Low Rider Publishing Group Inc. v. SAND WebNames - For Sale

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Low Rider

Publishing Group Inc v. Sand Web Names – For Sale

Case No.

D2001-0578

1. The Parties

The Complainant is Low

Rider Publishing Group Inc a California Corporation whose contact details are

745 Fifth Avenue, New York, NY 10151, USA. The Respondent SAND WebNames – For

Sale has an address at Vukovarska 43, Split/2100, HR, Croatia. The Complainant

is represented by Kieran G Doyle of Cowan, Liebowitz & Latman, P.C. of 1133

Avenue of the Americas, New York, NY 10036, USA. The Respondent who has not

filed a Response is not represented.

2. The Domain Name and

Registrar

The domain name that is

the subject of the Complaint is <lowridermag.com>. The Registrar is Network

Solutions, Inc., of Huntmar Park Drive, Herndon, Virginia, 20170, USA. Notice

of the Complaint was given to the Registrar which has confirmed that the Registrant

is SAND WebNames – For Sale at the address referred to above.

3. Procedural

History

The Complaint was received

in electronic form by the WIPO Arbitration and Mediation Center on April 20,

2001, and in hard copy on April 23, 2001. Acknowledgement of Receipt

of the Complaint by the Center was given on April 24, 2001. Notification of

the Complaint was given to the Respondent on May 4, 2001, by email

and by courier. No response was received from the Respondent and accordingly

Notification of Respondent Default was given by email on May 29, 2001. On June

5, 2001 a Panel was appointed consisting of a single member, Mr. Clive Duncan

Thorne. An extension of time for the Panel’s decision was given until June 22,

2001.

4. Factual Background

The Complainant is a publisher

of special interest magazines. The Complainant and its predecessors have published

LOW RIDER magazine since 1978. A sample of the publication is annexed as Exhibit

4 to the Complaint and features articles and information about classic cars.

The Complainant and its predecessors also publish other magazines in the Low

Rider family of publications including "LOW RIDER EURO", "LOW

RIDER ARTE", "LOW RIDER BICYCLE" and "LOW RIDER BEST".

The Complainant also offers

an online version of its LOW RIDER magazine and has done so since 1996. The

Complainant registered the domain name <lowridermagazine.com> in 1996

and began hosting the Internet site for the Low Rider family of publications

in 1999. The Internet site promotes the Low Rider family of publications generally

and features articles and interactive resources about the same topics as appear

in the hard copy magazines. The Complainant has exhibited (Exhibit 5) a printout

showing the use of its trademarks on the Internet site.

The Complainant asserts

that its LOW RIDER magazine has a paid circulation of over 200,000 and an estimated

United States readership of 1.5 million. It also estimates that each month approximately

250,000 people visit its website. Gross revenue attributable to Low Rider Publications

was over US$ 16.4 million in 2000. The Complainant spent more than US$ 730,000

to advertise and promote the Low Rider family of publications in 2000 and is

projected to spend US$ 775,000 in the current year.

The Complainant is the

sole and exclusive owner of a number of trademark registrations in the United

States which are set out in the Complaint. These include the mark "LOWRIDER"

(number 1557901) in class 16 for magazines. It is also the owner of trademarks

in Japan for LOWRIDER. The Complainant has exhibited certificates of registration

as exhibit 6 to the Complaint.

The Respondent appears

to use the domain name <lowridermag.com> not for the purpose of offering

goods or services but to divert consumers to sites displaying advertisements

for pornographic websites. The Complainant has exhibited examples of these.

The Respondent would appear to receive fees from advertisers each time a user

clicks on to an advertisement in an attempt to exit the Respondent’s sites.

At Exhibit 7, 8, 9, 10, 11, 12, 13, 14 and 15 to the Complaint the Complainant

exhibits print outs showing the results of attempting to reach and exit Internet

sites associated with the domain name <lowridermag.com>.

At Exhibit 7 for example

there is an invitation to "Click Here To Enter!" followed by a further

invitation to "Click Here to Enter Come on in if you want snatch".

Exhibit 8 refers to a "Selection of best sex sites on the net"

and a special offer of "Real Nude Celebs Photos" and makes reference

to Britney Spears, Christina Aguilera, Anna Kournikova and Pamela Anderson.

It also refers to an invitation to view "Thousands of Lesbian Pictures!!

Thousands of Extreme Lesbian Videos Hot young girls with their girlfriends".

Exhibit 9 invites the browser to "Click Here For Sinful Mail FREE Porn!!.

