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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Media West-GSI, Inc., and Gannett Satellite Information Network, Inc. (collectively "Complainant") v. Damian Macafee (Respondent)

Case No. D2000-1032

Media West-GSI, Inc. and Gannett Satellite Information Network, Inc. are referred to collectively as "Complainant". Media West-GSI, Inc. is stated in the Complaint to be a subsidiary of Gannett Satellite Information Network, Inc. and have offices at 50 West Liberty Street, Suite 802, Reno, Nevada 89501. Gannett Satellite Information Network, Inc. is stated to have offices at 1000 Wilson Boulevard, Arlington, Virginia 22229.

Respondent is Damian Macafee, whose listed address according to the Registrar of the domain name in dispute is 69 Charlotte Street, London, W1P 1LA, United Kingdom.

The domain name in dispute is baseballweekly.com. The Registrar is BulkRegister.com.

The WIPO Arbitration and Mediation Center (the "Center") has provided documentation showing:

a) The Center received Complainant’s Complaint on August 11, 2000 by e-mail and on August 14, 2000 by hard copy.

b) On August 17, 2000 the Center was advised by Complainant’s authorized representative that on August 11, 2000 Complainant’s authorized representative sent by Federal Express a copy of the Complaint to Respondent Damian Macafee, as required by the Rules, and that Federal Express has informed Complainant’s representative that it was unable to deliver the Complaint, and that, according to Federal Express, the person at that address represented that he was not Damian Macafee and that Damian Macafee no longer resides at that address and has not left a forwarding address.

c) The Complaint states, on information and belief, that Respondent has also used the alias "James M. van Johns". Attached to the Complaint are print-outs of database searches conducted on July 24, 2000 showing Damian Macafee as the owner of the domain name in dispute, and on May 22, 2000 showing James M. van Johns as the owner with a listed address as P.O. Box 846, Johnstown, Pennsylvania, 15907-0846, USA. The print-outs reveal that the domain name was registered on March 27, 2000.

d) On August 22, 2000, in response to an inquiry from the Center, the Registrar BulkRegister.com confirmed that it had received a copy of the Complaint from the Complainant, that the domain name baseballweekly.com was registered with BulkRegister.com, and that Damian Macafee was the current registrant of the domain name. Damian Macafee was also indicated as the administrative and technical contact with the same address and an e-mail address given as macafee@mail.be. The Registrar further confirmed that the Uniform Domain Name Dispute Resolution Policy (the "Policy") applies to the domain name in dispute.

e) On August 23, 2000, the Center forwarded the Notification of Complaint and Commencement of Administrative Proceeding to Respondent. For this purpose, the Center forwarded the Notification to both Damian Macafee, the then current registrant of the domain name, and also to James M. van Johns in whose name the domain name was previously registered according to information provided in the Complaint and confirmed by a database print-out showing James M. van Johns as the registrant on May 22, 2000. The Center forwarded the Notification of Complaint and Commencement of Administrative Proceeding to Damian Macafee by post/courier and e-mail at the addresses provided by the Registrar, and to James M. van Johns by post/courier, facsimile and e-mail at the addresses appearing in the print-out of May 5, 2000, Annex B to the Complaint. A copy was also forwarded to Complainant’s representative at the e-mail address provided in the Complaint.

f) The Notification of Complaint and Commencement of Administrative Proceeding stated that Respondent had twenty days for submitting a Response, and that the last day for its submission was September 11, 2000.

g) On September 12, 2000 the Center forwarded Notification of Respondent Default to Complainant, to the Respondent Damian Macafee and to James M. van Johns, at the addresses and in the matter indicated in paragraph (e) above.

h) On September 14, 2000 the Center forwarded to Complainant, to Respondent Damian Macafee and to James M. van Johns, at the addresses and in the manner indicated in paragraph (e) above, Notification of Appointment of Administrative Panel and Projected Decision Date.

In accordance with paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and paragraph 5 of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Center found that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules and the Supplemental Rules, and further that the payment in the required amount to the Center had been made by Complainant.

