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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Press-Enterprise Company v. Cook Barela

Case No. D2006-0731

 

1. The Parties

The Complainant is Press-Enterprise Company of Riverside, California, United States of America, represented by Dow, Lohnes & Albertson, PLLC, United States of America.

The Respondent is Cook Barela of Riverside, California, United States of America, self-represented.

 

2. The Domain Names and Registrar

The disputed domain names, <pressenterprise.org>, <thepressenterprise.net>, <thepressenterprise.org>, are registered with Tucows.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2006. On June 12, 2006, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain names at issue. On June 12, 2006, Tucows transmitted by email 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 June 15, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2006. On July4, 2006, the Respondent requested an extension to the due date for Response. On July 5, 2006, the Center approved the Complainant’s agreement to a two day extension in the due date for the Response to July 7, 2006. The Response was filed with the Center on July 8, 2006.

The Center appointed Mr. Scott Donahey as the sole panelist in this matter on August 22, 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.

Complainant filed a request for leave to file a reply and a proposed reply. Because the Panel did not request additional filings and because the Rules provide only for a complaint and a response, in reaching its decision, the Panel did not read and did not consider the reply.

 

4. Factual Background

Complainant is the publisher of a newspaper in Southern California having a circulation of more than 183,000 paid subscribers and a Sunday circulation of more than 185,000 paid subscribers. The newspaper is distributed in what is sometimes referred to as the “Inland Empire,” which includes Riverside, California, where Respondent resides. Complainant has published the newspaper under THE PRESS-ENTERPRISE mark since 1955, and since at least as early as August 2001, has published an online version at the URL “www.pe.com”. Complaint, Annex C. The online version received more than 61 million requests for page views in 2005. Complainant spent almost two million dollars in 2005 to promote the Press-Enterprise print and online versions and THE PRESS-ENTERPRISE mark and expects to spend only slightly less in similar promotions in 2006. Complainant does not have a registered trade mark.

Press Enterprise, Inc., a Pennsylvania corporation that operates a newspaper in Pennsylvania and an online newspaper with the name Press Enterprise registered a design plus words mark PRESS [stylized compass rose design] ENTERPRISE with the United States Patent and Trademark Office (“USPTO”), showing a first use in commerce on August 25, 1998. Among the cities in the general circulation area of The Pennsylvania Press Enterprise is the city of Riverside, Pennsylvania.

Complainant has registered the domain names <pe.com>, <pressenterprise.com>, <press-enterprise.com>, <pe.net>and <thepress-enterprise.com>. Complaint, Annexes C and D. These registrations date back to as early as 1994. Both <pe.net> and <pressenterprise.com> link to the online version of the newspaper located at www.pe.com. The domain names <press-enterprise.com> and <thepress-enterprise.com> link to a summary of news stories found at the www.pe.com web site. Complaint, Annex E.

On May 11, 2005, Respondent registered the domain name <pressenterprise.org>. On May 19, 2005, Respondent registered the domain names <thepressenterprise.org> and <thepressenterprise.net>. These registrations were made without the authorization, knowledge, or consent of Complainant.

The domain names at issue initially resolved to a website located at “www.pressenterprise.org” that has the heading “Pressenterise.org Presents StupidNewsReporters.com, A Look Inside the News Reporters News Stories.” The site has links to an article written by Respondent that is critical of Complainant. The site also has articles critical of Newsweek and of Dan Rather and CBS News.

The web site also has a cartoon that shows a copy of Complainant’s newspaper hovering above the opening to a toilet under the caption “How Sacred is the Press Enterprise Newspaper?”

The web site contains the following statement: “Subscribe to Daily Bulletin, Jurupa’s newest newspaper, adding new subscriber’s [sic] everyday [sic] in the Inland Empire. Only $24.00 a year. Or the Record, Jurupa’s locally owned local news for only $15.00 a year. Click on the above logo, print out the subscription form and write on it you heard about them at PressEnterprise.org or Stupid NewsRporters.com.” The logos referenced are those of two of Complainant’s local competitors. Complaint, Annex F. Respondent states that he receives no compensation from either of the competitive newspapers.

The web site currently has a disclaimer that the web site is not affiliated with either the California based newspaper, The Press-Enterprise, or the Pennsylvania newspaper, the Press Enterprise.

The Press-Enterprise has run a story dated April 1, 2005, on the new bloggers, in which Respondent is quoted. Response, Annex 3. On June 20, 2006, a story by Sandra Stokely was published in the Press-Enterprise which mentioned Respondent and which Respondent felt portrayed him in a negative light. Response, Annex 6. Respondent notes that prior to 2003, Complainant had published and used Respondent’s name in over 347 news stories. Since 2003, Complainant has mentioned or used news stories generated by Respondent at least 130 times.

