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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Harris Publications, Inc. v. Walter Leaphart

Case No. DTV2008-0005

1. The Parties

The Complainant is Harris Publications, Inc., New York, New York, United States of America, represented by Davis & Gilbert LLP, United States of America.

The Respondent is Walter Leaphart, Los Angeles, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <xxlmag.tv> is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2008. The filed Complaint named Whois Privacy Protection Service, Inc. as the Respondent, attaching a print out of the applicable “Whois” information dated May 15, 2008, which indicated that entity as the listed registrant for the Domain Name. On May 20, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. Later that day, eNom transmitted by email to the Center its response identifying Walter Leaphart as the registrant and providing contact details. In response to a notification by the Center that the registrant information had changed, the Complainant filed an Amendment to Complaint on May 28, 2008, naming Walter Leaphart as the Respondent. 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 Amendment to Complaint, and the proceedings commenced on May 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 18, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 19, 2008.

The Center appointed Sally M. Abel as the sole panelist in this matter on June 27, 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.

4. Factual Background

The Complainant, Harris Publications, Inc., is the owner and publisher of XXL magazine, a popular publication devoted to hip-hop music and the urban lifestyle. The Complainant has published its magazine in print form under the mark and name XXL, since 1997. The Complainant registered its domain name <xxlmag.com> in June, 1998, and has been publishing a web-based edition of its magazine since that year. XXL magazine is the largest selling music and lifestyle magazine in United States of America, boasting a monthly circulation of over 1.8 million readers.

The Complainant owns a U.S. federal trademark registration for XXL (Reg. No. 2,105,347), issued October 14, 1997 for “magazines published periodically, dealing with hip hop music, and matters relating to the hip hop genre”.

On May 5, 2007, the Respondent registered the domain name <xxlmag.tv> (the “Domain Name”), using the Whois Privacy Protection Service to mask his identity in the registration records. When the Complaint was filed, the <xxlmag.tv> domain name redirected to another site, <carsondaly.tv>. The <carsondaly.tv> site is purportedly hosted by television personality Carson Daly, and contains music and videos related to alternative rock and mainstream pop musicians. Neither Carson Daly nor the content contained on the site is affiliated with the Complainant.

The Complainant sent a letter to Whois Privacy Protection Service, Inc. on March 7, 2008 objecting to the use of the Domain Name. The Complainant received no reply. After being apprised, in this proceeding, of the Respondent’s name and address, the Complainant sent a copy of the Amendment to Complaint and of the original Complaint to the Respondent by first class mail. The Respondent did not respond. As recently as July 9, 2008, the Respondent’s <xxlmag.tv> domain name continued to redirect to <carsondaly.tv>.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the Domain Name is identical or confusingly similar to its federally registered and incontestable mark XXL, and identical to its own domain name <xxlmag.com>. Specifically, the Domain Name consists of the mark XXL, combined with the word “mag,” a commonly-recognized abbreviation of the word ‘magazine.’

The Complainant alleges that the Respondent possesses no rights or legitimate interests in respect of the Domain Name, as the Complainant’s statutory and common law rights in the XXL mark pre-date the registration date of the Domain Name. The Respondent is not related to, licensed by, or affiliated with the Complainant and the Complainant has never authorized or granted permission to the Respondent to use its mark XXL or to obtain a Domain Name identical or confusingly similar to it. The Complainant further alleges that the Respondent registered the Domain Name with. Additionally, the Complainant alleges that Respondent’s use of an identity-masking service to avoid identification as the owner of the Domain Name, despite actual or constructive knowledge of the Complainant’s rights in the XXL mark as a result of the Complainant’s United States trademark registration, its use of that mark in commerce, and the Respondent’s own involvement in the music industry.

The Complainant alleges that the Respondent’s registration and use of the Domain Name was in bad faith, in that the Respondent acquired the Domain Name to intentionally attract, for commercial gain, Internet users to another site by creating a likelihood of confusion with the Complainant’s marks. The Complainant also alleges that the Respondent acquired and used the Domain Name to generate traffic with actual knowledge of the Complainant’s mark, and that the odds are slim that Respondent did not have knowledge of the Complainant’s prior well-known use of the XXL mark and of the domain name <xxlmag.com> when the Respondent chose the disputed domain name for use with services similar to the Complainant’s. The Complainant further alleges that the Respondent’s use of the Domain Name to redirect to another site and its failure to transfer or release the Domain Name also constitute bad faith having registered at least one other domain name under his own name, evinces bad faith as well.

B. Respondent

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

6. Discussion and Findings

The Rules provide: “If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the Complaint.” Rules, paragraph 5(e). See also Rules, paragraph 14. There is no response in this case; there are no exceptional circumstances presented. The Complaint establishes that the Complainant has met its burden of proof on each of the required elements.

A. Identical or Confusingly Similar

The Complainant unquestionably owns trademark rights in XXL. While the Domain Name in question is not identical to the mark, it is confusingly similar. The <xxlmag.tv> Domain Name differs from the Complainant’s mark only in that the word “mag,” short for ‘magazine,’ has been added, and the TLD is different. These are distinctions without a difference. See Advance Magazine Publ’rs Inc. v. Buy This Domain, WIPO Case No. D2002-0803 (November 1, 2002) (addition of “mag” “does not reduce the similarity, because ‘mag’ is short for ‘magazine,’ which is Complainant’s primary business”), Deutsche Telekom AG v. Dexcom Holdings B.V., WIPO Case No. DTV2006-0001 (March 12, 2006) (addition of a TLD does not affect the confusing similarity or identity between domain name and trademark). It is beyond question that the Domain Name is confusingly similar to the Complainant’s mark. Furthermore, the Domain Name in question is identical to the Complainant’s own domain name; the only difference between the two is the TLD.

The Complainant has met its burden on this element of the Policy.

B. Rights or Legitimate Interests

There is nothing in the record to suggest that the Respondent has any rights or legitimate interests in the Domain Name. The Complainant has made out a prima facie case in this respect. The Respondent has not filed a Response.

The Complainant has met its burden on this element of the Policy.

C. Registered and Used in Bad Faith

The Panel finds the Respondent’s registration and use of the Domain Name in question is in bad faith pursuant to paragraph 4(b)(iv) of the Policy.

The Complainant argues that the Domain Name was registered and used in bad faith to divert Internet users to the Respondent’s website for commercial gain based on confusion with the Complainant’s mark. Again, the Respondent has not denied these allegations or provided any evidence to support a finding that it registered and used the Domain Name in good faith.

The mark XXL appears to have long and extensive use associated with the Complainant, and is the subject of a long-standing federal registration relating to music-themed publications. It is reasonable to infer, given the allegations of the Complainant and the Respondent’s silence, that the Respondent was aware of the Complainant’s mark when it registered and started use of the Domain Name. Based on the record presented, it further appears that the Domain Name was registered and used to divert users looking for the Complainant’s website. Therefore, in the absence of evidence to the contrary, the Panel concludes the Respondent’s registration of <xxlmag.tv> and use in connection with a music-themed website constitutes bad faith registration and use in violation of the Policy.

The Complainant has met its burden on this element of the Policy.

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 <xxlmag.tv> be transferred to the Complainant.

Dated: July 11, 2008