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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Edwards Publications, Inc. v. Todd Greenhalgh

Case No. D2007-1342

1. The Parties

The Complainant is Edwards Publications, Inc., United States of America, represented by McKee, Voorhees & Sease P.L.C., United States of America.

The Respondent is Todd Greenhalgh, United States of America.

2. The Domain Name and Registrar

The disputed domain name <windrivervoices.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2007. On September 11, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On September 12, 2007, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 September 25, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 15, 2007. The Response was filed with the Center on October 16, 2007. Based on paragraph 10(c) of the Rules, the Panel has decided to allow the Respondent’s one day lateness in filing the Response.

The Center appointed Dennis A. Foster as the sole panelist in this matter on October 29, 2007. 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.

There were supplemental filings from the Parties which the Panel in its discretion declined to accept comprising an e-mail communication from the Complainant dated October 29, 2007 and two e-mails from the Respondent dated November 6, 2007. There were also e-mail communications from a third party dated October 22, 24 and 25, 2007 which (although included with the case file) have not been necessary for the Panel to consider in reaching its decision.

4. Factual Background

The Complainant is a United States of America company that publishes periodicals in the state of Wyoming. One such periodical was entitled “Fremont County Voices” before the Complainant changed the title to “Wind River Voices” in June 2007.

The Respondent, who previously rendered writing services for the Complainant, registered the disputed domain name <windrivervoices.com> on July 25, 2007.

5. Parties’ Contentions

A. Complainant

The Complainant, a United States of America company, publishes several periodicals including one named “Wind River Voices.” With a print circulation of about 7,000 in the Wind River area of the state of Wyoming, United States of America, that periodical is also distributed over the internet.

Until June 2007, the “Wind River Voices” publication was known as the “Fremont County Voices,” and the Complainant owns the domain name <fremontcountyvoices.com>. The Complainant owns common law rights in the trademark, WIND RIVER VOICES, and features that mark prominently on its website located at said domain name.

The Complainant’s WIND RIVER VOICES trademark is well known in its circulation area and is an arbitrary (or at least a suggestive) mark because it is not descriptive of newspaper publication. As a result, the Complainant obtained its trademark rights in that mark upon the first date of publication.

The disputed domain name is essentially the same as the Complainant’s trademark, differing by only the insignificant addition of the gTLD, “.com.” Respondent registered the name to intentionally attract internet users who desire access to the Complainant’s website.

The Respondent, a former employee of the Complainant, has never been authorized by the Complainant to use its trademark. The Respondent’s writing services engagement was terminated by the Complainant in July 2007, shortly before the Respondent registered the disputed domain name on July 25, 2007 and after, as the Respondent admits, he instructed another employee of the Complainant to complete the transition from “Fremont County Voices” to “Wind River Voices.” While the Respondent has made some use of the name, it is not in the context of a bona fide offering of goods or services. Accordingly, the Respondent has no rights or legitimate interest in the disputed domain name.

The Respondent registered and is using the disputed domain name in bad faith, as the Respondent’s purpose is to disrupt the Complainant’s business. Moreover, the Respondent uses the name for his website to offer material that competes directly with that offered by the Complainant under its mark. The Respondent has also contacted advertising clients of the Complainant with frivolous claims of copyright infringement by the Complainant.

B. Respondent

In September 2006, the Respondent was hired as an independent contractor to supply the Complainant with newspaper articles for its publication “Fremont County Voices.” In that month, the Respondent brought up the idea of changing the name, “Fremont County Voices,” to “Wind River Voices.”

The Complainant’s claim to common law rights in the mark, “Wind River Voices,” based on the first use of the same is misleading because the Respondent first used the mark, in emails sent from his own personal computer, as early as May 29, 2007. Moreover, the Complainant did not change the heading on its website, found at the domain name <fremontcountyvoices.com>, to “Wind River Voices” until July 2007.

