NYP Holdings, Inc. v. maro bidro
Claim Number: FA2206002002108
Complainant is NYP Holdings, Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is maro bidro (“Respondent”), Austria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newsnypost.com>, registered with Google LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 27, 2022; the Forum received payment on June 27, 2022.
On June 28, 2022, Google LLC confirmed by e-mail to the Forum that the <newsnypost.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 29, 2022, the Forum served the Complaint and all Annexes, including a German and English language Written Notice of the Complaint, setting a deadline of July 19, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@newsnypost.com. Also on June 29, 2022, the German and English language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default. Respondent did however send an email to the Forum, see below.
On July 25, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Prior to discussing the three elements of the Policy, the Panel must decide on the language of the proceedings. The Registration Agreement is written in German, thereby making the language of the proceedings German.
Pursuant to UDRP Rule 11(a), the Panel has the authority to determine a different language for the proceedings, having regard to the circumstances of the case. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Pursuant to Rule 10(b), Respondent must be given a fair opportunity to present its case. Pursuant to Rule 10(c), the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
In the present case, Respondent has received the Written Notice and the Commencement Notification in German and has chosen not to respond to the Complaint. The resolving website is in English and Respondent sent an email in English to the Forum, thus it is conversant in English. Pursuant to Rule 11(a), having regard to the circumstances of the case, the Panel determines that fairness and justice to both parties, and due expedition, are best satisfied by conducting the remainder of the proceedings in English. See H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA 1736477 (Forum July 21, 2017); see also UBS AG v. ratzel laura, FA 1735687 (Forum July 14, 2017).
A. Complainant
Complainant states that it is a New York-based global media company. Tracing its history back to 1801 with the publication of the New York Evening Post, Complainant’s NEW YORK POST newspaper is the oldest continuously published daily newspaper in the U.S. and one of the top-10 daily newspapers in the U.S. Complainant’s NEW YORK POST services include news coverage on a wide range of topics such as business, sports, entertainment, fashion, lifestyle, culture, real estate, and media, with a focus on coverage of the New York metropolitan area. Complainant’s NEW YORK POST news services are well-known in particular for comprehensive sports coverage, famous headlines, and the iconic PAGE SIX section, an authority on celebrity news. The print version of the NEW YORK POST newspaper is available around the country. Complainant’s NEW YORK POST news services are highly popular. For example, in February 2022, Complainant’s NEW YORK POST website received approximately 333,000,000 page views from 94,100,000 unique visitors. In the third quarter of 2021, average weekday circulation of the NEW YORK POST newspaper, including mobile and tablet app digital editions, was more than 475,000. Complainant claims rights in the NEW YORK POST mark through its registration in the United States in 1989.
Complainant alleges that the disputed domain name is confusingly similar to its NEW YORK POST mark because it incorporates an abbreviated version of the mark, differing only through the addition of the generic/descriptive term “news” and the “.com” generic top-level domain (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the NEW YORK POST mark in any way. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass off as Complainant to offer competing services by creating a copycat web site. Specifically, the resolving website mimics Complainant’s legitimate website, displaying Complainant’s mark and logo, and reproduces content from Complainant’s website. Further, the resolving website identifies Complainant as the website owner in the copyright notice at the bottom of each page. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain in bad faith. Respondent uses the disputed domain to pass off as Complainant, offering competing services and disrupting Complainant’s business. Respondent had actual knowledge of Complainant’s rights in the NEW YORK POST mark prior to registration of the disputed domain. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding. It its email to the Forum, Respondent states: “Hello, I am the owner of this domain name newsnypost.com I have not offered it for sale before, but if you are interested, make this domain a suitable offer and I will send it to you If you are a mediator, help me and let the complainant know my message.”
Complainant owns the mark NEW YORK POST and uses it to publish a newspaper and to provide related services.
Complainant’s rights in its mark date back to at least 1989.
The disputed domain name was registered in 2022.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website mimics Complainant’s legitimate website, displaying Complainant’s mark and logo, and content copied from Complainant’s website. The resolving website identifies Complainant as the website owner in the copyright notice at the bottom of each page.
Paragraph 15(a) of the Rules instructs this Panel to "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 requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The disputed domain name incorporates an abbreviated form of Complainant’s NEW YORK POST mark and merely adds the generic/descriptive term “news” and the “.com” gTLD. Abbreviating a mark, and adding of a generic or descriptive phrase and gTLD generally fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See NYP Holdings v. Eysana ali, FA 2105001944152 (Forum June 4, 2021) (“The Panel finds Respondent’s <nyposta.com> domain name to be confusingly similar to Complainant’s mark since it merely abbreviates the geographic element ‘New York’ as ‘NY’ and adds the letter ‘a’, which together do not sufficiently distinguish the domain name from the mark.”); see also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Here, the WHOIS information associated with the disputed domain indicates that the registrant is known as “maro bidro”. Therefore the Panel finds that Respondent is not commonly known by the disputed domain name and was not granted usage rights per Policy ¶ 4(c)(ii).
Respondent uses the disputed domain name to pass off as Complainant to offer competing products by creating a copycat website. Specifically, Complainant provides evidence showing that the resolving website mimics Complainant’s legitimate website, displaying Complainant’s mark and logo, and reproduces content from Complainant’s website; the resolving website identifies Complainant as the website owner in the copyright notice at the bottom of each page. Using a disputed domain name to pass off as a Complainant is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (“In effect, Respondent attempted to pass itself off as Complainant online. Such blatant unauthorized use of Complainant’s mark is evidence that Respondent has no rights or legitimate interests in the disputed domain name”); see also Choice Hotels International, Inc. v. Hotel Partners a/k/a eGO Inc., FA 190506 (Forum Oct. 6, 2003) (“Respondent’s attempt to pass itself off as Complainant at the disputed domain name, without authorization or license by Complainant . . . is evidence that Respondent lacks rights or legitimate interests in the disputed domain name”); see also Bloomberg L.P v. Bloomberg Realty (India) Private Limited, Forum Decision FA 1204001439263. (“Use of a domain name which intentionally trades on the fame of another cannot constitute a bona fide offering of goods and services”). Consequently the Panel finds that Respondent has failed to use the disputed domain name to make bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). And the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, consumers visiting the resolving website are likely to be confused as to whether Respondent and/or its website is affiliated in some way with Complainant; and/or the disputed domain name or the associated website are endorsed, authorized, or sponsored by Complainant, none of which are true. This is a form of bad faith use of the disputed domain name. See Bank of America Corp. v. Out Island Props., Inc., FA 154531 (Forum June 3, 2003) (bad faith established “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website.”); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith”); see also Fossil, Inc. v. www.fossil-watch.org c/o Host Master, FA 335513 (Forum Nov. 9, 2004) (“Respondent’s use of the disputed domain name to pass itself off as Complainant is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)”); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Thus the Panel finds bad faith registration and use per Policy ¶¶ 4(b)(iii) and/or (iv).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving website displays Complainant’s mark and logo, and content copied from Complainant’s legitimate website; the resolving website identifies Complainant as the website owner in the copyright notice at the bottom of each page. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <newsnypost.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: July 25, 2022
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