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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Media West-GSI, Inc., Media West-UWI, Inc., Gannett Satellite Information Network, Inc., Gannett Co., Inc. v. (This Domain is For Sale) Joshuathan Investments, Inc.
Case No. D2003-0476
1. The Parties
The Complainants are Media West-GSI, Inc., Media West-UWI, Inc., Gannett Satellite Information Network, Inc., Gannett Co., Inc., of Reno, Nevada, United States of America, represented by Dow, Lohnes & Albertson, of United States of America.
The Respondent is (This Domain is For Sale) Joshuathan Investments, Inc., of Belize City, Belize.
2. The Domain Names and Registrars
The disputed domain names <usatoda.com> and <usweekend.com> are registered with BulkRegister.com and Alldomains.com respectively.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 19, 2003. On June 20, 2003, the Center transmitted by email to Registrars BulkRegister.com and Alldomains.com a request for registrar verification in connection with the domain names at issue. On June 20, 2003, BulkRegister.com and Alldomains.com transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 June 24, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 15, 2003.
The Center appointed J. Nelson Landry as the sole panelist in this matter on July 22, 2003. 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.
The Panel finds that it was properly constituted an appointed in accordance with the Rules and the Supplemental Rules. It has also independently determined and agrees with the assessment of the Center that the Complaint meets the formal requirements of the Policy, the Rules and the Supplemental Rules.
The language of this administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
The Complainants are Media West-GSI, Inc., Media West-UWI, Inc., Gannett Satellite Information Network, Inc. and Gannet Co., Inc. which are collectively referred herein as "Complainant".
The Complainant publishes USA TODAY which has been published since September 1992. It is circulated daily to 2.2 millions readers and is published in 60 countries worldwide. Furthermore, since April 16, 1995, the Complainant has operated an online version of its newspaper at the domain name <usatoday.com>.
The Complainant Media West-GSI, Inc. owns a family of 17 federal registrations for marks which all include USA TODAY and 16 of these registrations are incontestable. (these marks were initially registered by Complainant Gannet Co., Inc., which subsequently assigned them to Complainant Gannet Satellite Information Network and then to the current owner) The said trademarks are used by Complainant Gannet Satellite Information Network, Inc. pursuant to a license agreement with the registered owner.
Furthermore, the Complainant has also registered 7 second-level domain names, all of which incorporate the USA TODAY mark.
The Complainant publishes USA WEEKEND, a weekend magazine since 1995. USA WEEKEND magazine is distributed in 590 newspapers nationwide and has a weekend circulation of 49 millions. Furthermore, since March 1, 1997, the Complainant has operated an online version of its USA WEEKEND magazine at the domain name <usaweekend.com>.
The Complainant Media West-UWI, Inc. owns eight federal registrations for a family of marks which all include USA WEEKEND mark and at least six of these registrations are now incontestable. Similarly several of these USA WEEKEND Registered Marks were initially registered in the name of Complainant Gannet Co., Inc., subsequently assigned to USA Weekend, Inc. and then to its current registered owner.
Finally, the USA WEEKEND Registered Marks are used by Complainant Gannett Satellite Information Network, Inc. pursuant to a license agreement with the registered owner Media West-UWI, Inc.
Furthermore, the Complainant, doing business as USA WEEKEND, has also registered 13 second-level domain names each incorporating the USA WEEKEND mark.
The Complainant represents that it has invested substantial amount of time and resources to establish and operate its USA newspaper and website and its USA WEEKEND magazine and website and to promote and advertise the USA TODAY Marks and USA WEEKEND Marks and as a consequence thereof, it has developed extremely valuable goodwill and outstanding reputation in the said marks. As the result thereof, the Complainant contends that USA TODAY Marks and USA WEEKEND Marks are famous and are an indication of high quality and of origin exclusively with Complainant.
On or about December 20, 1997, the Respondent registered <usatoda.com> domain name and on or about December 27, 1997, it registered the <usweekend.com> domain name (herein the " Domain Names in dispute ")..
