of advertising links to third-party websites. The link labeled “outside” delivers a web page that includes links to third-party sources for discount subscriptions and gift subscriptions to the Complainant’s OUTSIDE magazine.

On July 18, 2006, the Complainant’s legal counsel sent the Respondent a cease-and-desist letter itemizing the Complainant’s trademarks and asserting that the Respondent’s use of the Domain Name was likely to lead to confusion with the Complainant’s OUTSIDE magazine, OUTSIDE Television, and OUTSIDE Films. The Complainant demanded that the Respondent “shut down” its website and transfer the Domain Name to the Complainant.

The Respondent’s legal counsel replied on July 28, 2006, contending that the Respondent used its website as an advertising directory and did not infringe the Complainant’s OUTSIDE mark. The Respondent declined to transfer the Domain Name but said it had taken steps to block OUTSIDE “magazine” as a keyword. As shown on a printout of the Respondent’s website furnished by the Complainant, the home page previously included a link labeled “OUTSIDE Magazine”; that link no longer appears on the website’s home page. According to the Blackwood Declaration, the Respondent has limited ability to control search results generated by the advertising feed provider’s software, but it used an “exclusion” tool to remove that link on the “landing page.” This gesture did not satisfy the Complainant, and the current Proceeding followed.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that its OUTSIDE marks have become internationally famous, in association with outdoors-oriented publications, documentaries, and other goods and services. The Domain Name is identical to the OUTSIDE mark. The Complainant observes that the Respondent has no relation to, or authorization from, the Complainant. The Complainant argues that the Respondent is not entitled to display the mark even for links facilitating the sale of subscriptions to OUTSIDE magazine by third parties. The Respondent’s use of the Domain Name to trigger paid advertisements is not, according to the Complainant, a bona fide offering of goods or services.

The Complainant concludes that the registration and use of the Domain Name was in bad faith, in an illegitimate effort to attract Internet users for commercial gain through confusion with the Complainant’s mark. The Complainant argues that the original registrant had “constructive notice” of the Complainant’s OUTSIDE marks (since OUTSIDE magazine had been published since 1977). The Complainant contends that the mark was famous by the time the Respondent acquired it, and that the Respondent’s links to third parties selling subscriptions to OUTSIDE magazine demonstrate its actual knowledge of the Complainant’s marks and business and warrant an inference of the Respondent’s bad faith.

B. Respondent

The Respondent notes that “outside” is a common English word, and that the Complainant’s trademarks do not exclude other legitimate uses of the word. Indeed, the word “outside” appears in combination with other words in marks registered by others. It cannot, therefore, be assumed that the original registrant of the Domain Name or the Respondent chose the name in bad faith to capitalize on the Complainant’s OUTSIDE marks.

The Respondent argues that using a common word in a domain name in connection with a paid advertising database, prior to notice of a dispute, is a bona fide commercial purpose. The Respondent denies prior knowledge of the Complainant’s OUTSIDE mark and argues that it is not bad faith for the Respondent to contract with a service that uses dictionary words in an automated advertising keyword search system. The Respondent urges that it has no control of the search results delivered after a website visitor clicks on a common-word category link on the website’s home page. Where there is no evidence of a pattern of abusive domain name registrations or specific targeting of the Complainant, the Respondent contends, there should be no presumption of bad faith in registering and using a common word.

The Respondent argues that the Complainant is pursuing the Domain Name in bad faith, within the sense of the Rules, paragraph 15(e).

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:

(i) the Domain Name 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.

Under Paragraph 15(a) of the Rules,

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

A. Identical or Confusingly Similar

The Domain Name (disregarding the immaterial top-level domain appellation “.com”) is identical to two United States registered trademarks held by the Complainant. Thus, it is unnecessary to consider whether other trademarks held by the Complainant, consisting of the word “outdoor” in combination with other words, are confusingly similar to the Domain Name.

B. Rights or Legitimate Interests

The Complainant states, without contradiction, that it has no relationship with the Respondent and has not authorized the Respondent to use its OUTSIDE marks.

The Policy, paragraph 4(c), provides a non-exhaustive list of other circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name, including the following:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services . . . .”

