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Дела по национальным доменам
WIPO Arbitration and
Mediation Center
ADMINISTRATIVE PANEL
DECISION
Gannett Co., Inc.
v. Henry Chan
Case No. D2004-0117
1. The Parties
The Complainants are Gannett Co., Inc., and each of its subsidiaries that have
ownership rights in the trademarks at issue, of Reno, Nevada, United States
of America, represented by Dow, Lohnes & Albertson, PLLC, United States
of America.
The Respondent is Henry Chan, of Nassau, Bahamas.
2. The Domain Names and Registrar
The disputed domain names:
<arizonarepblic.com>
<arizonarepublicjobs.com>
<artusatoday.com>
<ashvillecitizentimes.com>
<bagannet.com>
<burlingtonfreeprees.com>
<cincinnatienqurier.com>
<citizenstimes.com>
<clarinledger.com>
<clarionledgar.com>
<clarionledge.com>
<claronledger.com>
<courialjournal.com>
<couriorpost.com>
<couriorpostonline.com>
<courrierpost.com>
<democratandchroncile.com>
<democratandcronical.com>
<democrateandchronical.com>
<democratechronicle.com>
<demoinesregister.com>
<desmoinsregister.com>
<gannetnews.com>
<greenbaypressgazett.com>
<greenvillnews.com>
<jacksonclarionledger.com>
<lifeusatoday.com>
<montgomeryadvertisor.com>
<montgomeryadvertizer.com>
<pensacolanewsjournel.com>
<renogazzettejournal.com>
<rockfordregistarstar.com>
<rockfordstar.com>
<springfieldnewleader.com>
<stargazett.com>
<statesmansjournal.com>
<tenesseean.com>
<tennesian.com>
<tennesseeian.com>
<tennesseian.com>
<theburlingtonfreepress.com>
<thecoloradoan.com>
<thedailytowntalk.com>
<themontgomeryadvertiser.com>
<theoshkoshnorthwestern.com>
<thepostcrescent.com>
<therocklandjournalnews.com>
<thetennessan.com>
<westchesterjournalnews.com>
are registered with iHoldings.com Inc. d/b/a DotRegistrar.com
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center")
on February 13, 2004. On February 16, 2004, the Center transmitted
by e-mail to iHoldings.com Inc. d/b/a DotRegistrar a request for registrar verification
in connection with the domain names at issue. iHoldings.com Inc. d/b/a DotRegistrar.com
transmitted by e-mail to the Center its verification response 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 February 20, 2004.
In accordance with the Rules, paragraph 5(a), the due date for Response was
March 11, 2004. The Respondent did not submit any response. Accordingly,
the Center notified the Respondent’s default.
The Center appointed Christiane Féral-Schuhl as the sole panelist in
this matter on March 25, 2004. 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 Complainants are the owners of the following United States federal registrations,
which are used through trademark licenses for newspaper titles: ARIZONA REPUBLIC
(Reg. No. 2,136,804), ASHEVILLE CITIZEN-TIMES (Reg. No. 2,017,084), THE CINCINNATI
ENQUIRER (Reg. No. 2,302,203), THE CLARION-LEDGER (Reg. No. 2,365,928), COURIER-POST
(Reg. No. 2,752,629), COURIER-POST ONLINE (Reg. No. 2,243,458), THE COURIER-JOURNAL
(Reg. No. 2,304,262), DEMOCRAT AND CHRONICLE (Reg. No. 2,359,626), THE DES MOINES
REGISTER & DESIGN (Reg. No. 1,249,840), FORT COLLINS COLORADOAN (Reg. No.