During the course of the ownership, the Respondent has changed the name of the registrant of the Domain Names in dispute and at various times, the owner was Global Net 2000, Inc., ("Global Net 2000") Siavash Behain of Joshuanthan Investments, Inc. ("Behain"), and Daniel Khoshnood ("Khoshnood") as the administrative and billing contact. At the present time, the Respondent is listed as the owner of the two Domain Names in dispute.
Pursuant to information, the Complainant contends that Respondent Global Net 2000, Behain, and Khoshnood are actually alter egos of the same entity or individual.
Within its investigation, the Complainant has considered the factual backgrounds
in many UDRP proceedings reference in the Complaint as well as the Microsoft
Corporation v. Global Net 2000 , Inc., WIPO
Case No. D2000-0554 and Google, Inc., v. wwwgoogle.com and Jimmy Siavesh
Behain, WIPO Case No. D2000-1240.
As represented with numerous details and supported by documentary evidence, the Complainant has exposed that when a visitor mistypes <usatoday.com> domain name as Respondent’s <usatoda.com> domain name or Complainant’s <usaweekend.com> domain name as Respondent’s <usweekend.com>, the visitor is redirected to a search engine website with the domain name <top10sites.com> which then either links to search result or to a pornographic website with the domain name <freesexmovies.com> which, according to the evidence produced, contains graphic pornographic content as well as links to websites specializing in different hardcore pornographic material.
Upon clicking on the link which enables a web-based email that is addressed to Respondent, the visitor would see the following lines "Domain4Sale" and, as particularized in the evidence, there are also other references to the fact that the Domain Name in dispute is for sale.
The Complainant has shown that Respondent and its alter egos Behain, Khoshnood
and Global Net 2000 have been respondents in numerous UDRP proceedings such
as WIPO Case No. D2002-0850, WIPO
Case No. D2002-0787, WIPO Case No. D2001-0918
and WIPO Case No. D2001-0516, in which
panelists have requested transfer of the domain names in question under circumstances
similar to the circumstances at issue in the present case.
By letter dated March 19, 1998, counsel for Complainant requested Respondent’s alter ego, Global Net 2000 to cease using the Domain Names in dispute and to transfer them to Complainant. Khoshnood of Global Net 2000 responded by telephone and explained that the fact that the Domain Names were pointed to a pornographic website was due to an error made by Global Net 2000’s Internet Service Provider and that he intended to use the Domain Names in dispute as part of a re-routing service website that would provide users who mistyped a popular domain name with links to the website that visitors were trying to reach, but only after they were exposed to advertising sold by Global Net 2000.
A further letter was sent on April 3, 1998, to Khoshnood demanding that Global Net 2000 refrained from using the Domain Names in dispute in its planned re-routing service. Complainant did not receive any response. However, it would appear that Global Net 2000 ceased using the Domain Names for an active website as of March 27, 1998.
However in September 2000, the Complainant observed that Respondent’s alter ego, Global Net 2000, had begun to use the <usatoda.com> domain name to advertise "GLOBAL NET 2000 Hosting" and re-direct visitors to a website located at the "www.pointcom.com". By letter dated September 8, 2000, counsel for Complainant sent another cease and desist letter to Respondent’s alter ego, Global Net 2000. No response was received from Global Net 2000.
The Complainant became aware that the Respondent has changed the name of the registrant for the <usatoda.com> domain name to Respondent’s current name, Joshuathan Investments, Inc., and was now using the domain name to re-direct the visitors to a search engine website and subsequently to pornographic website as explained hereinabove. Complainant received no response from Joshuatan Investments, Inc.
Recently, while preparing the Complaint to these proceedings, Complainant became aware that Respondent had also transferred <usweekend.com> domain name to Respondent’s current name Joshuathan Investments, Inc., and was similarly using <usweekend.com> domain name to re-direct the visitors to those pornographic websites.
The Sole Panelist has examined the substantial, coherent, detailed and most informative evidence in Annexes A through T filed along with the Complaint. There was no need to check or verify the information provided by Complainant. All of the Complainant’s rights and activities were well supported and so was the description of the activities of the Respondent and its links to numerous pornographic sites as illustrated in Annexes M and Q. (reference here is made to annex Q between annex M and N as opposed to the second Annex Q after Annex P)
Although Respondent was served with these proceedings and had an opportunity to confirm these facts as well as the proposed evidence or put forward its own evidence to show its entitlement to the Domain Names and its legitimate interest in registering them Respondent has not availed itself of this opportunity.
