Martha Stewart Living Omnimedia, Inc. v. XC2

WIPO

Arbitration and Mediation Center

ADMINISTRATIVE PANEL

DECISION

Martha Stewart Living Omnimedia, Inc. v. XC2

Case No. D2003-0944

1. The Parties

The Complainant is Martha Stewart Living Omnimedia, Inc., New York, New York, United States of America, represented by Kenyon & Kenyon, United States of America.

The Respondent is XC2, Hong Kong, SAR of China.

2. The Domain Name and Registrar

The disputed domain name <marthastewartkids.com> is registered with Namezero.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 26, 2003. On November 28, 2003, the Center transmitted by email to Namezero a request for registrar verification in connection with the domain name at issue. On December 10, 2003, Namezero 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, billing, 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 on December 11, 2003.

In accordance with the Rules, paragraph 5(a), the due date for Response was

December 31, 2003. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on January 6, 2004.

The Center appointed Peter G. Nitter as the sole panel in this matter on January 14, 2004.

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.

4. Factual Background

Complainant is a publicly traded company, which employs approximately 580 employees,

and in 2002 had revenues of USD 295 million. Complainant uses the brand name

"Martha Stewart", emanating from its founder and current Chief Creative

Officer, Martha Stewart. The brand name is used across four business segments

– Publishing, Television, Merchandising and Internet/Direct Commerce – in which

the Complainant is a provider of "how to" ideas, products and other

resources for the home.

Complainant publishes several magazines, including Martha Stewart Living, Martha

Stewart Weddings, Martha Stewart Baby and Martha Stewart Kids. The magazine

Martha Stewart Kids has been published since 2001 and currently has a circulation

of 200,000 to 220,000 per issue.

Complainant is the owner of several trademarks containing the designation MARTHA

STEWART, such as MARTHA STEWART EVERYDAY, MARTHA STEWART LIVING, MARTHA STEWART

HOME and MARTHA STEWART WEDDINGS (the "Martha Stewart Marks").

Both in the United States and in other countries such as Australia, Brazil,

Canada, the countries of the European Union, Hong Kong, SAR of China, Japan

and several others, the Complainant has registered several trademarks comprising

the designation MARTHA STEWART. The first of these registrations, AT HOME WITH

MARTHA STEWART, was registered 14 November, 1989.

5. Parties’ Contentions

A. Complainant

The domain name is identical or confusingly similar to the trademarks and service

marks in which the Complainant, Martha Stewart Living Omnimedia, Inc. ("MSLO")

has long-standing rights.

The Complainant has rights in several marks containing the designation "Martha

Stewart," thus they also have rights in the mark "Martha Stewart."

The Complainant publishes the magazine "Martha Stewart Kids" and

thus has the right to the mark "Martha Stewart Kids."

The domain name at issue is identical to the magazine name "Martha Stewart

Kids," and is nearly identical to the other Martha Stewart Marks that the

Complainant holds and to Martha Stewart Living Omnimedia, the Complainant’s

well-known trade name.

The addition of a common, generic word such as "kids" does not reduce

the likelihood of confusion. Hence, the domain name is identical or virtually

identical to the name of MSLO’s magazine "Martha Stewart Kids" and

to the trademark and service mark registrations held by the Complainant.

The Respondent has no rights or legitimate interests in respect of the domain

name.

The Respondent’s intent is to divert Internet traffic to its own website for

purposes of making a profit. Respondent uses the domain name to connect to websites

offering goods and services not at all related to the Complainant or to Martha

Stewart personally. Some of the links for topics like "Martha Stewart"

and "Martha Stewart Kids Magazine" will take the user to websites

that sell discounted magazines, most of which are competitors of the Complainant’s

own magazines.

Respondent is clearly using the domain name in bad faith.

By its website activities, the Respondent for commercial gain has attempted

to attract Internet users who, being familiar with the Martha Stewart Marks

and the magazine Martha Stewart Kids, would be confused as to the source, sponsorship

or endorsement of the website or the products or services offered by the Complainant.

The Respondent is trying to confuse consumers and disrupt the business of a

competitor. The Respondent is intentionally trying to redirect users to its

website and thereby capitalizing on the confusion. Furthermore, the Respondent

intents to trade on the goodwill of the Complainant. All of these circumstances

are according to practice under the Policy, evidence of the Respondent’s bad

faith.

The bad faith is especially pronounced when the Respondent’s website provides

links to websites belonging to the Complainant’s competitors.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has as far as the Panel can see no registered rights to the

mark MARTHA STEWART KIDS. The Complainant has however registered rights to several

marks containing the designation MARTHA STEWART. These numerous registered and

used marks, combined with the fact that the designation is closely linked to

the very famous founder of the company, Martha Stewart, that the Complainant’s

well-known trade name also comprises the designation, and that the Complainant

is the proprietor of the domain name <marthastewart.com>, leads to the

conclusion that the Complainant has rights in the mark MARTHA STEWART.

The Complainant also claims to have exclusive rights in the mark MARTHA STEWART

KIDS. Those rights would have to be based on the mark’s strong notoriety.

According to the Complainant, the magazine Martha Stewart Kids has been published

since 2001, and that each issue currently has a circulation of approximately

200,000 to 220,000 copies. The Panel cannot see that this definitely proves

that MARTHA STEWART KIDS has such a strong notoriety that the Complainant has

achieved exclusive rights to such a trademark.