The Respondent contends that Verandaglobal is in the legitimate business of registering “generic” words as domain names and using them for paid keyword advertising on its websites, and that it was engaged in this business prior to notice of the current dispute in July 2006. This does appear to be the Respondent’s business, which was in operation for years before notice of this dispute. Verandaglobal was incorporated in May 2000 to conduct “Internet Business” (according to its application for a federal employer identification number, furnished by the Respondent), and it obtained United States trademark registrations in 2003 and 2004 for marks to be used in connection with “computer services, namely, providing search engines for obtaining data on a global computer network.” The Respondent registered at least eleven other domain names based on common words, or combinations of words, and used them in the same way, to create websites displaying advertising links from an automated, paid advertising search system.

The Complainant argues that such a business is not a bona fide offering of goods or services for purposes of the Policy, paragraph 4(c)(i), citing HBH, L.P. v. LaPorte Holdings, WIPO Case No. D2004-0864 (use of domain names to redirect Internet users to websites with “sponsored links” and “trigger pop-up advertisements,” by a respondent with a history of making such use of domain names based on marks or misspelled versions of marks).

Other Policy panels have concluded that the use of domain names for paid advertising links can be a legitimate commercial activity. See, e.g., Sweeps Vaccum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031 (legitimate use of the domain name to describe “the types of businesses . . . listed on the directory page”); KIS v. Anything.com Ltd., WIPO Case No. D2000-0770 (the evidence suggests that the name was chosen because of its intrinsic value, not because it corresponds to a trademark). The Panel agrees with the conclusion reached in Admiral Insurance Services Limited v. Mr. Adam Dicker, WIPO Case No. D2005-0241: “the use of a generic domain name to provide information about the genus satisfies the requirements of paragraph 4(c)(i) of the Policy.” (In Admiral Insurance Services, the domain name <elephant.com> was used as a genus search term to display Google Adsense advertising links, much as the Domain Name was used in the present case.)

As an early Policy panel concluded in Shirmax Retail Ltd. v. CES Marketing, Inc., AF-0104 (e-Resolution):

“Where the domain name and trademark in question are generic — and in particular where they comprise no more than a single, short, common word — the rights/interests inquiry is more likely to favor the domain name owner. The ICANN Policy is very narrow in scope; it covers only clear cases of ‘cybersquatting’ and ‘cyberpiracy,’ not every dispute that might arise over a domain name. See, e.g., Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy (October 24, 1999).”

Similarly, the respondent in The Landmark Group v. Digimedia.com L.P., National Arbitration Forum case FA285459 (NAF), registered “large numbers of dictionary words” and received revenue from pay-per-click advertising links, at least some of them related to the generic nature of the domain name. The panel in that case held that, “as long as the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks, this business model is permitted under the Policy.” The panel in HP Hood LLC v. hood.com, FA313566 (NAF) agreed, adding that “an established domain name resale enterprise that restricts its portfolio in a good faith effort to avoid misleading the public qualifies as a legitimate interest.”

The Respondent’s domain portfolio, so far as it is reflected in the record in this proceeding, is limited to common words and combinations of words, and there is no evidence in the record suggesting a pattern of abusive domain name registrations. Unless there is persuasive evidence that the Domain Name was selected opportunistically to create confusion and exploit the Complainant’s marks, the Panel would conclude that the Respondent has a legitimate interest in using the Domain Name for a commercial purpose.

Thus, the determination of legitimacy in this case is intertwined with the question of bad faith, which is better addressed below in connection with the third element of the Policy.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), requires the Complainant to demonstrate that the Domain Name “has been registered and is being used in bad faith.” The Domain Name in this case was first registered in February 1993, but the Respondent did not acquire the Domain Name and become the registrant of record until March 2005.

The Complainant asserts that its trademark registrations gave the original registrant “constructive notice” of its marks. This argument is unpersuasive, because the earliest registration of OUTSIDE as part of a standard character mark (OUTSIDE ONLINE) dates from 1996, more than three years after the Domain Name was first registered. The only registered trademark cited by the Complainant before that time is the design mark for OUTSIDE magazine, which was registered in 1988 and does not independently protect the Complainant’s rights to the word “Outside.”

However, the Panel construes the Policy, paragraph 4(a)(iii) as relating only to the Respondent’s registration and use of the mark. Where a respondent has acquired a domain name from a prior registrant, “[a] showing of bad faith acquisition of a domain name substitutes for a showing of bad faith registration.” STX LLC v. Yu nae ho, Jinsu Kim, WIPO Case No. D2006-0567 (citing other decisions under the Policy taking the same view).

