Pathlink Technology Corporation v. NewsGuys
Claim Number: FA0206000114651
Complainant is Pathlink Technology Corporation, Sunnyvale, CA (“Complainant”) represented by Gary R. Gleason, of Farbstein & Blackman. Respondent is NewsGuys, Malibu, CA (“Respondent”) represented by Mark A. Raimondo, Esq.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newsguys.com>, registered with Dotster.
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.
Jeffrey M. Samuels, Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 20, 2002; the Forum received a hard copy of the Complaint on June 19, 2002.
On June 26, 2002, Dotster confirmed by e-mail to the Forum that the domain name <newsguys.com> is registered with Dotster and that the Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 July 2, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 22, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on July 20, 2002.
On July 29, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey M. Samuels as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that it owns the rights to the trademark and service mark NEWSGUY, as well as to the domain name <newsguy.com>. It maintains that the disputed domain name is confusingly similar to Complainant's mark "because it is identical except that the disputed domain name is the plural version of the Complainant's [mark]."
Complainant further argues that Respondent has no rights or legitimate interests to the disputed domain name. In support of such assertion, Complainant contends that: (1) it is the rightful owner of U.S. trademark and service mark registrations for NEWSGUY and has never transferred, licensed or assigned any rights or interests in the mark to anybody; (2) Respondent has no affiliation or connection with Complainant and Complainant has not consented to Respondent's use of the disputed domain name; and (3) Respondent has never used the domain name in connection with the bona fide offering of goods or services.
According to Complainant, Respondent also has clearly registered and is using the disputed domain name in bad faith. Complainant argues that Respondent registered the domain name strictly for the purpose of selling the name. Complainant maintains that someone logging on to the disputed domain name will be diverted to a site set up for the purpose of selling domain names. Further, Complainant notes, Registrant used to be listed in the WHOIS directory as "[This Domain Name is For Sale]" while the Administrative Contacts were listed as "Is For Sale, This Domain MalibuTV@aol.com."
Complainant further alleges, in support of its "bad faith" argument, that Respondent registered the domain name in violation of applicable trademark laws and that Respondent "flatly" refused Complainant's request to "cease and desist" from further use of the disputed domain name.
In his "Response," Respondent Saeid Yomtobian, d/b/a/ newsguys.com, notes that he has owned the domain name <newsguys.com> since he purchased it in March 1999. According to Respondent, for the first nine months following purchase of the domain name, he created and operated in good faith a legitimate news information web site at <newsguys.com>. Clientele at <newsguys.com> were able to access current events, newsworthy information and stock quotes.
In December 1999, Respondent was contacted by Network Solutions, Inc. (NSI) and directed to transfer the domain name to NSI. At some point during the process of the transfer, Respondent maintains, NSI negligently lost, misplaced or deleted Respondent's web site. The web site remained "lost" with NSI for fifteen (15) months and, as a result, according to Respondent, he has sustained substantial financial injury. The Response states: "Because of Network Solutions negligence, Respondent's business of a news information website was in effect put out of business. Respondent is currently financially unable to reestablish his intended purpose for <newsguys.com>. Respondent has the website on hold pending the resolution of his negligence complaint against Network Solutions." (Respondent, apparently, has brought suit against NSI in the Circuit Court of Fairfax County, Virginia, Case No. 203749.)
Respondent further maintains that the connection between the disputed domain name and Complainant's marks are a "mere coincidence" and that Complainant does not own the mark NEWSGUYS or NEWSGUYS.COM. He also urges that he possesses a legitimate interest in the disputed domain name in that he intends to set up a web site similar to the one he established the first nine months he owned <newsguys.com> and that he has never attempted to use or otherwise attempt to confuse the users of his current web site into thinking they are actually one of the marks of Complainant. The title page of the current web site, Respondent notes, clearly states "Los Angeles News Company."
Finally, Respondent argues that Complainant has not offered any evidence to substantiate its argument of "bad faith" registration and use. According to Respondent, he has not intentionally attempted to attract, for commercial gain, internet users to his web site by creating a likelihood of confusion with Complainant's mark and has not registered the name in order to prevent Complainant from reflecting its mark in a corresponding domain name. Complainant, Respondent maintains, is not the owner of the mark NEWSGUYS and was not issued a registration for the mark NEWSGUY until over two years after Respondent first owned and used the <newsguys.com> domain name.
Respondent also argues that it has never attempted to offer the domain name for sale above his actual costs.
The evidence establishes, and the Panel finds, that Complainant is the owner of two U.S.
trademark registrations (Nos. 2,225,792 and 2,499,279) for the mark NEWSGUY, as used on or in connection with internet-related services and clothing. The '792 registration issued on February 23, 1999, based on a date of first use in commerce of December 11, 1997, and the '279 registration issued on October 23, 2001, based on a date of first use in commerce of December 11, 1997.