However, this is not decisive in this matter. According to the Policy, paragraph

4(a)(i), it is sufficient if the domain name is confusingly similar to a trademark

owned by the Complainant. The question can thus be formulated as to whether

the domain name is confusingly similar to the mark MARTHA STEWART, in which

the Complainant has rights.

The domain name consists of the mark MARTHA STEWART with the addition of the

word "kids." Previous cases under the Policy have shown that simply

adding a common or generic term, such as in this case the word "kids,"

to a famous mark is not sufficient to give the domain name an individual meaning

and prevent the overall impression that the domain name has some sort of connection

with the Complainant, see WIPO Cases Nos.

D2001-0174, D2000-0022, D2000-0477

and NAF Case No. FA 95404.

As the Complainant sells a magazine called "Martha Stewart Kids,"

the said suffix is rather than having a segregating effect, quite fitted to

strengthen the impression that the domain name belongs to, or is affiliated

with the Complainant. It is highly likely that Internet users will be lead to

believe that the domain name belongs to the Complainant.

This must especially be so when the trademark contains such distinct words

as MARTHA STEWART, the mark is exceptionally well known and refers to a very

famous physical person having the same name and being closely connected to the

Complainant.

Hence, the Panel finds that the domain name in question is confusingly similar

to a mark in which the Complainant has rights, and the prerequisite in the Policy,

paragraph 4(a)(i) is fulfilled.

B. Rights or Legitimate Interests

The Panel has considered the assertion made by the Complainant as to the lack

of rights or legitimate interests of the Respondent in respect of the domain

name at issue.

The Complainant claims that the Respondent uses the domain name to divert users

to its own website for commercial gain, by offering goods and services not connected

with the Complainant on the site, and also having links to sites selling such

goods and services, these often being goods and services provided by competitors

of the Complainant.

The Panel has visited the "www.marthastewartkids.com" website, in

order to investigate whether evidence could be found as to the Respondent’s

rights or legitimacy of interest in the contested domain name.

At present the site does not appear in the same form as it is presented in

the Complaint, Exhibits E to H.

However, the website still contains links to other sites offering discounted

magazines, both the Complainant’s magazines and its competitors’. Furthermore,

the website still contains links to different sites offering other sorts of

goods and services, under the heading "Popular Searches," with no

relation to the Complainant. Topics under the heading are for example "Kids,"

"Crafts," "Recipes" and "Birthdays."

The Panel is of the opinion that the site, also as it now appears, is used

to divert customers to sites offering goods and services with no affiliation

to the Complainant.

There is nothing on the site indicating that the Respondent is offering the

goods in bona fide. The Complainant is very well known all over the world and

there is no reason to believe that the Respondent was not familiar with the

company and the person Martha Stewart.

Neither is there any information on the site indicating that the Respondent

has been commonly known by the domain name.

Thus, the panel has found nothing on or outside of the website as being evidence

of the Respondent’s legitimate interest in the domain name.

Hence, the Panel finds that the Respondent does not have rights or legitimate

interests in the domain name, and the prerequisites in the Policy, paragraph

4(a)(ii) are therefore fulfilled.

C. Registered and Used in Bad Faith

According to the Policy, paragraph 4(b)(iv) it is to be regarded as evidence

of bad faith if by using the domain name the Respondent, for commercial gain,

intentionally attempts to attract Internet users to his website, by creating

a likelihood of confusion with the Complainant’s mark.

In this case it is clear that the Respondent is using the domain name in such

a manner. The Respondent registered a domain name that is identical to the name

of a magazine. The magazine is distributed by a company whose name comprises

the distinct parts of the magazine and disputed domain name, originating from

its famous founder, Martha Stewart. The Respondent must have been familiar with

these facts when the domain name was registered.

The domain name is currently used for attracting Internet traffic to the website

for again diverting the users to sites offering various goods and services.

The Panel finds that this is done by intentionally confusing the users as to

the source, sponsorship, affiliation or endorsement of the website, as most

users will be familiar with Martha Stewart and the Complainant’s business, and

probably will believe the site is owned by the Complainant. Some of the goods

and services offered originate from the Complainant, but most of what is offered

does not. The Respondent is capitalizing on this confusion, something that in

previous panel decisions under the Policy has been considered evidence of bad

faith, see WIPO Case No. D2000-0326.

The Respondent is thus also making profit by exploiting the Complainant’s goodwill

as a widely known provider of goods and services, something that also is evidence

of use in bad faith, see WIPO Case No. D2000-0654.

Finally, the question of use of a domain name in bad faith is especially clear

if the site contains links to websites belonging to competitors of the Complainant,

see WIPO Case No. D2002-0835. In this

case the website for example contains links to magazines like "Better Homes

and Gardens" and "Country Homes," which are in direct competition

to the Complainant’s products.

Hence, the Panel finds that the domain name is registered and used in bad faith

by the Respondent, and the condition in the Policy, paragraph 4(a)(iii) is fulfilled.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy

and 15 of the Rules, the Panel orders that the domain name, <marthastewartkids.com>,

be transferred to the Complainant.

Peter G. Nitter

Sole Panel

Date: January 23, 2004

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