Respondent notes that the domain names <thepressenterprise.com> and <pe-online.com> are currently available for purchase and that Complainant has not bothered to purchase these domain names. Respondent requests that the Panel make a finding of reverse domain name hijacking.

The content of the web site appears to be identical to the content found at another web site operated by Respondent at “www.studpidnewsreporters.com”. Complaint, Annex I. Respondent also maintains a web site at “www.jarpd.com” which contains links to stories published by The Press-Enterprise. On May 9, 2005, The Press-Enterprise sent Respondent an email requesting that all links to the stories be removed, as the newspaper does not permit the use of such stories without permission. On May 25, 2005 counsel for Complainant sent Respondent a cease and desist letter re the use of the domain name <pressenterprise.org>. Respondent did not respond.

Respondent renewed the registrations of the domain names at issue in May 2006.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that the domain names at issue are identical or confusingly similar to a common law trademark in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain names at issue, and that the domain names at issue have been registered and are being used in bad faith.

B. Respondent

Respondent contends Complainant has no trademark right in THE PRESS-ENTERPRISE mark because Complainant has not registered the mark and the Press Enterprise newspaper in Pennsylvania has registered a similar mark and design, that Respondent has rights and legitimate interests in respect of the domain names at issue, because Respondent’s name and articles have been mentioned in numerous articles published in the Press-Enterprise and because the Press-Enterprise has refused to publish his letters to the editor responding to what Respondent regards as negative treatment of Respondent in the Press-Enterprise articles, and that Respondent has registered and is using the domain names at issue in good faith, in that Respondent is making fair use of the domain names at issue to correct misimpressions and inaccuracies in Complainant’s stories about him.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:

1) that 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,

2) that the respondent has no legitimate interests in respect of the domain name; and,

3) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

In the United States, it is possible to have a registered trademark which has been registered with the USPTO or a state trademark office, or to have a common law trademark which has acquired secondary meaning through use. Since trademarks are generally limited to the services and/or goods with which they are used and to the geographic area in which they are used, it is possible for multiple persons or entities to lawfully possess an identical trademark. In the present case, Complainant has a common law trademark THE PRESS-ENTERPRISE acquired through use over the years in conjunction with the newspaper published by Complainant.

The Panel finds that the domain names <thepressenterprise.org> and <thepressenterprise.net> are identical or confusingly similar to Complainant’s THE PRESS-ENTERPRISE mark, with the only difference between Complainant’s mark and the domain names being the addition of the “.org” and “.net” generic top-level domains and the deletion of the hyphen and the spaces in Complainant’s mark, all of which are irrelevant to the issue of confusing similarity. See Draw-Tite, Inc. v. Plattsburgh Spring Inc., WIPO Case No. D2000-0017 (finding that the addition or deletion of a hyphen or space between the two words of a mark makes an insubstantial difference to the appearance, pronunciation and meaning of the mark and finding the domain name <drawtite.com> to be confusingly similar to the DRAW-TITE and Design mark); Rollerblade, Inc. v. McCrady, WIPO Case No. D2000-0429 (finding that the generic Top Level Domain name suffix, such as “.net” or “.com,” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

The Panel finds that the domain name <pressenterprise.org>is identical or confusingly similar to Complainant’s THE PRESS-ENTERPRISE mark, in that, in addition to the changes noted above, Respondent has deleted the generic term “the” from Complainant’s mark. The deletion of the generic term “the” does not avoid the conclusion that this domain name is confusingly similar to Complainant’s mark. See, e.g., Mandarin Oriental Services B.V. v. Control Alt Delete, WIPO Case No. D2000-1671 (finding the domain name <orientalhotel.com> to be confusingly similar to complainant’s mark THE ORIENTAL).

B. Rights or Legitimate Interests

The extent to which a registrant can use a trademark in a domain name for the purposes of criticizing the trademark holder has been the subject of much debate among Panelists. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”) in paragraph 2.4 sets out the discrepancy in Panel views on this subject:

2.4 Does a respondent using the domain name for a criticism site generate rights and legitimate interests?

This section only concerns sites that practice genuine, non-commercial criticism. There are many UDRP decisions where the respondent argues that the domain name is being used for a free speech purpose, but the panel finds that, in fact, the domain name is being used for commercial gain. See Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico D2000-0477 among others, Transfer.

In the event that a domain name confusingly similar to a trademark is being used for a genuine non-commercial free speech web site, there are two main views. There is also some division between proceedings involving US parties and proceedings involving non-US parties, with few non-US panelists adopting the reasoning in View 2.

View 1: The right to criticize does not extend to registering a domain name that is identical or confusingly similar to the owner’s registered trademark or conveys an association with the mark.