The Panel accepts the above findings of the Center and further finds:

i) The Complaint was properly notified to Respondent in accordance with the Rules, paragraph 2(a) on August 23, 2000, advising Respondent that the formal date of the Commencement of the Administrative Proceeding was August 23, 2000, and that September 11, 2000 was the last day for filing a Response by Respondent.

ii) In addition, the Center took the precautionary step of notifying the previous registrant of the domain name in dispute, James M. van Johns, on the same date, August 23, 2000, that the formal date of the Commencement of the Administrative Proceeding was August 23, 2000, and that the last date for filing a response was September 11, 2000.

iii) No response was received by the Center.

iv) The Administrative Panel was constituted of Joan Clark, Q.C., who had previously submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

v) The case file was transferred to the Administrative Panel on September 14, 2000.

vi) As result of enquiries made by the Presiding Panelist to the Center on October 3, 2000, and transmitted by the Center to Complainant’s authorized representative, the latter has produced a page from the database print-out of the domain name in dispute which was inadvertently omitted from one of the annexes to the Complaint. In addition, Complainant’s authorized representative has provided copies of documents from the United States Patent and Trademark Office certifying assignments of Complainant’s registered trademark as described under Section 4A below.

Copies of documents from the United States Patent and Trademark Office produced with the Complaint, and subsequently in response to an enquiry from the Presiding Panelist transmitted to Complainant’s authorized representative, show that Media-West-GSI, Inc. is the owner of the trademark USA TODAY BASEBALL WEEKLY registered in the United States Patent and Trademark Office under number 1,738,275, that the mark was originally registered in the name of Gannett Co., Inc. which assigned the mark to Gannett Satellite Information Network, Inc. and that the latter company assigned the mark to Media West-GSI, Inc.

The copy of the certificate of registration indicates that the mark was first used on April 5, 1991, and was registered on December 8, 1992.

Complainant’s authorized representative has stated that the mark, while owned by Media West-GSI, Inc., is used under licence by Gannett Satellite Information Network, Inc., and further that the original registrant Gannett Co., Inc. is the ultimate parent company of both parties constituting, collectively, Complainant.

The Complaint states that Complainant has published USA TODAY BASEBALL WEEKLY since 1991 and that the words "BASEBALL WEEKLY" predominate in the title.

The Complaint states that Complainant often refers to itself as BASEBALL WEEKLY, that the publication is known to the public as BASEBALL WEEKLY, and further that Complainant publishes an on-line version of BASEBALL WEEKLY.

The Complaint states that it has registered the domain names baseballweekly.net and baseballweekly.org. However, the computer print-outs from Network Solutions, Inc. WHOIS database attached to the Complaint show the registrant of these domain names to be USA TODAY.

The Complaint states that BASEBALL WEEKLY magazine is the only national magazine entirely devoted to coverage of major league baseball and is the largest selling sports magazine on the newsstand, with a larger circulation than Sports Illustrated and the Sporting News, as well as Newsweek and Time.

The Complaint further states that Complainant has spent over eight years and millions of dollars to establish and operate its BASEBALL WEEKLY magazine and to develop goodwill and an outstanding reputation in its BASEBALL WEEKLY and USA TODAY BASEBALL WEEKLY marks.

The Complaint further states that Complainant has developed extremely valuable goodwill and an outstanding reputation in the BASEBALL WEEKLY mark which is an indication of high quality and of origin exclusively with Complainant.

The Complaint states that Respondent’s domain name, baseballweekly.com, is identical to Complainant’s BASEBALL WEEKLY mark and confusingly similar to Complainant’s registered USA TODAY BASEBALL WEEKLY mark.

The Complaint relates Complainant’s efforts to contact Respondent, beginning with a letter of April 25, 2000 sent by Federal Express to Damian Macafee which was returned as "undeliverable", followed by an e-mail letter from Complainant to Damian Macafee sent on May 2, 2000, to which Complainant received no response.

At the request of Complainant’s counsel, BulkRegister.com contacted the registrant, giving him fifteen days to provide accurate contact information.

Following this, on May 11, 2000, counsel for Complainant received an e-mail, the sender of which was not identified, but which came from the e-mail address of James M. van Johns and indicated that the owner of the domain name in question may be in the hospital, and complained of the "abusive" telephone call from the business manager of the Registrar of the domain name.

On May 20, 2000, Complainant’s counsel received a second e-mail from the same e-mail address, i.e. the address of James M. van Johns, in which the writer complained of the allegedly short time he was given in which to provide information for contacting the domain name owner, and said he would simply change the listing to his own default information.