The Complainant routinely overstates its circulation to gain greater advertising revenue. The Complainant also displays little regard for intellectual property rights, as it commonly copies material gained from the internet for use in its periodicals without proper attribution.

The Respondent claims rights in the disputed domain name as he conceived the name, “Wind River Voices,” for an online public interest nonprofit publication.

6. Discussion and Findings

In accordance with paragraphs 4(a)(i)-(iii) of the Policy, the Complainant may prevail in this administrative proceeding and gain a transfer of the disputed domain name <windrivervoices.com> only if the Complainant can demonstrate the following:

- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- The disputed domain name was registered and is being used by the Respondent in bad faith.

A. Identical or Confusingly Similar

The threshold issue facing any panel in a Policy administrative proceeding is whether the complainant indeed has the rights that it claims to its mark. It has been long established that such a mark need not be registered with any specific authority to be eligible for protection under the Policy, so long as common law rights have attached in favor of the complainant. See Bronco Wine Company v. Midnight Wine Cellars a/k/a Joe Thrift, NAF Case No. FA97740; and Stanford Microdevices, Inc. v. Sheryl Morace, WIPO Case No. D2001-0382 (“Given that United States law protects unregistered marks, Complainant [a United States company] can prevail under the first factor if it can show sufficient use of the mark in U.S. commerce to create common law trademark rights.”)

In this case, the Complainant does not present evidence of valid trademark registration, but relies on precisely that concept of common law rights to validate its claim of trademark rights in the mark, WIND RIVER VOICES. However, for common law rights to apply here, the Panel must find that a secondary meaning relating the mark exclusively to the Complainant has been created. Panels in prior UDRP cases have suggested various pertinent criteria for consideration in deciding whether such a secondary meaning has obtained with respect to a trademark. Prominent among those criteria is the duration of time during which a complainant has used its trademark in connection with the goods or services offered under that mark. See Candy Direct, Inc. v. itsalldirect2u.com, NAF Case No. FA514784; Amsec Enterprises, L.C. v. Sharon McCall, WIPO Case No. D2001-0083 (“Relevant evidence of secondary meaning includes length and amount of sales under the mark…”; and also the WIPO Overview of WIPO Panel Views on Selected UDRP Questions and cases cited therein.

In the instant case, the Complainant concedes that it first employed the trademark WIND RIVER VOICES no more than about three months prior to filing the Complaint (i.e., starting in June 2007). The Complainant does not cite, and the Panel has not discovered, any prior Policy decisions where (absent overwhelming evidence of other criterion for example extraordinary marketing or publicity) secondary meaning has been found to have attached to a mark based on so short a span of usage. The Panel is simply not persuaded in the present case that the said trademark has come to be identified exclusively with the Complainant in such an abbreviated lapse of time, even within the limited geographical region suggested by the Complainant – i.e., a portion of the state of Wyoming, United States of America.

The Complainant maintains that its common law rights in the trademark should be considered to have attached upon first use, but the Complainant cites no authority for that proposition. Moreover, the Complainant appears to base its argument on the theory that the claimed mark, WIND RIVER VOICES, is either arbitrary or suggestive, as opposed to descriptive, in the context of publishing. However this may be, the Panel notes that many, if not a majority of, publications in the United States of America, from the great, like The New York Times, to the small, like the Napa Valley Register, contain a specific geographical designation along with a common term not necessarily associated with publishing as does the Complainant’s claimed mark. Furthermore, “Voices” is a descriptive English word that might easily connote communication and thus publication. As a result, the Panel discerns little merit in the Complainant’s argument in this regard.

In view of the above, the Panel rules that the Complainant has failed to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests / Registered and Used in Bad Faith

Because the Complainant has failed to sustain its burden of proof with respect to the requirements of paragraph 4(a)(i) of the Policy, the Panel will not consider whether the Complainant could succeed regarding the requirements of paragraphs 4(a)(ii) and (iii).

7. Decision

For all the foregoing reasons, the Complaint is denied.

Dennis A. Foster
Sole Panelist

Dated: November 12, 2007