Onion Inc. v. Todd Rutt
Claim Number: FA0802001142378
Complainant is Onion Inc. (“Complainant”), represented by Jennifer
R. Racine, of Godfrey & Kahn S.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <onionnewsnetwork.com>, registered with Godaddy.com, Inc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On February 8, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 28, 2008 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@onionnewsnetwork.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <onionnewsnetwork.com> domain name is confusingly similar to Complainant’s THE ONION mark.
2. Respondent does not have any rights or legitimate interests in the <onionnewsnetwork.com> domain name.
3. Respondent registered and used the <onionnewsnetwork.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Onion Inc., is the publisher of satirical and
entertainment newspapers in both print and online forms. Complainant has recently expanded its products
and services to include a radio news program, web video products, and numerous
books and calendars. In 2006, Complainant
began working on the Onion News Network, a daily web video broadcast. Complainant owns several trademarks
registered with the United States Patent and Trademark Office (“USPTO”),
including THE ONION mark (Reg. No. 2,450,949 issued
Respondent registered the <onionnewsnetwork.com>
domain name on
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 asserts rights in THE ONION mark through
registration of the mark with the USPTO.
The Panel finds that Complainant’s registration is sufficient for
purposes of Policy ¶ 4(a)(i). See Automotive Racing Products, Inc. v. Linecom,
FA 836787 (Nat. Arb. Forum
Respondent’s <onionnewsnetwork.com>
domain name is confusingly similar to Complainant’s THE ONION mark. Respondent’s disputed domain name features
the dominant portion of Complainant’s mark and adds the generic terms “news”
and “network” along with generic top-level domain (“gTLD”). The Panel finds that neither the addition of
terms with a direct relation to Complainant’s business nor the addition of the
gTLD “.com” distinguishes Respondent’s domain name from Complainant’s THE ONION
mark for purposes of Policy ¶ 4(a)(i). See Parfums Christian Dior v. 1 Netpower, Inc.,
D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the
descriptive words "fashion" or "cosmetics" after the
trademark were confusingly similar to the trademark); see also Brown & Bigelow,
Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding
that the <hoylecasino.net> domain name is confusingly similar to the
complainant’s HOYLE mark, and that the addition of “casino,” a generic word
describing the type of business in which the complainant is engaged, does not
take the disputed domain name out of the realm of confusing similarity); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat.
Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <onionnewsnetwork.com> domain name. In instances where Complainant has made a prima facie case under Policy ¶ 4(a)(ii), the burden shifts to Respondent to set forth concrete evidence that it does possess rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has satisfied its burden. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that Respondent is using the <onionnewsnetwork.com> domain name to operate a website that contains various links to commercial websites. The Panel infers from Respondent’s use that it is likely collecting click-through fees for each redirected Internet user passed through to another website. The Panel finds that Respondent’s operation of a website at the disputed domain name for the purpose of collecting click-through fees for each misdirected Internet user is 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
Moreover, Respondent has submitted no evidence that it is
either commonly known by the <onionnewsnetwork.com>
domain name or authorized to register domain names featuring Complainant’s THE
ONION mark. In the absence of such
evidence, the Panel finds that Respondent has not established rights or
legitimate interests pursuant to Policy ¶ 4(c)(ii). See
also Ian Schrager Hotels,
L.L.C. v. Taylor, FA 173369 (Nat. Arb.
Forum
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Complainant contends that Respondent is using the <onionnewsnetwork.com> domain name to
operate a website that contains links to various commercial websites. The Panel infers from Respondent’s use that
it is collecting click-through fees for each misdirected Internet user. Moreover, Internet users will likely be
confused as to Complainant’s sponsorship of or affiliation with the <onionnewsnetwork.com> domain name
and its contents. The Panel finds that
using a domain name that is likely to confuse Internet users so that Respondent
can gain financially based on that confusion, is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v.
Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that the respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly
similar domain name to attract Internet users to its commercial website); see also Am. Online, Inc. v. Tencent
Commc’ns Corp., FA 93668 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <onionnewsnetwork.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: March 14, 2008
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