Relevant decisions:

Skattedirektoratet v. Eivind Nag WIPO Case No. D2000-1314, Transfer;

Myer Stores Limited v. Mr. David John Singh WIPO Case No. D2001-0763 , Transfer;

Triodos Bank NV v. Ashley Dobbs WIPO Case No. D2002-0776, Transfer

The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez WIPO Case No. D2003-0166, Transfer;

Kirkland & Ellis LLP v. DefaultData.com, American Distribution Systems, Inc. WIPO Case No. D2004-0136, Transfer.

View 2: Irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if the use is fair and non-commercial.

Relevant decisions:
Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers D2000-0190, Denied
TMP Worldwide Inc. v. Jennifer L. Potter WIPO Case No. D2000-0536, Denied;

Howard Jarvis Taxpayers Association v. Paul McCauley WIPO Case No. D2004-0014, Denied;

Imposing further conditions as to domain name and use:
Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign WIPO Case No. D2004-0206, Denied.

In the second view, that which permits use of a trademark in a domain name even where the domain name as such does not connote criticism of the trademark holder, the use must not only be non-commercial, but it must also be fair. Such fair use has been found where the site to which the domain name resolves is set up for purposes of criticizing the Complainant in it’s business or conduct. The rationale is that the use of the trademark in the domain name is acceptable where the web site to which the domain name resolves is limited to criticism of the complainant without any commercial benefit to the respondent. See, e.g., the excellent analysis of the split view of WIPO panelists by the Panel in Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014.

In another case cited in Section 2.4 of the WIPO Overview, Bridgestone Firestone, Inc., et al. v. Jack Myers, WIPO Case No. D2000-0190, the Panel analyzed the federal court decision in the case of Bally Total Fitness Holding Corp. v. Faber, 29 F.Supp.2d 1161 (C.D. Cal. 1998):

In Bally, the court held that the defendant’s use of a trademark in an Internet site for purposes of consumer commentary and criticism did not infringe or dilute the plaintiff’s mark. The court held that the defendant was “exercising his right to publish critical commentary about Bally” and that he could not do so without making reference to Bally:

Faber is using Bally’s mark in the context of a consumer commentary to say that Bally engages in business practices, which Faber finds distasteful or unsatisfactory. This is speech protect by the First Amendment . . . As such[,] Faber can use Bally’s mark to identify the source of the goods or services of which he is complaining.” This use is necessary to maintain broad opportunities for expression. Id., at 1165, 1167.

However, that is not the case in the present situation. The domain names at issue which include Complainant’s common law trademark are used to resolve to a web site at which the criticism stated does not exclusively deal with Complainant’s business practices or conduct, but that of other news agencies as well. It also contains inter alia numerous links to other news agencies and news papers, many of which could be characterised as competitors of the Complainant. Moreover, the heading on the web site says, “Pressenterprise.org presents StupidNewsReporters.com, A Look Inside the News Reporters News Stories,” which suggests to this Panel that Complainant is sponsoring a site at which there is detailed criticism of news reporters from other news media or agencies, including Newsweek and CBS television, as well as reporters who have been published in Complainant’s newspaper. This is clearly not the case in fact, as Complainant is completely unaffiliated with Respondent’s web site. The overall impression created is one in which the Respondent appears to be using the site to create confusion between the Complainant’s mark and the disputed domain names, and to create a misleading impression that the Complainant is in someway connected to or affiliated with the material on the site. Accordingly, the Panel finds that under the view that a domain name incorporating a trademark which domain name does not connote criticism of the trademark holder, there cannot be fair use where the criticism on the site goes beyond criticism of complainant, involves criticism of third parties unrelated to the complainant or its mark, its business practices, or its conduct, and contains numerous links to entities engaged in a similar business to the Complainant.

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in respect of the domain names at issue.

C. Registered and Used in Bad Faith

The web site to which the domain names at issue resolve or to which they are linked not only contains articles critical of Complainant and other news media, but also requests that users subscribe to direct competitors of Complainant, sets out the price of annual subscriptions to competitors’ products, and links directly to application forms for subscriptions on the competitors’ web sites. Therefore, Respondent is using the trademark of Complainant, without any indication in the domain name in which the trademark is used that criticism of Complainant is intended, to resolve to a web site which encourages users to subscribe to publications of direct competitors of Complainant, gives prices for such subscriptions, and provides direct links to applications for subscriptions on the web sites of Complainant’s competitors. In the view of this panel this is not fair use of Complainant’s trademark, and this particular use constitutes bad faith registration and use under the policy. The Panel believes that while it may be acceptable to incorporate the trademark into a domain name without any hint that it will lead to a web site critical of complainant, it is not acceptable to use that trademark in a domain name to solicit purchases of competing goods and services by direct links to web sites of complainant’s competitors.

 

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<pressenterprise.org>, <thepressenterprise.org>, and <thepressenterprise.net> be transferred to the Complainant.

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M. Scott Donahey
Sole Panelist

Dated: September 5, 2006