Dayton Newspapers, Inc. v. CW c/o Claudia Wilson
Claim Number: FA0710001100686
Complainant is Dayton Newspapers, Inc. (“Complainant”), represented by James
A. Dimitrijevs, of Baker & Hostetler LLP, 3200
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <springfieldnewsandsun.com>, registered with Columbiadomains, 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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 22, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 23, 2007.
On October 23, 2007, Columbiadomains, LLC confirmed by e-mail to the National Arbitration Forum that the <springfieldnewsandsun.com> domain name is registered with Columbiadomains, LLC and that Respondent is the current registrant of the name. Columbiadomains, LLC has verified that Respondent is bound by the Columbiadomains, LLC 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 October 26, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 15, 2007 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@springfieldnewsandsun.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 21, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.), as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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.
A. Complainant makes the following assertions:
1. Respondent’s <springfieldnewsandsun.com> domain name is confusingly similar to Complainant’s SPRINGFIELD NEWS-SUN mark.
2. Respondent does not have any rights or legitimate interests in the <springfieldnewsandsun.com> domain name.
3. Respondent registered and used the <springfieldnewsandsun.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Dayton
Newspapers, Inc., and its predecessor-in-interest have continuously used
the SPRINGFIELD NEWS-SUN mark since 1928 in connection with newspaper and
reporting services in the
Respondent’s <springfieldnewsandsun.com> domain
name resolves to website featuring a commercial search engine and links to
various third-parties, some of whom offer products and services in direct
competition with those offered under Complainant’s mark. Further, many featured advertisements listed
on the resulting website are similar to the types of classifieds advertised in
the newspapers offered under Complainant’s SPRINGFIELD NEWS-SUN mark. In response to Complainant’s cease-and-desist
letter to Respondent, Respondent demanded $1500 to transfer the disputed domain
name or threatened to transfer the disputed domain name to a registrar in
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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
sufficiently established its rights in the SPRINGFIELD NEWS-SUN mark through
registration with the USPTO pursuant to Policy ¶ 4(a)(i). See Innomed Techs.,
Inc. v. DRP Servs., FA 221171 (Nat.
Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO
establishes Complainant's rights in the mark.”); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA
198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a
determination that a mark is registrable, by so issuing a registration, as
indeed was the case here, an ICANN panel is not empowered to nor should it
disturb that determination.”).
Respondent’s <springfieldnewsandsun.com> domain name would be identical to Complainant’s SPINGFIELD NEWS-SUN mark but for the replacement of the hyphen with the word “and.” This replacement of a hyphen with a generic article does not distinguish the disputed domain name from Complainant’s mark. Further, the inclusion of the generic top-level domain (“gTLD”) “.com” is irrelevant to a Policy ¶ 4(a)(i) analysis. As a result, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no
rights or legitimate interests in the disputed domain name. See VeriSign
Inc. v. VeneSign
Respondent has failed to submit a response to the Complaint. Therefore, the Panel presumes that Respondent has no rights or legitimate interests in the disputed domain name, but will continue to examine the record in consideration of the factors listed under Policy ¶ 4(c). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Nowhere in Respondent’s WHOIS information or elsewhere in
the record does it indicate that Respondent is or ever was commonly-known by
the disputed domain name. Further,
nothing indicates that Respondent has never sought and Complainant has never
granted Respondent permission to use the SPRINGFIELD NEWS-SUN mark in any
way. Absent any evidence to the
contrary, the Panel finds that Respondent is not commonly known by the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10,
2003) (stating “nothing in Respondent’s WHOIS information implies that
Respondent is ‘commonly known by’ the disputed domain name” as one factor in
determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no
rights or legitimate interest where the respondent was not commonly known by
the mark and never applied for a license or permission from the complainant to
use the trademarked name).
Respondent’s <springfieldnewsandsun.com> domain
name resolves to a commercial search engine and website featuring newspapers,
advertisements, and other related services in direct competition with those
offered under Complainant’s mark. The
Panel finds this to be neither a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Golden Bear Int’l, Inc. v.
Kangdeock-ho, FA 190644 (Nat. Arb. Forum
Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to
Complainant’s mark to divert Internet users to websites unrelated to
Complainant's business does not represent a bona fide offering of goods or
services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii).”); see also TM
Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002)
(finding that the respondent’s diversionary use of the complainant’s marks to
send Internet users to a website which displayed a series of links, some of
which linked to the complainant’s competitors, was not a bona fide
offering of goods or services).
Furthermore, Complainant contends that Respondent offered to
sell Complainant the <springfieldnewsandsun.com> domain name for
$1500 USD. The Panel finds that Respondent’s
willingness to part with its <springfieldnewsandsun.com> domain
name is additional evidence of Respondent’s lack of rights and legitimate
interests under Policy ¶ 4(a)(ii). See Am.
Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s
lack of rights and legitimate interests in the domain name is further evidenced
by Respondent’s attempt to sell its domain name registration to Complainant,
the rightful holder of the RED CROSS mark.”); see also Mothers Against Drunk
Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003)
(holding that under the circumstances, the respondent’s apparent willingness to
dispose of its rights in the disputed domain name suggested that it
lacked rights or legitimate interests in the domain name).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent, in response to Complainant’s cease-and-desist
letter, demanded $1500 to transfer the <springfieldnewsandsun.com>
domain name or threatened to transfer the disputed domain name to a registrar
in
The <springfieldnewsandsun.com> domain name
resolves to a website featuring links to third-parties and advertisements that
are in direct competition with Complainant’s business and the services and
products offered under Complainant’s mark.
The Panel finds this disruption to Complainant’s business to be further evidence
of Respondent’s bad faith registration and use pursuant to Policy ¶
4(b)(iii). See Travant
Solutions, Inc. v. Cole, FA 203177 (Nat.
Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in
bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of
a competitor of Complainant . . .”); see also Disney Enters., Inc. v. Noel,
FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name
confusingly similar to Complainant's mark to divert Internet users to a
competitor's website. It is a reasonable inference that Respondent's purpose of
registration and use was to either disrupt or create confusion for
Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and]
(iv).”).
Further, Respondent is presumed to be commercially
benefiting from the advertisements, commercial search engine, and various
third-party links by each Internet user who clicks on one of these items,
through the use of “click-through” fees.
The Panel finds this attempt to commercially benefit from the confusing
similarity of the disputed domain name to be additional evidence of Respondent’s
bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent
is using the domain name at issue in direct competition with Complainant, and
giving the impression of being affiliated with or sponsored by Complainant,
this circumstance qualifies as bad faith registration and use of the domain
name pursuant to Policy ¶ 4(b)(iv).”); see
also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat.
Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the misleading
domain name by receiving ‘click-through-fees.’”).
The Panel concludes that Complainant has satisfied 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 <springfieldnewsandsun.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: December 3, 2007
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