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Media West - GRS, Inc., Media West - MNC, Inc., Gannett Pacific Corporation, Gannett Co., Inc., Gannett River States Publishing Corp., Guam Publications and Incorporated v. Moniker Privacy Services / Forum LLC / Registrant(187640) email@example.com
Case No. D2006-0478
1. The Parties
The Complainants are Media West - GRS, Inc., Media West - MNC, Inc., Gannett Pacific Corporation, Gannett Co., Inc., Gannett River States Publishing Corp., Guam Publications, Incorporated, , Reno, Nevada, of United States of America, represented by Dow, Lohnes & Albertson, PLLC, United States of America.
The Respondents are Moniker Privacy Services/ Forum
LLC, Roseau, Dominica and Registrant(187640) firstname.lastname@example.org, Hong Kong,
Hong Kong, SAR of China.
2. The Domain Names and Registrars
The disputed domain name <pacificdailynews.com> is registered with Moniker
Online Services, LLC. The disputed domain name <thenewstar.com> is registered
with OnlineNIC, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2006, concerning the domain names <pacificdailynews.com>, <thenewstar.com> and <ashevillecitizentimes.com>. On April 19, 2006, the Center transmitted by email to Moniker Online Services, LLC and OnlineNIC, Inc. a request for registrar verification in connection with the domain names at issue. On April 27, 2006, Moniker Online Services, LLC transmitted by email to the Center its verification response advising that the Registrant of the disputed domain name <pacificdailynews.com> was previously shielded by a Privacy Shield and confirmed that the Respondent, Forum LLC, is listed as the Registrant of <pacificdailynews.com>, providing the contact details for the administrative, billing, and technical contact. On May 1, 2006, in addition to notifying the parties of the above details for <pacificdailynews.com>, the Center informed the parties that the Respondent, fashionid.com, is listed as Registrant of the disputed domain name <thenewstar.com>. Due to a request by the domain name holder to transfer the domain name <ashevillecitizentimes.com> to the Complainant, the Complainant filed a submission requesting to withdraw the Complaint with regard to the domain name <ashevillecitizentimes.com>.
On May 11, 2006, the Center acknowledged receipt of the request and accordingly informed the parties and the concerned Registrar that the domain name <ashevillecitizentimes.com> was no longer an object of these proceedings, without prejudice to the disputed status of the other disputed domain names involved.
The Center verified that the Complaint together with the amendment to 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 Respondents of the Complaint, and the proceedings commenced on May 1, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 21, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 22, 2006.
The Center appointed Christopher J. Pibus as the sole
panelist in this matter on May 24, 2006. 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
There are multiple Complainants in this proceeding with interests in the trade-marks at issue. The Complainant Gannett Co., Inc. is the parent company of all the other Complainants.
The Complainants currently own a United States registration for the mark THE NEWS-STAR (Reg. No. 2, 912, 243) in association with newspapers for general circulation containing topics of general interest. This mark has a date of first use of May 1988 and is used to identify, advertise and promote its The News Star newspaper, providing daily news coverage and advertising information to residents in Monroe, Louisiana. In addition to its daily newspaper circulation, the Complainant has had an online edition of its paper on “www.thenewsstar.com” website since 2002. The Complainants have also registered numerous second-level domain names incorporating its THE NEWS-STAR mark.
Since 1970, the Complainants have continuously and extensively used the mark PACIFIC DAILY NEWS to identify, advertise and promote its Pacific Daily News newspaper, providing daily news coverage and advertising information to residents of the territory of Guam. In addition to its daily newspaper circulation, the Complainant has had an online edition of its paper located at “www.guampdn.com” since 2000. The Complainants have also registered numerous second-level domain names incorporating THE PACIFIC DAILY NEWS mark. The Complainants’ advertising expenditures exceed US $6 million to promote its newspaper, website and mark.
The Respondent, fashionid.com, registered the domain name <thenewstar.com> on April 4, 2002, and the Respondent, Forum LLC, registered <pacificdailynews.com> on December 28, 2002. At the date of the Complaint, the Respondents were operating active websites using the disputed domain names.
The Respondents have failed to file any response in
the present proceedings.
