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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ottaway Newspapers, Inc. v. Cameron Barrett
Case No. D2001-0726
1. The Parties
The Complainant is Ottaway Newspapers, Inc., P.O. Box 401, 97 Route 416, Campbell Hall, New York 10916, U.S.A.
The Respondent is Cameron Barrett, 280 16th Street, Brooklyn, New York, 11215, U.S.A.
2. Domain Name and Registrar
The domain name at issue is <recordeagle.com>. The registrar is Tucows, Inc. in Toronto, Ontario, Canada.
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email on May 31, 2001, and in hardcopy on June 5, 2001. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel (the "Panel") is satisfied that this is the case.
On June 6, 2001, the Center sent an Acknowledgement of Receipt of Complaint to the Complainant. On June 8, 2001, the Center sent to the registrar a request for verification of registration data. On June 11, 2001, the registrar confirmed that it is the registrar of the domain name in dispute (the "Domain Name") and that it is registered in the Respondent's name.
Having verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Center on June 12, 2001, sent to the Respondent, with a copy to the Complainant, the Complaint and a notification of Complaint and Commencement of Administrative Proceeding. This notification was sent by the methods required under Paragraph 2(a) of the Rules. The formal date of the commencement of this administrative proceeding is June 12, 2001.
The Center notified Respondent that the last day for submitting a response to the Complaint was July 1, 2001. The Center never received a Response. On July 3, 2001, the Center notified the Parties of the Respondent’s default.
On July 26, 2001, WIPO appointed the administrative panel (the "Panel"). The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by WIPO or the Panel, as a consequence of which the original date scheduled for the issuance of the Panel’s decision was August 9, 2001.
4. Factual Background
Complainant, Ottaway Newspapers, Inc., is the owner and publisher of the Traverse City Record-Eagle newspaper.
Complainant’s official website is connected to the domain name <record-eagle.com>.
Respondent, Cameron Barrett, registered the Domain Name <recordeagle.com> on April 29, 1999.
5. Parties’ Contentions
Complainant contends as follows:
The Traverse City Record-Eagle newspaper (the "Newspaper") has been published under the name Traverse City Record-Eagle since 1912. The Newspaper was acquired by Complainant in 1972. Since 1972, Complainant has continuously published the Newspaper under the same name.
Since 1997, Complainant has used the domain name <record-eagle.com> to present news stories and other related news services on the Internet.
Complainant has strong common law rights in the mark RECORD-EAGLE. Complainant has published the Newspaper with the mark RECORD-EAGLE since 1972 and the Newspaper has a large daily circulation which expands far beyond the borders of Michigan. Thus, the mark has widespread recognition and longstanding use.
Respondent, Cameron Barrett, registered the Domain Name on April 29, 1999. In May 1999, Respondent contacted Complainant and offered to sell the Domain Name to Complainant for an amount Complainant considered to be an exorbitant sum. Complainant refused to buy the Domain Name. Shortly thereafter, Respondent placed on the Domain Name website a link to an auction site where the Domain Name was for sale.
Subsequently, Respondent again contacted Complainant and informed Complainant that Respondent was receiving a large number of emails that were intended for Complainant’s website. A few months later, Respondent sent an email to Complainant stating that Respondent was deleting the remaining email messages that were intended for Complainant.
On April 18, 2001, Complainant sent Respondent a cease and desist letter demanding that Respondent immediately discontinue its use of the RECORD EAGLE mark and transfer the Domain Name to Complainant. Respondent refused to transfer the Domain Name to Complainant without compensation.
Respondent is not a licensee of Complainant and it was never authorized by Complainant to use Complainant’s mark. Respondent is aware that it has no rights or legitimate interest in the Domain Name. It is not registered to do business under any name similar to the Domain Name.
Respondent has not made any demonstrable preparations to use the Domain Name except to offer the Domain Name for sale to Complainant and other potential buyers.
Respondent has actual knowledge of Complainant’s website and newspaper. In fact, Respondent’s heading on the Domain Name read: "Sorry, this isn’t the web site for the Record Eagle newspaper."
In sum, Respondent is using the Domain Name that is identical to Complainant’s protected mark, and such use is in bad faith. Respondent’s actions have served to intentionally divert potential customers from Complainant’s website. Because Respondent has no legitimate interest or rights in the Domain Name, it is violating Complainant’s trademark rights.
Respondent failed to submit a Response to the Complaint.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The 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.
B. Identical or Confusingly Similar
The evidence presented by the Complainant demonstrates that Complainant’s trademark RECORD-EAGLE has been used extensively by Complainant for approximately 30 years. The Panel is convinced that the mark is known in the news field. The Panel thus finds, given the totality of unrebutted evidence, that the trademark RECORD-EAGLE is protected by common law.
The Panel next looks to whether the Domain Name is confusingly similar to Complainant’s trademark. The Panel finds that the Domain Name <recordeagle.com> is, absent the hyphen, identical to Complainant’s trademark RECORD-EAGLE and is thus confusingly similar to Complainant’s mark.
Therefore, the standard of confusingly similar has been reached and the requirement of Paragraph 4(a)(i) is met.
C. Rights or Legitimate Interests of the Respondent
Complainant alleges that the Respondent has no rights or legitimate interests in the Domain Name. The Domain Name is identical to Complainant’s mark and the Complainant did not grant the Respondent a license to use Complainant’s mark. Thus, a prima facie case has been made by Complainant.
Respondent’s failure to respond to the Complaint allows the inference that the evidence would not have been favorable to Respondent. Accordingly, the Panel finds that Respondent has no legitimate interests in the Domain Name. Therefore, the requirement of Paragraph 4(a)(ii) is met.
D. Bad Faith
Complainant alleges that Respondent registered and used the Domain Name in bad faith. In fact, Respondent posted on its Domain Name website that the Domain Name was not the Complainant’s website, thus demonstrating that Respondent knew that customers were unknowingly entering the wrong website. Furthermore, Respondent offered to sell the Domain Name to Complainant, which is, itself, prima facie evidence of bad faith.
The Panel finds that Respondent’s registration and use of the Domain Name was in bad faith and thus, the requirement of Paragraph 4(a)(iii) is met.
The Panel, having found that the Domain Name is identical and confusingly similar to Complainant’s mark, that Respondent has no rights or legitimate interests in the Domain Name, and that the Domain Name has been registered and is being used in bad faith, finds in favor of Complainant.
The Panel directs that the Domain Name <recordeagle.com> be transferred to the Complainant.
Maxim H. Waldbaum
Dated: July 31, 2001