Thus, the relevant inquiry is whether the Respondent registered the Domain Name in March 2005 in bad faith and subsequently made bad-faith use of it.

The Policy, paragraph 4(b), sets forth a non-exhaustive list of circumstances indicating bad faith. The Complaint relies on one of these - Policy, paragraph 4(b)(iv):

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Complainant argues that the Respondent had “actual or constructive knowledge” of the Complainant’s rights to the OUTSIDE marks. The Complainant infers that the Respondent chose the Domain Name in order to confuse Internet users and attract them to the Respondent’s website, in the hope of commercial gain in the form of a share of advertising payments from the sponsors of the third-party links displayed there. This inference depends on the fame of the Complainant’s marks and the fact that some links and searches on the Respondent’s website generate pages with links to third parties that sell subscriptions to the Complainant’s OUTDOOR magazine.

The Respondent denies prior knowledge of the Complainant’s OUTSIDE mark. The mark consists of a common English word that appropriately describes many goods and services. The evidence in the record does not persuade the Panel that the mark is so famous that it is “inconceivable that Respondent did not know about Complainant’s OUTSIDE family of marks,” as the Complainant asserts, or that the name “has no value apart from Complainant’s marks.” Indeed, the word appears in many other trademarks and domain names, as the Respondent demonstrates. Thus, even if the Panel accepted the doctrine of constructive notice based on the Complainant’s United States trademark registrations, it could not conclude that the Respondent’s choice of the Domain Name was most probably motivated by an intention to target the Complainant’s marks. See EMAP USA, Inc. v. Dick Jurgens d/b/a Mobile Dick’s Cycle Clinic, WIPO Case No. D2001-0311 (even where the respondent knew of the complainant’s MOTORCYCLIST mark, this was not enough to establish bad faith where there was no pattern of abusive registrations and the respondent had a legitimate reason for selecting the generic name); Ultrafem Inc. v. Warren R. Royal, FA97682 (NAF) (<instead.com> employs a commonly used word to which the complainant cannot claim exclusive rights; “the first to register a domain name containing a generic or descriptive mark should prevail absent bad faith and a lack of legitimate interest”); Energy Source Inc. v. Your Energy Source, FA96364 (NAF) (respondent entitled to use domain name comprising generic or descriptive terms that are not exclusively associated with the complainant’s business).

Nor is the Panel persuaded that the presence of advertising links to alternative sources of OUTSIDE magazine subscriptions (among hundreds of unrelated links) implicates the Respondent’s knowledge of the Complainant’s marks and intent to confuse Internet users. The Respondent denies such knowledge and intent. There is no evidence in the record that casts doubt on the Respondent’s claim that the advertising links are served automatically by a third-party advertising feed provider using keyword search techniques rather than human selection. The automated advertising feed arrangements are such that it cannot be assumed that the Respondent requested such links or was even aware of them before receiving notice of this dispute. In the face of the Respondent’s denials and the automated nature of the advertising links, the Panel considers these particular links insufficient to prove the Respondent’s intent to mislead Internet users by means of the Domain Name itself.

In short, the Panel is unwilling to attribute bad faith to this search software. And it does not feel warranted in presuming bad faith on the part of a company using such software when the “keywords” it provides are merely dictionary words.

The Panel also does not construe the Respondent’s removal of an “OUTSIDE magazine” link from its home page, following correspondence from the Complainant, as an “admission” of bad faith, as the Complainant urges. The Respondent says it removed the link as a “courtesy” to the Complainant, and the gesture could easily be understood as a rational effort to avoid a costly dispute.

Weighing all the evidence in a substantial record, the Panel concludes that the Complainant has not met its burden under the Policy of establishing that, more likely than not, the Respondent registered and used the Domain Name in bad faith.

7. Reverse Domain Name Hijacking

By citing the Rules, paragraph 15(e), the Respondent implicitly requests a finding of Reverse Domain Name Hijacking. This is defined in the Definitions section of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Paragraph 15(e) of the Rules provides as follows:

“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

The Rules do not provide for monetary remedies or specific relief in such a case. In any event, the Complainant holds relevant trademarks, provides considerable evidence, and advances creditable arguments under the Policy. The Panel finds that the Complainant did not meet its burden of persuasion on the element of bad faith, but not that it initiated this proceeding in bad faith. The Respondent’s request for a finding of abuse of the administrative proceeding is denied.

8. Decision

For all the foregoing reasons, the Complaint is denied.

Date: December 6, 2006