2,781,581), GREEN BAY PRESS-GAZETTE (Reg. No. 2,794,129), THE GREENVILLE NEWS
(Reg. No. 2,320,946), THE JOURNAL NEWS (Reg. No. 2,267,383), MONTGOMERY ADVERTISER
(Reg. No. 2,781,572), THE POST-CRESCENT (Reg. No. 2,755,824), RENO GAZETTE-JOURNAL
(Reg. No. 2,323,740), ROCKFORD REGISTER STAR (Reg. No. 2,320,943), SPRINGFIELD
NEWS-LEADER (Reg. No. 2,677,658), THE TENNESSEAN (Reg. No. 2,285,589) and USA
TODAY (Reg. No. 1,332,045).
The Complainants have also acquired common law rights in the following trademarks
based on the Complainants long, continuous and exclusive use: THE BURLINGTON
FREE PRESS, THE ARIZONA REPUBLIC, THE DES MOINES REGISTER, OSHKOSH NORTHWESTERN,
PENSACOLA NEWS JOURNAL, STAR-GAZETTE, STATESMAN JOURNAL, and THE TOWN TALK.
The Complainants’ newspapers and websites are well-known in their respective
regions and throughout the United States.
The Complainant, Gannett Co. Inc., is the owner of the GANNETT trademark and
currently owns a number of United States federal registrations and pending applications
for trademarks that include the GANNETT mark and operates a website at the domain
name <gannett.com> since 1996.
When a visitor types in the contested domain names, he or she is directed to
a portal site which directs the visitor to links to third party commercial websites
in a variety of areas, including newspaper websites that are in direct competition
with the Complainants’ newspapers.
On February 28, 2002, counsel for the Complainants sent a demand
letter via Federal Express and e-mail to the Respondent at his then-listed address
in Hung Hom, Hong Kong, and his email address, demanding that the Respondent
cease his use of the domain name <ashvillecitizentimes.com> and transfer
this domain name to the Complainant, the Asheville Citizen Times. The FedEx
package was returned as undeliverable, and counsel for the Complainants did
not receive a response to the e-mail. On May 15, 2003, counsel for
the Complainants sent a second demand letter via Federal Express to the Respondent
at his then-listed address at the Cheung Tat Centre, Chai Wan, Hong Kong. This
FedEx package was also returned as undeliverable.
5. Parties’ Contentions
A. Complainant
The Complainants indicate that they either own registration certificates or
have common law rights in the trademarks on which their complaint is based.
The Complainants explain that all the contested domains are identical or confusingly
similar to their trademarks. The Complainants explains that in some cases:
- the only difference between their marks and the corresponding domain names
is the addition of the ".com" generic top-level domain and the deletion
of the hyphens in Complainants’ marks, both of which are irrelevant (Draw-Tite,
Inc. v. Plattsburgh Spring Inc., WIPO
Case No. D2000-0017, March 14, 2000);
- the Respondent has either added or deleted a generic or descriptive term
(e.g. "jobs", "daily", "register", "the",
"art" or "life"), and that such addition or deletion of
an ordinary generic or descriptive term does not prevent the domain names from
being confusingly similar to the Complainants’ marks (Royal Bank of Canada
v. Henry Chan, WIPO Case No. D2003-0031,
March 5, 2003; Sony Kabushiki Kaisha v Inja, Kil, WIPO
Case No. D2000-1409, December 9, 2000; Bedford Fair Apparel,
Inc. v. Henry Chan, Claim No. FA 157322, June 20, 2003.);
- the Respondent has added (or deleted) the applicable geographic identifiers
and that it is well established that a domain name consisting of a (locally)
well-known mark, combined with the applicable geographically descriptive term
or phrase, is confusingly similar to the mark, as stated in America Online,
Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713,
August 24, 2000; The Field Museum of Natural History v. John Barry
d/b/a Buy This Domain, Claim No. FA 114354, June 28, 2002;
- the contested domain names consist of a second-level domain name that either
drops out, replaces or switches one or more letters of the Complainants’ marks
in a manner that creates common misspellings of the Complainants’ marks. Such
misspellings are likely to be confused with the Complainants’ marks and in such
cases, panels have already decided for the transfer (CimCities, LLC v. Party
Night, Inc., WIPO Case No. D2002-0613,
August 16, 2002; Microsoft Corporation v. Microsof.com aka Tarek
Ahmed, WIPO Case No. D2000-0548, July 21, 2000;
Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, WIPO
Case No. D2000-0578, August 28, 2000).
