Knowledge
Unlimited v. Buy This Name
Claim Number: FA0112000103431
PARTIES
Complainant is Knowledge Unlimited, Inc., Middleton, WI (“Complainant”) represented by Lydie Arthos Hudson, of Lathrop & Clark LLP. Respondent is Buy This Name, Obninsk, Kaluga, RUSSIA (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <newscurrent.com>, registered with Bulkregister.com.
PANEL
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 26, 2001; the Forum received a hard copy of the Complaint on December 26, 2001.
On January 8, 2002, Bulkregister.com confirmed by e-mail to the Forum that the domain name <newscurrent.com> is registered with Bulkregister.com and that Respondent is the current registrant of the name. Bulkregister.com has verified that Respondent is bound by the Bulkregister.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 9, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 29, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@newscurrent.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On February 11, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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.” 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following allegations in this proceeding:
Complainant has rights to the mark contained in the domain name registered by Respondent, <newscurrent.com> and the domain name is confusingly similar with Complainant’s trademark NEWSCURRENTS. By linking the disputed domain name to pornographic websites and then attempting to sell the domain name to Complainant for $3,100, Respondent has not used the domain name in connection with a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use. Furthermore, Respondent is not commonly known as <newscurrent.com>. Therefore, Respondent does not have a right or legitimate interest in <newscurrent.com>.
In addition, Complainant’s mark NEWSCURRENTS is associated with educational programs for children throughout the United States. Respondent’s registration and use of <newscurrent.com> is evidence that Respondent intentionally attracts, for commercial gain, Internet users, including young students, to its pornographic websites at <newscurrent.com> by creating a likelihood of confusion with NEWSCURRENTS as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent has no legitimate reason for using <newscurrent.com> and the pornographic nature of Respondent’s website is further indication of Respondent’s bad faith. Further, Respondent’s offer to sell the disputed domain name to Complainant for $3,100 is also evidence that Respondent is in bad faith pursuant to Policy ¶ 4(b)(i).
B. Respondent did not file a Response in this proceeding.
FINDINGS
Complainant has been using its mark NEWSCURRENTS to sell educational materials to schools to educate children in current events since September 6, 1983 and directly to children via Complainant’s website <newscurrents.com> since September 4, 1999.
Complainant has owned a federally registered trademark in NEWSCURRENTS since December 1, 1987, Registration Number 1,467,054.
Respondent registered <newscurrent.com> on May 23, 2001. The opening screen of Respondent’s website announces, “This Domain is for Sale. Click Here to Buy this Domain Name.” These quotes link to another screen that invites a prospective buyer to submit a bid of at least $550 USD. Complainant inquired about the domain name via e-mail and Respondent wrote via e-mail: “This name is on sale at $3,100.”
Respondent also has linked <newscurrent.com> to several websites that offer pornographic services.
Complainant has received dozens of complaints from schoolteachers throughout the United States about <newscurrent.com>. Teachers have found that when their students, who intended to find the educational services offered by <newscurrents.com>, failed to add an “s,” the students accessed pornography.
DISCUSSION
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.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
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.
Complainant has established its rights in the NEWSCURRENTS mark in this proceeding. Respondent’s domain name <newscurrent.com> is confusingly similar to Complainant’s mark. The exclusion of the letter “s” in the disputed domain name does not create a distinct name that would negate a finding of confusing similarity between the domain name and Complainant’s mark. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the Complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the deletion of a letter in the domain name <statfarm.com> does not diminish the confusing similarity between the domain name and Complainant’s mark “State Farm”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has established its rights and legitimate interests in this proceeding. Respondent has failed to file a Response in the matter. As a result, the Panel will presume that Respondent has no rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Respondent’s use of <newscurrent.com> is to redirect users to pornographic websites. Further, Respondent’s company name “Buy This Name” leads the Panel to presume that when Respondent registered the <newscurrent.com> its intent from the outset was to sell the disputed domain name. Therefore, the Panel finds that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services that would satisfy Policy ¶ 4(c)(i). See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish the Complainant’s mark); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding that Respondent is not using the domain name in connection with a bona fide offering of goods and services where Respondent has registered the domain name with the intention of selling the domain name).
Further, no evidence
suggests that Respondent is commonly known as <newscurrent.com> and
Respondent cannot satisfy Policy ¶ 4(c)(ii).
See Gallup Inc. v.
Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
Respondent does not have rights in domain name when Respondent is not known by
the mark).
By linking the
disputed domain name to pornographic websites and then attempting to sell the
domain name to Complainant, Respondent has not made a legitimate noncommercial
or fair use of the domain name and therefore has failed to satisfy Policy ¶
4(c)(iii). See Nat’l Football League Prop., Inc., v. One
Sex Entm't. Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the
Respondent has no rights or legitimate interests in the domain names
<chargergirls.com> and <chargergirls.net> where the Respondent
linked these domain names to its pornographic website); see also Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to
sell domain name suggests it has no legitimate use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Registration
and Use in Bad Faith
Respondent’s company name, “Buy This Name,” indicates that Respondent had an intent to sell <newscurrent.com> from the time it registered the name. Further, Respondent’s offer to sell the disputed domain name for $550 by a message on its website and Respondent’s counteroffer to sell <newscurrent.com> to Complainant for $3,100. is additional evidence that Respondent registered the domain name primarily for the purpose of selling the registration to Complainant for valuable consideration in excess of out-of-pocket costs. The Panel finds that Respondent acted in bad faith pursuant to Policy ¶ 4(b)(i). See Dollar Rent A Car Sys. Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that the Respondent demonstrated bad faith by registering the domain name for the purpose of transferring the domain name in the amount of $3,000, an amount in excess of out of pocket costs); see also World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out of pocket costs); see also Microsoft Corp. v. Amit Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding bad faith where that Respondent registered the domain name for the purpose of selling it, as revealed by the name the Respondent chose for the registrant, “If you want this domain name, please contact me”).
When registering <newscurrent.com>, Respondent knew or should have known that Complainant’s mark NEWSCURRENTS was associated with providing educational services for children in the United States. Respondent further knew or should have known that the disputed domain name would create confusion between the Complainant’s mark and the domain name registered by Respondent. Furthermore, because Respondent used <newscurrent.com> to connect with pornographic websites, the Panel concludes that Respondent has used the disputed domain name intentionally to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation, or endorsement, of its website. Therefore, the Respondent is in bad faith as outlined in Policy ¶ 4(b)(iv). See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well-known mark to provide a link to a pornographic site is evidence of bad faith registration and use); see also MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the association of a confusingly similar domain name with a pornographic website can constitute bad faith); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief be hereby granted.
Accordingly, it is Ordered that the domain name <newscurrent.com> be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 25, 2002
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