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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Belo Corp. v. Liquidating Domains
Case No. D2001-0394
1. The Parties
1.1 The Complainant is Belo Corp., a United States corporation with its principal place of business located in Dallas, Texas, USA.
1.2 The Respondent is Liquidating Domains located at 8635 W. Sahara, Las Vegas, Nevada, USA.
2. The Domain Name and Registrar
2.1 The disputed domain name is <belocorp.com>.
2.2 The registrar of the disputed domain name is Network Solutions, Inc. with a business address in Herndon, Virginia, USA.
3. Procedural History
3.1 Complainant initiated the proceeding by filing a complaint, received by the WIPO Arbitration and Mediation Center ("WIPO") on March 19, 2001.
3.2 On April 2, 2001, all formal requirements for the establishment of the complaint were checked by WIPO and found to be in compliance with the ICANN 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 Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel accepts the WIPO checklist as evidence of proper compliance with the Policy, Rules, and Supplemental Rules.
3.3 On April 2, 2001, WIPO transmitted notification of the complaint and commencement of the proceedings to Respondent.
3.4 On April 24, 2001, WIPO transmitted notification to Respondent of its default in responding to the complaint.
3.5 On April 27, 2001, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On April 27, 2001, the undersigned transmitted by facsimile the executed Statement and Declaration to WIPO.
3.6 On May 1, 2001, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances it would be required to forward its decision to WIPO by May 15, 2001.
The Panel has not received any further requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.
4. Factual Background
4.1 Complainant Belo Corp. owns the trademark and service mark BELO for providing media related services and publications with a claimed first use as early as 1842.
4.2 Complainant Belo Corp. has filed trademark applications for BELO INTERACTIVE, BELO MEDIA SOLUTIONS and BELO MEDIA SOLUTIONS & Design prior to February 9, 2000.
4.3 Complainant Belo Corp. also registered the domain name <belo.com> on April 8, 1996. The domain name is used to host a web site for Belo Corp. The mark BELO is displayed prominently on the web site.
4.4 At least as early as March 9, 2001, the Respondent operated a web site located at <belocorp.com> which offered the domain name for sale. Respondent's web site is no longer active.
5. Parties’ Contentions
"Complainant is one of the largest media companies in the United States with approximately $1.5 billion (USD) in revenue. Complainant operates a diversified group of television broadcasting, newspaper publishing, cable news and interactive media assets in markets throughout the United States. Complainant has been using the trade name "BELO" alone, and in combination with other components, for providing media-related services since at least as early as 1842."
"Complainant has been using the trade name "BELO" and the trade mark "BELO," alone and in combination with other components, including but not limited to, U.S. Trademark Application No. 75/914,433 for the mark "BELO INTERACTIVE" in international class 42 for "designing, implementing and maintaining web pages for others; hosting web sites of others for a global computer network" and U.S. Application Nos. 75/909,342 and 75/909,258 for the marks "BELO MEDIA SOLUTIONS" and "BELO MEDIA SOLUTIONS" & Design both in international class 35 for "preparing, placing, providing and dissemination of advertising for others in multimedia combination packages via one or more of the following media – global computer network, printed publications, television, cable television and radio" (the "Marks" or "Complainant’s Marks"), since at least as early as 1842. Complainant’s Marks and Complainant’s Domain Names have been and are recognized by the public and the industry as originating from a single source, namely Complainant, and Complainant’s Marks and Complainant’s Domain Names serve to distinguish Complainant’s services from the services of others."
"Complainant is also the owner of numerous related domain names, including but not limited to, belo.com, registered on April 8, 1996, and belointeractive.com, belointeractive.net, belointeractive.org, beloonline.com, beloonline.net, beloonline.org, beloenterprises.com, beloenterprises.net, beloenterprises.org, beloonlineinc.com, beloonlineinc.net, and beloonlineinc.org (collectively, "Complainant’s Domain Names")."
"Complainant, through its significant efforts, skills and experience, has acquired and enjoys substantial goodwill and a valuable reputation through Complainant’s distinctive Marks. The maintenance of high standards of quality and excellence for Complainant’s services has contributed to this valuable goodwill and reputation."
"Complainant has expended and continues to expend a significant amount of time and money to advertise and promote Complainant’s services through its distinctive Marks."
"Complainant asserts that the domain name owned by Respondent for belocorp.com infringes the rights of Complainant in and to its Marks, the mark "BELO CORP" and Complainant’s Domain Names."