The Complainants also explain that in some cases, the Respondent has registered
domain names which cumulate two or three of the modifications mentioned above.
According to the Complainants, the Respondent has no rights or legitimate interests
in the domain names as the Respondent has registered the domain names without
the authorization, knowledge or consent of the Complainants. The Complainants
specify that the Respondent is not a licensee of the Complainants, nor is he
authorized to use the Complainants’ marks. The Complainants state that such
a situation creates a presumption that the Respondent cannot establish that
it has rights or any legitimate interest in the domain names, as in Guerlain
S.A. v. SL, Blancel Web, WIPO Case No.
D2000-1191, November 21, 2000, and Nilfisk-Advance A/S v. Leong
Tak Lang, WIPO Case No. D2000-1299,
December 27, 2000.
In addition, the Complainants explain that the Respondent’s use of the domain
names to misdirect potential visitors to third party commercial websites is
not a bona fide use of the domain names, and does not constitute a legitimate,
non-commercial use of the domain names under the Policy (MBNA America Bank,
N.A. v. Vertical Axis, Inc., Claim No. FA0211000133632, January 6, 2003;
The George Washington University v. Domain World a/k/a Domains For Sale a/k/a
John Barry, Claim No. FA0208000122140, October 14, 2002). Moreover,
at least some of the websites that are prominently linked to the Respondent
feature third party newspapers or newspaper products that are in direct competiton
with Complainants’ newspapers (Bedford Fair Apparel, Inc. v. Henry Chan,
Claim No. FA0305000157322, June 20, 2003).
Finally, the Complainants insist on the fact that the Respondent cannot establish
rights in the contested domain names because it has never been commonly known
by the domain names and has not acquired trademark or service mark rights in
the domain names (Gallup Inc. v. Amish Country Store, Claim No. FA010000096209,
January 23, 2001; Compagnie de Saint Gobain v. Com-Union Corp.,
WIPO Case No. D2000-0020, March 14, 2000).
As far as bad faith is concerned, the Complainants indicate that the Respondent’s
registration of the contested domain names that are identical or nearly identical
to the Complainants’ federally registered marks and his use of those domain
names in a manner that deliberately prevents Complainants from using their marks
as a domain name is evidence of the Respondent’s bad faith (J. Crew International,
Inc. v. crew.com, WIPO Case No. D2000-0054,
February 16, 2000; Henry Ford Health System v. Domain For Sale,
Inc., FA0203000105976 April 30, 2002).
According to the Complainants, the Respondent’s use of the domain names to
misdirect potential visitors to the Complainants’ websites to Respondent’s commercial
website and to other third party commercial websites, for which Respondent presumably
receives compensation, is also evidence that the Respondent registered the domain
names to deceptively attract and then misdirect Internet users for the Respondent’s
own commercial gain (The George Washington University v. Domain World a/k/a
Domains For Sale a/k/a John Barry, Claim No. FA0208000122140; October 14, 2002).
In addition, the Complainants insist on the past behavior of the Respondent,
which is a well-known cybersquatter, such being evidence of bad faith use (LTD
Commodities LLC v. Henry Chan, Claim No. FA0303000152617, May 8, 2003;
Pioneer Hi-Bred International, Inc. v. Henry Chan, Claim No. FA0304000154119,
May 12, 2003; Royal Bank of Canada v. Henry Chan, WIPO
Case No. D2003-0031, March 5, 2003).
Finally, the Complainants specify that the Respondent has carried out "typosquatting",
which is in itself evidence of bad faith registration and use under the Policy.
