thering.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sports and Entertainment Publications LLC v. Sandberg & Sikorski

Case No. D2007-1693

1. The Parties

The Complainant is Sports and Entertainment Publications LLC, Blue Bell, Pennsylvania, United States of America, represented by Joseph & Associates, United States of America.

The Respondent is Sandberg & Sikorski, New York, New York, United States of America, represented by Gottlieb, Rackman & Reisman, PC, United States of America.

2. The Domain Name and Registrar

The disputed domain name <thering.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2007. On November 16, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On November 16, 2007, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 21, 2007. The Center verified that the Complaint together with the amendment to 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 on November 29, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2007. The Response was filed with the Center on December 19, 2007.

The Center appointed William R. Towns as the sole panelist in this matter on January 3, 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.

On January 11, 2008, the Panel issued a Procedural Order requesting the Complainant to supplement the record regarding its claim of trademark rights no later than January 18, 2008. The date for the Panel’s decision was extended to January 25, 2008 pursuant to paragraph 15 of the Rules. The Complainant’s supplemental submission was forwarded to the Center on January 18, 2008.

4. Factual Background

The Complainant claims right in the federally registered trademark THE RING for use with the boxing publication “The Ring Magazine”. The United States Patent and Trademark Office (USPTO) has issued three registrations for THE RING for use with a magazine about boxing: U.S. Registration Nos. 1,056,983 and 1,659,736, and 1668,505, the earliest of which was issued on January 1977. Although the USPTO’s records currently reflect that the owner of both trademark registrations is Kappa Publishing Group Inc, in response to the Panel’s Procedural Order, the Complainant has submitted documentary evidence that it has been assigned all rights, title and interests in these marks.

The Respondent manufactures and sells jewelry products, including engagement rings, wedding and anniversary rings, and other types of rings. The Respondent registered the disputed domain name <thering.com> in September 1995. The Respondent during the period 1998-2001 used the disputed domain name to direct Internet users to its website displaying and providing information about such rings, but subsequently discontinued this use in favor of <ajaffe.com>, which reflects the Respondent’s A. JAFFE brand. The Respondent, however, continues to use the disputed domain name as a corporate email address for its employees.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it is the owner by assignment of all rights, title and interest in the federally registered trademark THE RING for use with the boxing magazine of the same name. The Complainant asserts that the disputed domain name is identical to and confusingly similar to its trademark, and contends that the Respondent has never used the disputed domain name for any purpose. In view of this, the Complainant maintains that the Respondent is in bad faith under the Policy.

B. Respondent

The Respondent contends that the Complainant has failed to establish rights in a trademark that is identical or confusingly similar to the disputed domain name.

Further, the Respondent contends that it has established right and legitimate interests in the disputed domain. Specifically, the Respondent maintains that since shortly after its registering the disputed domain name in September 1995, the disputed domain name has been used the as a corporate email address for the Respondent’s employees. According to the Respondent, it also used the disputed domain name between 1998 and 2001 to direct Internet users to the Respondent’s website, where the Respondent’s advertised its engagement rings, wedding and anniversary rings, and other types of rings. The Respondent indicates it phased out such use of the disputed domain name in 2001 in favor of using the domain name <ajaffe.com>, which reflects the Respondent’s A. JAFFE brand. Given the foregoing, the Respondent asserts that there can be no claim of bad faith registration and use in the circumstances of this case. The Respondent also contends that this is a case of reverse domain name hijacking.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See, Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) 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) The Respondent has no rights or legitimate interests with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer are the sole remedies provided to a complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, the Complainant must demonstrate rights in the mark that it asserts the disputed domain name is identical or confusingly similar to. The Complainant has presented documentary evidence of the assignment to it as of August 30, 2007 of all rights, title and interests in the federally registered mark THE RING for use in connection with the boxing publication “The Ring Magazine”.

Accordingly, the Panel concludes that the Complainant has established trademark rights in THE RING.

The Panel further finds that the disputed domain name <thering.com> is identical and confusingly similar to the Complainant’s mark. While the Respondent argues it has not used the disputed domain name in any way likely to cause confusion with the Complainant’s mark, for purposes of paragraph 4(a)(i) of the Policy the question of identity or confusing similarity is evaluated based on a comparison of the Complainant’s mark and the alphanumeric string constituting the domain name at issue. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson Sr.,WIPO Case No. D2000-1525. When so compared, the disputed domain name is identical and confusingly similar to the Complainant’s mark

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, the Complainant is required to make a prima facie showing under paragraph 4(a)(ii) of the Policy in order to shift the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name under paragraph 4(c). The Panel notes that the disputed domain name is identical to the Complainant’s mark. It is uncontroverted that Respondent has not been authorized to use the Complainant’s mark or to register a domain name corresponding to the mark. The Complainant further alleges that the Respondent does not use the disputed domain name for any purpose.

The Panel considers the foregoing sufficient to make a prima facie showing under paragraph 4(a)(ii). See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020. Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has presented satisfactory proof of the use of the disputed domain name between 1998 and 2001 to direct Internet users to a website on which the Respondent advertised various types of rings. The Respondent appears to have used the disputed domain name in a descriptive sense, and a number of panels have held that a respondent may have a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive word provided the domain name was not registered with the Complainant’s mark in mind, even where the domain name is confusingly similar to the registered mark of a complainant. See, e.g., National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424. Thus, where a respondent registers a domain name consisting of a “dictionary” word because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities, as distinct from its trademark value, the use of the domain name consistent with such good faith belief may establish a legitimate interest. See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304. See also Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964 (domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of its value as a trademark).

The Respondent further has presented persuasive evidence of its continuous use of the disputed domain name with its corporate e-mail since shortly after the registration of the domain name in 1995. Prior panels also have concluded that a respondent’s good faith use of a domain name with email prior to any notice of the dispute may establish a legitimate interest. See Nishan Systems, Inc. v. Nishan Ltd., WIPO Case No. D2003-0204.

While paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name once the complainant has made a prima facie showing, the ultimate burden of proof with respect to all three elements of paragraph 4(a) of the Policy remains with the complainant. Because, as discussed below, the Panel concludes that the Complainant has failed to meet its burden of proof respecting bad faith registration and use under paragraph 4(a)(iii) of the Policy, a determination whether the Respondent has established rights or legitimate interests in the disputed domain name is not necessary to the Panel’s decision in this case.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

As noted above, the Respondent appears to have been making a descriptive use of the disputed domain name. The Complainant has not presented any persuasive evidence of bad faith registration or use under any of the subdivisions of paragraph 4(b), and the Panel otherwise is unable to conclude from the circumstances of this case that the Respondent registered the disputed domain name with the aim of profiting from and exploiting the Complainant’s mark. See CNR Music B.V. v. High Performance Networks, Inc., WIPO Case No. D2005-1116. Accordingly, the Panel concludes that the Complainant has failed to satisfy its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy.

E. Reverse Domain Name Hijacking

Paragraph 1 of the Rules defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. To prevail on such a claim, a respondent must show that the complainant knew of the respondent’s unassailable rights or legitimate interests in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the complaint in bad faith. Sydney Opera House Trust v. Trilynx Pty. Ltd., WIPO Case No. D2000-1224 and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151. In the Panel’s opinion, the Respondent has not made the necessary showing to prevail on its claim of reverse domain name hijacking.

7. Decision

For all the foregoing reasons, the Complaint is denied.

William R. Towns
Sole Panelist

Date: February 8, 2008