The Panel further finds that Respondent, for a period of nine months following his purchase of the disputed domain name, used the name in connection with a web site featuring news and related information. The web site is no longer operational, although, apparently, it is Respondent's intent to resume use of the domain name in connection with a news-related site at some point in the future. The domain name <newsguys.com>
currently leads the user to a site called "LosAngelesNews.com" which contains information regarding Respondent's interactions with NSI.
Contrary to Complainant's assertions, there is nothing in the record to support a finding that Respondent registered the disputed domain name for purposes of sale to Complainant or to a third party. While the Amended Complaint refers to Exhibit D in support of the allegation that, prior to May 23, 2002, the registrant for the domain name was listed as "(This Domain is For Sale)," the referred to exhibit does not contain such information. The Exhibit D attached to the original complaint does not support Complainant's assertion either. There is also no evidence in the record that one who logs on to the disputed domain name will be diverted to a site set up strictly for the purpose of selling domain names.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Identical and/or Confusingly Similar
There is no question that Complainant has satisfied this element of the Policy. The disputed domain name <newsguys.com> clearly is confusingly similar to Complainant's NEWSGUY mark. The addition of the letter "s" in the domain name does not sufficiently distinguish the name from Complainant's mark. See National Geographic Soc. v. Stoneybrook Inv. FA96263 (Nat. Arb. Forum January 11, 2001) (finding that domain name <nationalgeographics.com> was confusingly similar to "National Geographic" mark). It also is clear that Complainant has rights in the mark NEWSGUY. As noted above, Complainant owns two U.S. registrations for the mark and has used the mark since December 1997.
The fact that Complainant does not own rights in the mark NEWSGUYS is irrelevant under the Policy, given that Complainant's mark NEWSGUY is confusingly similar to the domain name <newsguys.com>. It also is irrelevant under this element of the Policy that such similarity may be a "mere coincidence" or that Complainant's trademark registrations may have been issued after registration of the disputed domain name.
Rights or Legitimate Interests
The evidence supports a determination that Respondent's initial use of the domain name <newsguys.com> in connection with a news and information web site constituted a "fair use" of the name, within the meaning of paragraph 4(c)(iii) of the Policy. Based on the "Response," it appears that Respondent is no longer able to use the domain name in connection with such site as a result of certain actions taken or not taken by NSI. While the record is not entirely clear as to whether Respondent will ever be able to resume use of the name in connection with a news and information web site, on balance, the Panel reads the record to support a determination that, upon resolution of its pending lawsuit against NSI, Respondent will attempt to resurrect the site under the disputed domain name. Under the particular facts of this case, the Panel concludes that while none of the circumstances set forth in paragraph 4(c) of the Policy has been literally met, Respondent has rights to and legitimate interests in the domain name.
Registration and Use in Bad Faith
While the Panel's finding that Respondent has rights and legitimate interests in the domain name is dispositive of the dispute, for the sake of completeness, the Panel addresses the issue of whether the domain name was registered and is being used in bad faith. The Panel concludes that the requisite "bad faith" has not been established.
As noted above, despite Complainant's arguments to the contrary, there is no evidence that Respondent registered the domain name primarily for the purpose of selling it back to Complainant or to a third party for consideration in excess of Respondent's out-of-pocket expenses. None of the other circumstances spelled out in paragraph 4(b) of the Policy appears applicable either. Respondent's current web site clearly indicates the source as being "LosAngelesNews.com" and such site clearly is solely informational in content. Further, under the particular facts of this case, Respondent refusal to "cease and desist" does not, by itself, demonstrate "bad faith."
Based on the above, the Panel DENIES Complainant's request for transfer to it of the domain name <newsguys.com>.
Jeffrey M. Samuels, Panelist
Dated: August 12, 2002
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 Complainant did not attach a copy of the material contained on Respondent's current site, which it easily could have done, and the Panel's independent review of the site fails to indicate that such site was set up strictly for the purpose of selling domain names.
 In any case, the record indicates that the disputed domain name was registered after Complainant's alleged date of first use of its mark in commerce. It is axiomatic that trademark rights in the U.S. are based on priority of use.
 For example, the Response indicates both that "Respondent is currently financially unable to reestablish his intended purpose for newsguys.com" (see p. 4) and that "…Respondent will again set up a website similar to the one he had established the first nine months he owned newsguys.com" (see p. 5).
 The Policy indicates that the specific circumstances set forth in paragraph 4(c) are not exclusive.