See Nat’l Ass’n of Prof’l Baseball Leagues Inc., v. Zuccarini, WIPO
Case No. D2002-1011, January 21, 2003).
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
As a preliminary finding, the Panel notes that the fact there are multiple
Complainants in this proceeding with interests in the trademarks at issue does
not prevent the Panel from examining the case as there is only one single Respondent
for all the domain names. In addition, all Complainants have the same parent
company. Previous panels have also decided to examine such similar cases (NFL
Properties, Inc. et al. v. Rusty Rahe, WIPO
Case No. D2000-0128, April 26, 2000; Mucos Emulsions, GmbH
and Marlyn Nutraceuticals v. Esex.org and Kim Taeho, WIPO
Case No. D2000-1513, April 12, 2001).
A. Identical or Confusingly Similar
It is well established under the Policy that the concept of rights in a trademark
does not necessarily mean a complainant must own a registered trademark. Common
law rights may be sufficient to support a domain name complaint under the Policy
(Brooklyn Institute of Arts and Sciences v. Fantastic Sites, Inc., Case
No. FA 95560, November 2, 2000).
As a consequence, the panel finds that the Complainants have met their burden
of proof regarding their rights in the trademarks on the basis of which the
complaint has been filed.
Regarding identity or confusing similarity, the Panel notes that it is well
established under the Policy that the addition of the ".com" generic
top-level domain, the deletion of the hyphens, or other non-significant modifications
to the complainant’s marks do not prevent confusing similarity (e.g. Draw-Tite,
Inc. v. Plattsburgh Spring Inc., WIPO
Case No. D2000-0017, March 14, 2000).
The Panel emphasizes that the misspelling of a trademark registered as a domain
name is in itself a confusing similarity (CimCities, LLC v. Party Night,
Inc., WIPO Case No. D2002-0613, August 16, 2002;
Microsoft Corporation v. Microsof.com aka Tarek Ahmed, WIPO
Case No. D2000-0548, July 21, 2000; Dow Jones & Company,
Inc. and Dow Jones LP v. John Zuccarini, WIPO
Case No. D2000-0578, August 28, 2000).
The Panel also recalls that in numerous cases, it has been stated that a domain
name that wholly incorporates a complainant’s mark may be sufficient to establish
confusing similarity for purposes of the Policy. As an example, in A. Nattermann
& Cie Gmbh, Aventis Pharma SA v. Derrick Horner, WIPO
Case No. D2003-0844, the panel stated that ""Direct" being
a generic word, the dominant element remains "lipostabil" (…)
In other words, the mere addition of the word "direct" has not such an influence
upon the overall impression that it would exclude the likelihood of confusion
between the domain name and the Complainant’s trademarks."
In addition, it is well established that a domain name consisting of a well
known mark, combined with a geographically descriptive term or phrase, is confusingly
similar to the mark, as stated in America Online, Inc. v. Dolphin@Heart,
WIPO Case No. D2000-0713, August 24, 2000;
The Field Museum of Natural History v. John Barry d/b/a Buy This Domain,
Claim No. FA 114354, June 28, 2002.
As a consequence, in the present case, the panel finds that all the contested
domain names, in one way or another, are confusingly similar to the Complainants’
trademarks.
B. Rights or Legitimate Interests
Paragraph 4(a)(c) of the Policy explains how a Respondent may demonstrate its
rights to and legitimate interests in a domain name in responding to a complaint.
In the present matter, the Respondent has not filed any response.
As a consequence, it has not been proven that the Respondent is either affiliated
to the Complainant or an official dealer.
It has not been proven either that there is a legal or business relationship
between the parties.
The Complainant denies that any relationship of such kind ever existed.