On May 22, 2000, Complainant’s counsel received a reply from the business manager of the Registrar, confirming the delay of 15 days he had given to the domain name registrant to become compliant.

On or about May 20, 2000, the contact information for the domain name baseballweekly.com was updated to reflect a new registrant name, James M. van Johns.

The Complaint further reports that, on June 5, 2000, Complainant’s counsel sent a letter to James M. van Johns by certified mail and by e-mail, to which Complainant received no response.

On June 27, 2000, BulkRegister.com. WHOIS information for the domain name was updated once again to reflect the registrant name, Damian Macafee.

The Complaint provides a print-out of the baseballweekly.com web site and states that the Respondent is not using the domain name to point to a web site about baseball or for any other editorial purpose, but is currently using the Internet address to display an advertisement for sale of the domain name as well as banner advertisements.

The Complainant asserts that Respondent’s use of false contact information when he registered the domain name constitutes bad faith.

The Complaint concludes that the baseballweekly.com domain name is confusingly similar to Complainant’s BASEBALL WEEKLY trademark, alleges that Respondent has no rights or legitimate interests in respect of the domain name in issue which Complainant never authorized Respondent to use, and that Respondent has registered and used the domain name in bad faith.

The Complaint requests that the Administrative Panel issue a decision that the domain name baseballweekly.com be transferred to Complainant.

No response was filed on behalf of Respondent, either by the current registrant Damian Macafee or the prior registrant James M. van Johns, although the Center forwarded to each of them, at their respective addresses indicated by the Registrar in the case of Damian Macafee and, in the case of James M. van Johns, on the print-out of the domain name data when the latter was registrant.

Pursuant to paragraph 4(a) of the Policy, Complainant must prove each of the following in order that Respondent be required to submit to a mandatory administrative proceeding:

(i) The domain name in issue is identical or confusingly similar to Complainant’s trademark or service mark, and

(ii) Respondent has no rights or legitimate interests in respect of the domain name, and

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

Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of the registration and use of a domain name in bad faith but are not limitative.

Paragraph 4(c) of the Policy sets out three illustrative circumstances, without limitation, each of which, if proven, shall demonstrate Respondent’s rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) above.

a) Identity or confusing similarity of the domain name to a trademark or service mark in which the Complainant has rights

The domain name baseballweekly.com is identical to Complainant’s unregistered mark BASEBALL WEEKLY. In the opinion of the Presiding Panelist, the suffix ".com", the gTLD, should not be taken into consideration in determining the question of identity.

No response having been filed, there is no explanation from Respondent as to why the domain name baseballweekly.com was adopted, nor has any effort been made to distinguish this domain name from Complainant’s registered and unregistered marks. Nor has any evidence been offered to indicate that "BASEBALL WEEKLY" has been used by anyone other than Complainant, either alone or as part of its registered trademark, other than the use of the domain name in dispute by Respondent. Considerable evidence has been offered to show that Complainant’s marks BASEBALL WEEKLY and USA TODAY BASEBALL WEEKLY have been widely used in association with Complainant.

The Presiding Panelist concludes that, in these circumstances, the domain name in dispute, baseballweekly.com, is confusingly similar to Complainant’s registered mark USA TODAY BASEBALL WEEKLY. The criteria of paragraph 4 (a) (i) of the Policy has been met.

b) Rights or legitimate interests of Respondent in the domain name

The trademark USA TODAY BASEBALL WEEKLY was registered in the United States Patent and Trademark Office on December 8, 1992. In a magazine that Complainant asserts has been published since 1991, entitled USA TODAY BASEBALL WEEKLY, Complainant states that the words "BASEBALL WEEKLY" predominate in the title. Complainant also avers that Complainant often refers to itself as BASEBALL WEEKLY and that, as a result of advertising and extensive use of the name BASEBALL WEEKLY and USA TODAY BASEBALL WEEKLY, Complainant has developed valuable goodwill and an outstanding reputation in the BASEBALL WEEKLY mark.

Complainant has produced excerpts from the .com directory of Network Solutions, Inc., showing that baseballweekly.com was the domain name given to a web site created by Damian Macafee on March 27, 2000, that James M. van Johns was shown as the new registrant as of May 20, 2000 and that the record was updated on June 27, 2000, again showing Damian Macafee to be the registrant.