5. Parties’ Contentions
(1) Multiple Respondents
The Complainants argue and have submitted evidence to the effect that the domain names in dispute are actually owned by one single respondent, namely fashionid.com. Complainants rely on the following factors to establish identity of ownership: (1) the two domain names are hosted on the same servers and are located at the same Internet Protocol (IP) address; (2) both domain names initially resolved to generic portal directory websites which were virtually identical except for the display of the domain name at the top of the page; (3) although the websites were subsequently altered so that different versions of a portal directory site appear from time to time, yet a consistent look and feel among the websites is still demonstrable.
(2) Identical or Confusingly Similar
The domain name <thenewstar.com> is confusingly similar to the Complainants’ THE NEWS-STAR mark. The Complainants own federal registrations for the mark and have a long history of continuous and exclusive use of the mark in connection with their Louisiana newspaper. The Complainants submit that other than the deletion of the hyphen, the only difference between the Complainants’ mark and the Respondent’s corresponding domain name is the deletion of a single letter of the mark in a manner that creates a common misspelling of the Complainants’ mark. The Complainants argue that such distinctions are insufficient to overcome the likelihood of confusion between the disputed domain name and their mark.
The domain name <pacificdailynews.com> is virtually identical to the Complainants’ PACIFIC DAILY NEWS mark. The Complainants have a long history of continuous and exclusive use of its mark, having used the mark in connection with its daily newspaper in Guam since at least as early as 1970. The Complainants submit that the only difference between the Complainants’ mark and the Respondent’s corresponding domain name is that the Respondent has added the generic TLD “.com” to the domain name. The Complainants argue that such differences are irrelevant when determining whether disputed domain names are identical and confusingly similar to a trade-mark.
(3) Rights or Legitimate Interests
The Respondents have no legitimate rights or interest in the disputed domain names. The Respondents have never been commonly known by the domain names and have not acquired trade-mark or service mark rights in them. The Respondents have also never been authorized by the Complainants to use the Complainants’ marks, in any way, shape or form, much less as part of the domain names, which gives rise to a presumption that the Respondents cannot establish that they have rights or any legitimate interest in the domain names. Furthermore, the Respondents have never made any use of, or demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. Rather, they use the domain names as portal sites to provide links to third-party websites, presumably receiving compensation for this misdirection. The Complainants submit that the Respondents are intentionally infringing the Complainants’ rights and are trading off the goodwill that the Complainants have built in their registered marks. Lastly, the Complainants bring the Panel’s attention to previous UDRP panels that have concluded that such conduct by the Respondent, fashionid.com, does not constitute bona fide use of a domain name.
(4) Registered and Used in Bad Faith
The Respondents registered and are using the disputed domain names in bad faith. The Complainants submit that the Respondents’ registration of the disputed domain names in a manner that deliberately prevents the Complainants from using their marks as domain names is evidence of the Respondents’ bad faith, particularly in light of the fact that the Respondent, <fashionid.com>, has engaged in pattern of such conduct. Moreover, the Respondents’ use of the domain name to misdirect potential visitors to the Complainants’ websites to third party commercial websites, for which the Respondents receive compensation, is also evidence that the Respondents have registered the domain names to deceptively attract and misdirect Internet users for the Respondents’ own commercial gain, constituting bad faith. Lastly, the Respondents are engaged in the practice of “typosquatting”, which is itself evidence of bad faith registration.
The Respondents did not reply to the Complainants’
6. Discussion and Findings
The Panel accepts the Complainants’ submissions that all Complainants
have a clearly-stated interest in at least one trade-mark at issue in the Complaint,
either as a trade-mark owner or as a trade-mark licensee, and the fact that
there are multiple Complainants in this proceeding should not act as a bar to
relief. (See e.g. Gannett Co., Inc. et al. v. Henry Chan, WIPO
Case No. D2004-0117 (trademarks owned by Gannett Co., Inc. and its subsidiaries,
49 domain names transferred)).
This matter involves two domain names which are held in the name of different owners. As such, there is a preliminary issue as to whether the Complaint is properly formulated, given that paragraph 3(c) of the Rules provides:
“The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”.
In the absence of any evidence to the contrary, the Panel accepts, for the purposes of this proceeding, the Complainants’ documented submission that the Respondents are connected and therefore that the disputed domain names are within the scope of paragraph 3(c) of the Policy.
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The Domain Name is identical or confusingly similar to a trade-mark or service mark in which the Complainant has rights;
(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.