As a consequence, such as in the "Telstra" decision (Telstra Corporation
Limited v. Nuclear Marshmallows, WIPO
Case No. D2000-0003, February 18, 2000), it can be stated that:
"Respondent has not provided evidence of circumstances of the type specified
in paragraph 4(c) of the Uniform Policy, or of any other circumstances giving
rise to a right to or legitimate interest in the domain name. In light of (i)
the fact that the Complainant has not licensed or otherwise permitted the Respondent
to use any of its trademarks or to apply for or use any domain name incorporating
any of those marks, and (ii) the fact that the word "TELSTRA" appears
to be an invented word, and as such is not one traders would legitimately choose
unless seeking to create an impression of an association with the Complainant,
the Administrative Panel finds that the Respondent has no rights or legitimate
interests in the domain name."
The facts brought to the Panel’s attention in WIPO
Case No. D2000-0003 are similar to those in the present dispute regarding
the test of paragraph 4(a)(c) of the Policy.
Hence, the Panel finds that in the present case there is no proof that the
Respondent has a right or legitimate interest in the contested domain name.
C. Registered and Used in Bad Faith
As far as bad faith is concerned, thePpanel notes that the Respondent obviously
knew the Complainants’ trademarks when registering the domain names as in many
cases, the Respondent just misspelled the Complainants’ trademarks, added a
generic term or the name of a geographical area to these trademarks. In some
other cases, the Respondent just added an hyphen.
In order to make such modifications to the Complainants’ trademarks, the Respondent
necessarily knew these trademarks prior to registering the contested domain
names.
The Panel also notes the impressive number of domain names registered by the
Respondent which are all confusingly similar to the Complainants’ trademark,
which obviously means that the Respondent is engaged in a pattern of conduct
consisting of registering third parties trademarks as domain names.
In addition, the Respondent is a well-known cybersquatter as Henry Chan
was also the Respondent in several transfer decisions before the present proceeding:
LTD Commodities LLC v. Henry Chan, Claim No. FA0303000152617, May 8, 2003;
Pioneer Hi-Bred International, Inc. v. Henry Chan, Claim No. FA0304000154119,
May 12, 2003; Royal Bank of Canada v. Henry Chan, WIPO
Case No. D2003-0031, March 5, 2003.
As a consequence, the Panel considered that the Respondent’s conduct constitutes
bad faith registration and bad faith use of the contested domain names.
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 names:
<arizonarepblic.com>, <arizonarepublicjobs.com>, <artusatoday.com>,
<ashvillecitizentimes.com>, <bagannet.com>, <burlingtonfreeprees.com>,
<cincinnatienqurier.com>, <citizenstimes.com>, <clarinledger.com>,
<clarionledgar.com>, <clarionledge.com>, <claronledger.com>,
<courialjournal.com>, <couriorpost.com>, <couriorpostonline.com>,
<courrierpost.com>, <democratandchroncile.com>, <democratandcronical.com>,
<democrateandchronical.com>, <democratechronicle.com>, <demoinesregister.com>,
<desmoinsregister.com>, <gannetnews.com>, <greenbaypressgazett.com>,
<greenvillnews.com>, <jacksonclarionledger.com>, <lifeusatoday.com>,
<montgomeryadvertisor.com>, <montgomeryadvertizer.com>, <pensacolanewsjournel.com>,
<renogazzettejournal.com>, <rockfordregistarstar.com>, <rockfordstar.com>,
<springfieldnewleader.com>, <stargazett.com>, <statesmansjournal.com>,
<tenesseean.com>, <tennesian.com>, <tennesseeian.com>, <tennesseian.com>,
<theburlingtonfreepress.com>, <thecoloradoan.com>, <thedailytowntalk.com>,
<themontgomeryadvertiser.com>, <theoshkoshnorthwestern.com>, <thepostcrescent.com>,
<therocklandjournalnews.com>, <thetennessan.com>, <westchesterjournalnews.com>,
be transferred to Complainant Gannett Co., Inc., the ultimate parent company
of the Complainants.
Christiane Féral-Schuhl
Sole Panelist
Date: April 8, 2004