Since the adoption and extensive use by Complainant of the marks USA TODAY BASEBALL WEEKLY and BASEBALL WEEKLY predate the first entry of baseballweekly.com as a domain name, the onus is on Respondent to establish Respondent’s rights or legitimate interests in the domain name.

Although no response has been filed by Respondent, the Panel has considered the evidence on file with respect to the question of any rights or legitimate interests Respondent may have had in the domain name.

The evidence filed by Complainant and the evidence produced in a URL print-out provided by the Center give no indication of any use of the domain name by Respondent or the prior registrant of the domain name, other than to transfer the domain name back and forth between them and to announce on the internet, as of July 24, 2000 (Annex K to the Complaint), and as of August 21, 2000 (URL print-out provided by the Center), that

"Web site for Domain name BASEBALLWEEKLY.COM is under construction!"

These print-outs give no indication that the domain name baseballweekly.com was used by Respondent in connection with the bona fide offering of goods or services, or indeed that there were any preparations for such use, either before or after the Respondent was given notice of the dispute. Nor is there any indication that Respondent was commonly known by the domain name, or that he was making a legitimate noncommercial or fair use of the domain name.

The Panel concludes that the Respondent has no rights or legitimate interests in respect of the domain name.

The criterion of paragraph 4(a)(ii) of the Policy has been met.

c) Registration and use of the domain name in bad faith

On the URL print-out provided by the Center, which was obtained on August 21, 2000, and a print-out dated June 20, 2000 provided by Complainant’s authorized representative, statements appearing on the web site under the domain name baseballweekly.com read in part as follows:

"Before you e-mail…

1. You agree that you have come here with a sincere, honest, and legitimate interest in purchasing the "BASEBALLWEEKLY.COM" domain name.

2. You will use this e-mail address ONLY for dollar offers on the "BASEBALLWEEKLY.COM" domain name, and for no other purpose. Dollar offers you make via e-mail may be legally binding, so offer only what your organization fully intends to pay. (Kind inquiries are also acceptable.)

3. Use of this e-mail address for any other purpose than an honest domain name inquiry (i.e. harassment, abuse, etc.) may be processed as an illegality.

I agree to all of the above, even if I have not read it…

I am interested in purchasing the " BASEBALL WEEKLY.COM" domain name.

Yes, I agree - PROCEED TO E-MAIL!

Yes, I agree - but the link above didn’t work

No I don’t agree, go back

It is clear from the above that the domain name baseballweekly.com has been registered for the sole purpose of selling it, and not for the purpose of using it in connection with an offering of goods or services, other than the domain name itself. Although the above statements do not constitute an offer to sell the domain name, they are an invitation to make offers to purchase it, for a sum to be negotiated which would obviously be greater than the cost of registration, that is, for a profit.

Considering that no independent valid reason has been shown for the adoption by Respondent of the domain name baseballweekly.com which was already known and used extensively by Complainant, the Panel concludes the domain name was registered in bad faith.

Considering also that there is no evidence of any attempt by Respondent to use the domain name in association with the bona fide offering of goods and services, considering that the only use by Respondent of the domain name has been to invite offers for its purchase, considering that Respondent has attempted to attract internet users to Respondent’s web site for a commercial gain from the hoped-for sale price of the domain name, and since the natural consequence of the mere registration of the domain name baseballweekly.com is the likelihood of causing confusion between the domain name and Complainant’s marks, the Panel concludes that the domain name has been used by Respondent in bad faith.

The Panel concludes that the domain name baseballweekly.com was registered and is being used by Respondent in bad faith. The criterion of paragraph 4(a)(iii) of the Policy has been met.

(1) The Panel decides, in accordance with the Uniform Domain Name Resolution Policy, paragraph 4:

- that the domain name baseballweekly.com is confusingly similar to the registered trademark USA TODAY BASEBALL WEEKLY, and is identical to the unregistered trademark BASEBALL WEEKLY of the Complainant Media West-GSI, Inc.;

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

- that it has been registered and is being used in bad faith.

(2) The Panel accordingly requires that the domain name baseballweekly.com be transferred forthwith to Media West-GSI, Inc.

Joan Clark
Presiding Panelist

Dated: October 6, 2000