"On December 28, 2000, Complainant issued a press release entitled "Belo Officially Changes Name from A. H. Belo Corporation to Belo Corp." This press release was issued through the PR Newswire and may still be found at prnewswire.com."
"The Network Solutions Whois Registry shows that Respondent registered the domain name belocorp.com on the same day as the press release issued, December 28, 2000."
"Complainant subsequently became aware that the domain name belocorp.com had been registered by Respondent. Upon visiting the web site located at belocorp.com, Complainant found the page states "[t]he domain name that has brought you to this website is no longer in use. Therefore, as we are no longer using it, it is now for sale.""
"Respondent’s domain name is clearly confusingly similar to Complainant’s Marks and Domain Names. Respondent’s domain name belocorp.com is identical to Complainant’s mark "BELO CORP." Additionally, prior Panel decisions have ignored the domain name suffix when analyzing the domain name for confusing similarity. Therefore, without the ".com" suffix, Respondent’s domain name is identical to Complainant’s Mark."
"The Respondent has no rights or legitimate interest in the domain name belocorp.com for at least the following reasons: (i) Despite a statement to the contrary on its web site, Respondent has not used or prepared to use the domain name belocorp.com in connection with a bona fide offering of goods or services; (ii) Respondent does not offer goods or services related to "BELO" nor is Respondent related to Complainant; and (iii) Respondent’s domain name does not reflect the name of its corporate identity. Instead, Respondent’s own name "LIQUIDATING DOMAINS" evidences that Respondent’s only interest in the domain name is to deprive the owner of the domain name and/or to sell the domain name and make a profit from such sale."
"The domain name belocorp.com should be considered as having been registered and used in bad faith for at least the following reasons:
(1) Respondent has registered the domain name belocorp.com in order to prevent the owner of the trademark/service mark from reflecting the mark in a corresponding domain name and has engaged in a pattern of similar conduct with other mark owners. For example, in addition to the registration of belocorp.com, Respondent is also the registrant of carlsbergasia.com, vivendionline.com, dingoblueonline.com, corixacorporation.com, corixaonline.com and dendritejapan.com. The Whois information for each of these domain names shows Respondent, Liquidating Domains, as the registrant and H. Wilson, of Liquidating Domains, as the administrative contact. Additionally, "CARLSBERG" is a U.S. registered trademark of Carlsberg Breweries Corporation; "VIVENDI" is a U.S. registered trademark of Vivendi Corporation; "DINGO BLUE" is an Australian registered trademark of Dingo Blue Pty. Limited; "CORIXA" is a U.S. registered trademark of Corixa Corporation; and "DENDRITE" is a U.S. registered trademark Dendrite International, entities that do not appear (by comparing address and other identifying information) to be related to "H. Wilson" or "LIQUIDATING DOMAINS."
(2) Respondent registered the domain name belocorp.com on the same day that Complainant issued its formal press release regarding its name change to BELO CORP. In addition to this remarkable coincidence in thought between Complainant and Respondent, Respondent was apparently at least deceptive at the web page for belocorp.com, wherein Respondent states that "the domain name that has brought you to this website is no longer in use." Additionally, this same notice is also posted on the web sites for Respondent’s other registered domain names, carsbergasia.com, vivendionline.com, dingoblueonline.com, corixaonline.com, corixacorporation.com, and dendritejapan.com. It seems highly unlikely that each of these domain names, which also incorporate the registered trademarks of unrelated third party entities, were actually web sites wherein Respondent offered legitimate goods or services related to those names. Additionally, Respondent’s own name "LIQUIDATING DOMAINS," strongly suggests that Respondent’s true motivation for registering these domain names was to sell them for a profit.
(3) Complainant recognizes that the mere registration of multiple domain names does not necessarily indicate a pattern of bad faith on the part of a registrant. However, the Panel in Bellevue Square Managers, Inc. v. Web, WIPO Case No. D2000-0056, held that the registration of just three domain names, all incorporating third party marks, was a "sufficient basis for the inference to be drawn that a pattern of conduct exists." A search by Network Solutions, Inc. revealed that "H. Wilson" is the administrative contact for almost 150 domain names. Therefore, by registering the domain name at issue belocorp.com, as well as carsbergasia.com, vivendionline.com, dingoblueonline.com, corixaonline.com, corixacorporation.com, and dendritejapan.com, among others, Complainant respectfully asserts that Respondent has registered same in bad faith by establishing a pattern of registering domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name. Indeed, the U.S. Court of Appeals for the First Circuit recently held that a registrant’s ownership of numerous domain names similar to famous trademarks suggested bad faith under the U.S. Anticybersquatting Consumer Protection Act. Northern Light Technology Inc. v. Northern Lights Club, No. 00-1641."