A. Identical or Confusingly Similar
The first issue in this matter is whether the domain names <thenewstar.com> and <pacificdailynews.com> are confusingly similar to the Complainants’ marks. There are two elements that must be satisfied to establish this: a) that the Complainants have rights in the particular mark or marks; and b) that the domain name in question is identical or confusingly similar to that mark.
The first element is readily established by reference
to the relevant Trade-marks register. In this case, evidence of the United States
Patent and Trademark Office registration for THE NEWS-STAR is sufficient to
satisfy the threshold requirement of having rights in the mark (Imperial
College of Science, Technology and Medicine v. Zahid Khan (for Imperial College
Management School Alumni Association – ICMSAA), WIPO
Case No. D2000-1079).
With respect to confusion, the disputed domain name
<thenewstar.com> differs from the mark THE NEWS-STAR merely by the omission
of the hyphen and the second consonant “s”. With respect to the
hyphen, the Panel follows previous Panel decisions where it was held that the
omission of a hyphen between word elements is not sufficient to avoid confusion
between the disputed domain name and the Complainants’ mark. (See e.g.
Deutsche Telekom AG v. Dexcom Holdings B.V., WIPO
Case No. DTV2006-0001 (T-Mobile versus tmobiletv.com)). Furthermore, the
deletion of the second “s” from the mark – which would have
directly followed the first “s” after removing the hyphen –
does not alter the pronunciation or meaning of the domain name, and accordingly
does not remove or reduce the likelihood of confusion (See e.g. Delta Air
Lines, Inc. v. Stonybrook Investments, Ltd., WIPO
Case No. D2000-1686 (Delta Air Lines v. deltaairline.com); Ross-Simons,
Inc. v. Citynet Network, WIPO Case No.
D2003-0971 (ROSS-SIMONS versus rossimon.net”)). A deletion of this
nature does not make any material change to the key features of the Complainants’
trade-mark, and can be viewed as “typosquatting”. (Wachovia Corporation
v. Peter Carrington, WIPO Case No. D2002-0775).
Ample authority exists to support the conclusion that “essential”
or “virtual” identity is sufficient for the purposes of satisfying
the second element above (United Feature Syndicate, Inc. v. Mr. John Zuccarini,
WIPO Case No. D2000-1449).
The preliminary issue is whether the Complainants have protectable rights in the unregistered mark PACIFIC DAILY NEWS. The question is whether the Complainants’ mark has acquired sufficient distinctiveness through use and promotion to identify the source of this particular service with the Complainants.
It is undisputed that paragraph 4(a)(i) of the Policy
refers to a “trademark or service mark” in which the Complainants
have rights, and does not expressly limit the application of the Policy to a
registered trademark or service mark. Further, the WIPO Final Report on the
Internet Domain Name Process (The Management of Internet Names and Address:
Intellectual Property Issues, April 1999), from which the Policy is derived,
does not distinguish between registered and unregistered trademarks and service
marks in the context of abusive registration of domain names. It is therefore
open to conclude that the Policy is applicable to unregistered trademarks and
service marks.” (See Imperial College v. Christophe Dessimoz, WIPO
Case No. D2004-0322); The British Broadcasting Corporation v.
Jaime Renteria, WIPO Case No. D2000-0050;
MatchNet plc. v. MAC Trading, WIPO
Case No. D2000-0205; Emmanuel Vincent Seal trading as Complete Sports
Betting v. Ron Basset, WIPO
Case No. D2002-1058).
A fundamental principle of trademark law is that rights
in a trademark can be acquired through use, and such rights exist even though
the trademark may not be registered. Accordingly, the Panel accepts that common
law trade-mark rights exist when a party proves there is enough goodwill and
reputation in a name which is associated with the Complainants. (Action Sports
Videos v. Jeff Reynolds, WIPO
Case No. D2001-1239).
In the Panel’s view, based on the Complainants’ uncontested submissions of continuous and extensive use of the Complainants’ mark PACIFIC DAILY NEWS since 1970 for a newspaper in Guam, its numerous second-level domain names incorporating the mark, as well as its large advertising expenditures promoting its marks, the Complainants have developed goodwill and reputation to protect their common law mark in this proceeding.
With respect to confusion, the Respondents’ disputed domain name <pacificdailynews.com> is identical to the Complainants’ trade-mark, except that the Respondents have added the generic TLD “.com” to the domain name. As stated above, virtual identity is sufficient for the purposes of satisfying the confusion test.