The Administrative Panel finds the Complainant’s evidence compelling and that it supports its representations and allegations.
5. Parties’ Contentions
The Complainant alleges that <usatoda.com> is virtually indistinguishable from USA TODAY Mark and similarly <usweekend.com> domain name is virtually indistinguishable from USA WEEKEND Mark with the only difference being in the absence of the letter "y" in the former domain name and the letter "a" in the later domain name. The Complainant represents that such deletion of a letter according to some earlier UDRP decisions does not change the mark’s overall impression and thus renders domain names confusingly similar to the marks. The Complainant therefore alleges that the Domain Names in dispute are confusingly similar to the USA TODAY Marks and USA WEEKEND Marks.
The Complainant represents that the Respondent lacks rights and legitimate interests with respect to the Domain Names in dispute. It further represents that the Respondent does not use the Domain Names in dispute in connection with a bona fide offerings of goods and services, but to the contrary, Respondent uses the Domain Names to deceptively misdirect visitors who intend to reach Complainant’s "www.usaweekend.com" and "www.usatoday.com" sites to a search engine website, which eventually direct the visitors to pornographic content website which according to Complainant is clearly not done in or with good faith.
The Complainant represents that such diversion of consumers to website containing sexually explicit contents, as already been held in other UDRP decisions, does not constitute a showing of a bona fide offering of goods and services under Paragraph 4(c)(i) of the Policy.
The Complainant alleges that Respondent does not have legitimate interests in using the Domain Names within the meaning of paragraph 4(c)(ii) of the Policy because the Respondent is neither commonly known by, nor has it acquired trademark or service mark rights in either of the Domain Names in dispute.
The Complainant alleges that the Domain Names in dispute have been registered and used in bad faith. The Complainant represents that Respondent’s intent to sell the Domain Names which is evidenced by the name it uses in the registrant information for the Domain Names which in each instance is prefaced by "(This Domain Name is for sale)".
The Complainant relies on similar or identical circumstances to those at issue
in these proceedings in other UDRP panel decisions to represent that there is
here an inference that the sale price for which Respondent would sell the domain
names would exceed registration costs (See WIPO
Case No. D2002-0787) where the Respondent is (This Domain is For Sale)
Joshuathan Investments, Inc. In respect of the bad faith characterization
of the activities of Respondent, the Complainant has put forward six earlier
decisions where the same Respondent’s "(This Domain is For Sale) Joshuathan
Investments, Inc)" activities have been analyzed and the Administrative
Panel decided to order the transfer of the domain names (see WIPO
Case No. D2002-0850, WIPO Case No. D2002-0787,
WIPO Case No. D2001-0918, WIPO
Case No. D2001-0516, NAF Claim No. FA 96122, and NAF Claim No. FA 96178.
The Respondent’s alter egos, Global Net 2000, Khoshnood and Behain have also
been respondents in at least ten other UDRP proceedings where the panel has
found that the respondent acted in bad faith and required the respondent to
transfer to the complainant the domain names in these proceedings.
Finally, the Complainant represents that Respondent’s pattern of typosquatting
conduct is compelling evidence of Respondent’s bad faith under Paragraph 4(b)(ii)
of the Policy. Complainant relies on three earlier decisions to support such
contention (WIPO Case No. D2002-0850,
NAF Claim No. FA 102968, and WIPO Case No.
D2001-0516 to support its representations).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following 3 elements to obtain an order that a domain name should be cancelled or transferred:
i. The domain name registered by the Respondent 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 interest with respect to the domain name; and
iii. The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
There is no doubt that the domain names <usatoda.com> and <usweekend.com> are confusingly similar respectively to the trademarks USA TODAY and USA WEEKEND of Complainant for purposes of the Policy. The Domain Names in dispute incorporate the said trademarks to the exception of the letter "y" in the first Domain Name and the letter "a" in the second Domain Name.