Respondent did not file a response to the complaint.
6. Discussion and Findings
6.1 The Uniform Domain Name Dispute Resolution Policy (the "Policy"), adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
6.2 It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
6.3 WIPO forwarded notification of the complaint to the Respondent and its separate administrative and technical contacts via post/courier and email in accordance with the contact details found in the appropriate WHOIS database. WIPO also forwarded notification of default to the Respondent and its administrative and technical contacts via email.
6.4 Based on the methods employed to provide the Respondent with notice of the complaint and default, including forwarding notification of the complaint and the default to Respondent's technical contact, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings. The Panel also finds that the failure of the Respondent to furnish a reply is not due to any omission by WIPO.
6.5 Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent’s domain name has been registered and is being used in bad faith.
In the administrative proceeding, the Complainant must prove that each of these three elements are present.
6.6 Complainant asserts that the domain name <belocorp.com> is likely to be confused with Complainant's trademark and service marks BELO.
6.7 As the Respondent has failed to submit a response to the complaint, the Panel may accept as true all of the allegations of the complaint. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009, February 29, 2000.
6.8 The Panel finds the <belocorp.com> domain name is legally identical and confusingly similar to the BELO common law mark, and that the Complainant has established it has rights in the mark BELO, pursuant to paragraph 4(a)(i) of the Policy. The inclusion of the generic terms "corp" and .com" in the domain name in dispute has little, if any, affect on a determination of legal identity between the domain name and the mark. Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253, May 29, 2000.
6.9 Based upon the continuous use of the BELO trademark and service mark, the Panel also finds that the <belocorp.com> domain name is confusingly similar to the Complainant's common law BELO trademark and service mark.
6.10 Paragraph 4(c) of the Policy lists several circumstances, without limitation, that if found by the Panel shall demonstrate the Respondent's rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii). In particular, paragraph 4(c) states:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
6.11 The length of time the mark has been used, the amount of advertising conducted and the popularity of Complaint's services offered under the BELO mark leads to the conclusion that Respondent was or certainly should have been aware of the mark prior to registering the domain name. Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137, April 18, 2000.
6.12 There is no evidence in the record that would indicate that Respondent has any rights or legitimate interests in respect of the domain name <belocorp.com>.
6.13 The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name <belocorp.com>, pursuant to paragraph 4(a)(ii) of the Policy.
6.14 Paragraph 4(b) of the Policy lists several factors, without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b)(i) states:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.
6.15 The only use of record by Respondent of the domain name <belocorp.com> was to offer the domain name for sale. See Exhibit F from Complaint (hard copy).
6.16 Respondent registered the domain name <belocorp.com> on the same day that Complainant announced a name change from A. H. Belo Corporation to Belo Corp.
6.17 Respondent has registered other domain names, <carlsbergasia.com>, <vivendionline.com>, <dingoblueonline.com>, <corixaonline.com>, <corixacorporation.com>, and <dendritejapan.com>, all of which contained the same notice offering the domain name for sale, as was posted on the web site <belocorp.com>. See Complaint paragraph C. (2) pages 8-9 and Exhibit F.
6.18 Respondent’s own name, Liquidating Domains, is suggestive that Respondent’s only interest in the domain name is to deprive the trademark owner of the domain name and/or sell the domain name and make a profit from such a sale. Microsoft Corporation v. Amit Mehrota, WIPO Case No. D2000-0053, April 10, 2000.
6.19 In the absence of contrary evidence, Respondent’s registration of the domain name <belocorp.com> on the same day that Complainant changed its corporate name to Belo Corp., Respondent’s name Liquidating Domains suggesting that Respondent is in the business of selling domain names and Respondent’s web pages offering <belocorp.com>, along with other domain names, for sale are evidence of registration and use in bad faith.
6.20 The Panel finds that the Respondent acquired the domain name <belocorp.com> primarily for the purpose of selling the domain name registration to the complainant who is the owner of the trademark and service mark BELO. Therefore, the Panel finds that the Complainant has established that the Respondent registered and used the domain name <belocorp.com> in bad faith, pursuant to paragraph 4(b)(i) of the Policy.
As the Complainant, Belo Corp., has established that the Respondent, Liquidating Domains, has engaged in abusive registration of the domain <belocorp.com> within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name <belocorp.com> be transferred to the Complainant.
R. Eric Gaum
Dated: May 15, 2001