The Panel therefore finds that the Complainant has satisfied the first requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainants have established a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain names. First of all, there is no relationship between the Complainants and the Respondents giving rise to any license, permission or authorization of use of the disputed domain names. Furthermore, there is no evidence that the Respondents have ever been called by, affiliated with or commonly known by any of the disputed domain names as an individual or other organization. This conclusion is consistent with a previous UDRP Panel decision where the Respondent, fashionid.com, did not demonstrate that it was commonly known by the disputed domain name (See XO Communications, Inc. v. Registrant email@example.com 9876543210, NAF Claim No. FA0212000137676).
Confirmation that the Respondents have no rights or legitimate interests in <thenewstar.com> and <pacificdailynews.com> appears from the evidence that the Respondents use the disputed domain names in connection with portal sites offering third-party links to misdirect potential visitors from the Complainants’ website. Using identical or confusingly similar designations to the Complainants’ marks as domain names to divert traffic to Respondents’ own portal sites is not a bona fide offering of goods or services, nor is it a legitimate non-commercial or fair use of the domain name (Oki Data Americas, Inc. v. Albert Jackson, WIPO Case No. D2004-0087). This conclusion is consistent with seven different UDRP Panels that have concluded that such conduct by the Respondent, fashionid.com, does not constitute bona fide use of a domain name. (See Neiman Marcus Group, Inc. v. fashionid.com, NAF Claim No. FA0304000155176).
The Panel therefore finds that the Complainant has met the requirement of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel accepts the Complainants’ arguments that the essential facts in this case correspond to the examples of bad faith cited in paragraphs 4(b)(ii) and 4(b)(iv) of the Policy.
With respect to paragraph 4(b)(iv), the Respondents use <thenewstar.com>
and <pacificdailynews.com> as portal sites offering links to third party
commercial sites. These uses of virtually identical and confusingly similar
domain names and the resulting confusion will inevitably give rise to diversion
of Internet traffic from the Complainants’ sites to the Respondents’
sites. In this regard, the Panel infers that the Respondents are benefiting
from this confusion and diversion by receiving “click-through” commissions
in accordance with conventional practices on the Internet when customers reach
a site through a link on a portal (Humana Inc. v. Domain Deluxe, WIPO
Case No. D2005-0231). This opportunistic behaviour is similar to the Respondent
fashionid.com’s behaviour in previous UDRP decisions (See British Broadcasting
Corp. v. Registrant (187640) firstname.lastname@example.org +1.25255572, WIPO
Case No. D2005-1143 (“There are at least seven UDRP decisions ordering
the Respondent to transfer different domain names that were identical or confusingly
similar to trademarks or different trademark owners.”)
Furthermore, by registering a modified version of the Complainants’ trade-mark
as a domain name (<thenewstar.com>), the Respondents intend to take advantage
of the Complainants’ popularity by redirecting traffic from Internet users
looking for the Complainants, but misspelling the name. This form of “typosquatting”
is considered bad faith within the meaning of the Policy (See Sanofi-aventis
v. Elizabeth Riegel and Andrew Riegal, WIPO
Case No. D2005-1045; Estйe Lauder Inc. v. estelauder.com, WIPO
Case No. D2000-0869).
With respect to paragraph 4(b)(ii), the Respondents’ registration of
two domain names that are virtually identical to or based on typographical errors
of the Complainants’ marks and their use to deceptively misdirect visitors
to third party commercial websites is evidence that the Respondents have registered
the domain names in a manner that deliberately prevents the Complainants from
using their marks as a domain name, particularly in light of the fact that the
Respondent, fashionid.com, has engaged in a pattern of such conduct. This pattern
of conduct is found in previous UDRP proceedings against fashionid.com where
it was held that the Respondents have engaged in pattern of conduct preventing
trade-mark owners from reflecting their marks in corresponding domain names
(See British Broadcasting Corp. v. Registrant (187640) email@example.com
+1.25255572, WIPO Case No. D2005-1143).
Accordingly, the Panel finds that the Complainant has met the requirement of
paragraph 4(a)(iii) of the Policy.
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 <thenewstar.com> and <pacificdailynews.com> be transferred to the Complainants.
Christopher J. Pibus
Dated: June 12, 2006