In the opinion of the Panel, the deletion of one letter from each Domain Name
does not deter the reader from the fact that the respective trademarks USA TODAY
and USA WEEKEND having been truncated of a letter, thus taken and associated
with the suffix ".com" retain their capacity of association of origin
with the respective trademarks and their registered owner. This letter deletion
does not diminish in any way the fact that the Domain Names in dispute are confusingly
similar to the trademarks of Complainant. The overall impression remains the
same. WIPO Case No. D2000-0716 and WIPO
Case No. D2000-0548 and State Farm Mut. Aut. Ins. Co. v. Try Harder &
Co., NAF Claim No. FA 94730.
The Panel finds that the Domain Names in dispute are confusingly similar with the registered trademarks USA TODAY and USA WEEKEND of the Complainant.
The criteria of Paragraph 4(a)(ii) has therefore been met.
B. Rights or Legitimate Interest
The complainant has made a prima facie case that the Respondent lacks rights to or legitimate interests in the Domain Names in dispute by alleging that the Respondent or its alter egos, has never been known by the Domain Names in dispute, is not making legitimate non-commercial or fair use of the Domain Names in dispute and is not using the Domain Names in dispute in connection with the bona fide offering of goods and services.
As amply shown by the Complainant, the use of the Domain Names in dispute by the Respondent is simply to deceptively divert Internet users who would make a mistake in typing the domain names of the Complainant and such Internet visitors are then diverted to another website that has no correlation or connexity with the commercial activities of the Complainant and furthermore, said Internet visitors are re-directed to pornographic websites which could prove detrimental to the goodwill and reputation of the Complainant.
Furthermore it is noted by this Panel that the Respondent infringes the USA
TODAY and USA WEEKEND trademarks and this makes it unlikely that the Respondent
is acting in good faith and is making a "bona fide offering of goods and services."
WIPO Case No. D2000-0416 and WIPO
Case No. D2002-0787.
The Panel concludes that the Respondent has not made any use of the Domain Names in dispute in connection with the bona fide offering of goods and services.
Accordingly there is no evidence that the Respondent has any rights of legitimate interests in the Domain Names in dispute and the conditions for the second criteria have been fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
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 the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
ii. you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
iii you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv. by using the domain name, you have intentionally attempted to attract, for commercial gain, internet user to your website or other on-line location, by creating a likelihood or confusion with the Complainant’s mark as to the source, sponsorship, affiliating, or endorsement of your website or location or of a product or service on your website or location"
It should be noted that the circumstances of bad faith are not limited to the above.
The Complainant contends that the Domain Names in dispute were registered and are used in bad faith. In the present instance, the Panel does not have difficulty to conclude that the Domain Names in dispute were registered and are used in bad faith.
According to the evidence the Complainant’s marks USA TODAY and USA WEEKEND are constituting two families of marks, along with domain names and secondary domain names incorporating said marks used, over a period of many years, to a wide distribution of consumers in several countries and therefore, the Panel concludes and agrees with Complainant that its marks are famous.
The Respondent’s use of the Domain Names in dispute demonstrates an intentional
attempt to attract for commercial gain, Internet users to another website and
then mostly with the intention of either offering the Domain Names for sale
presumably for more than reasonable out of pocket costs as the Complainant has
demonstrated in his reference to WIPO Case
No. D2002-0850 and WIPO Case No. D2002-0787
as well as attracting for commercial gain Internet users to other websites,
from which activities Respondent presumably receives gain or reward. That in
itself constitutes evidence of bad faith registration and bad faith use under
Paragraph 4(b)(i) and (iv) of the Policy.
Furthermore, there is ample and compelling evidence provided by the Complainant of a pattern of conduct as contemplated under Paragraph 4(b)(ii) by the Respondent of registering domain names confusingly similar with well-known marks with a single typographic error and then diverting Internet users to pornographic websites. The Complainant has referred to at least six URDP proceedings where Respondent has been found to have acted in bad faith in situations similar to the one in the present proceedings as well to ten other URDP proceedings involving Respondent's alter egos Global Net 2000, Khoshnood and Behain coming to the same conclusion.
Therefore, the Panel finds that the Domain Names in dispute were registered and are being used in bad faith. Accordingly the conditions for the third criteria have been met.
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 names, <usatoda.com> and <usweekend.com> be transferred to the Complainant Gannett Co., Inc.
J. Nelson Landry
Dated: July 29,2003