Exhibit 10 is pictorially explicit with images of nude ladies and photographic

images of copulating couples. Exhibit 11 refers to "Todays top 5 sex sites"

with a pornographic photograph of a lady with her legs wide apart exhibiting

her genitalia. Similarly Exhibits 13, 14 and 15 to the Complaint consist of

pornographic images.

In the absence of a Response

the Panel is prepared to accept the Complainant’s evidence as to its registered

and unregistered trademark rights and that the Respondent uses the domain name

to misleadingly divert consumers to different sites displaying advertisements

for pornographic websites.

5. Discussion and Findings

In order to succeed in

its request for an Order to transfer the domain name the Complainant has to

prove that each of the elements set out in paragraph 4(a) of the Uniform Domain

Name Dispute Resolution Policy are present.

These are as follows:-

i) The Respondent’s

domain name is identical or confusingly similar to a trademark or service mark

in which the Complainant has rights.

ii) The Respondent has

no rights or legitimate interest in respect of the domain name.

iii) The Respondent’s

domain name has been registered and is being used in bad faith.

The Panel proceeds to deal

with each of these in turn.

i) The Respondent’s domain

name is identical or confusingly similar to a trademark or service mark in which

the Complainant has rights.

The Complainant has provided

evidence of its trademark rights in the United States and Japan. It has also

provided evidence of long use of the mark LOW RIDER in the United States and

on the Internet. The Panel accepts the Complainant’s submission that the relevant

portion of the domain name <lowridermag.com> is identical or confusingly

similar to the Complainant’s LOWRIDER trademark.

ii) The Respondent has

no rights or legitimate interest in respect of the domain name.

In support of this contention

the Complainant asserts that the Respondent does not own a trademark or service

mark registration that is identical, similar or in any way related to the Complainant’s

"LOWRIDER" trademarks. It also asserts that the Respondents personal

name is not "Low Rider Mag" and that the Respondent does not actually

engage in any business or commerce under the name LOWRIDERMAG. It asserts that

the Respondent is not a licensee of the Complainant and that there has never

been any authorisation by the Complainant to use the Complainant’s trademark.

Rather the Complainant

submits that the Respondent uses the domain name for the purpose of promoting

pornographic websites.

The Panel accepts the Complainant’s

submissions and finds that the Respondent has no rights or legitimate interest

in respect of the domain name.

(iii) The Respondent’s

domain name has been registered and is being used in bad faith.

The Complainant submits

that evidence of bad faith is provided by:-

(a) The registration

by the Respondent of the domain name <lowridermag.com> with knowledge

of the Complainant’s use of the trademark "LOWRIDER" and the Complainant’s

Internet site <lowridermagazine.com>. It asserts that the Respondent registered

and uses the domain name because it is identical or confusingly similar to the

Complainants trademarks.

(b) The Complainant

relies on the Respondent’s business name "SAND WebNames – For Sale"

as evidence that the Respondent is "engaged in abusive domain name registration

within the meaning of the Policy" and is seeking to use the domain name

"to attract Internet users for commercial gain by creating a likelihood

of confusion with the Complainant’s marks as to the source of product or services

on its website locations."

(c) The Complainant

relies upon the fact that the Respondent has apparently engaged in a course

of conduct of registering several domain names including famous marks or celebrity

names and refers to inter alia registrations by the Respondent for <sonyplaystation.com>,

<ticketmaster.com>, and <britneyspears.com>.

(d) The Complaint refers

to the findings of a National Arbitration Forum decision in a complaint (number

FA94722) brought by The North Face Inc against the Respondent in which the Panel

had noted that the Respondent had registered other domain names of prominent

celebrities such as <pamelalee.com> and <zena.com>. The Complainant

exhibits at Exhibit 17 a list of the registrations.

(e) The Complainant

exhibits at Exhibit 19 a demand letter dated January

19, 2001, and sent to the respondent alleging that the Respondent’s registration

and use of the domain name in dispute constitutes trademark infringement and

dilution of the Complainant’s LOWRIDER marks in violation of the United States

Anti Cyber Squatting Consumer Protection Act. No response was received.

Having considered all the

Complainant’s submissions as to bad faith, and taking into account in particular

the pornographic nature of the sites reached through the Respondent’s domain

name the Panel is satisfied that the Complainant’s submissions as to bad faith

are made out.

It follows that the Complainant

has succeeded in all three limbs of paragraph 4(a) of the Policy and succeeds

in its Complaint.

6. Decision

The Complainant requests

that the Panel issues a decision that the domain name <lowridermag.com>

be transferred to the Complainant. The Panel finds for the Complainant and orders

that the domain name <lowridermag.com> be transferred from the Respondent

to the Complainant.

Clive Duncan

Thorne

Sole Panelist

Dated: June

22, 2001