Pulitzer, Inc. and St. Louis Post-Dispatch, LLC v. John Barry a/k/a Buy This Domain
Claim Number: FA0206000114673
Complainants are Pulitzer, Inc. and St. Louis Post-Dispatch, LLC, St. Louis, MO (hereinafter collectively, “Complainant”). Respondent is John Barry a/k/a Buy This Domain, Bronx, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stlouispostdispatch.com>, registered with eNom, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 24, 2002; the Forum received a hard copy of the Complaint on July 1, 2002.
On June 24, 2002, eNom, Inc. confirmed by e-mail to the Forum that the domain name <stlouispostdispatch.com> is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 3, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 23, 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.
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 August 2, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Respondent’s <stlouispostdispatch.com> domain name is confusingly similar to Complainant’s registered SAINT LOUIS POST DISPATCH mark.
2. Respondent is tarnishing Complainant’s established trademark by linking the domain name to a website containing controversial images. Respondent’s willingness to sell the domain name evidences its lack of rights and legitimate interests in the <stlouispostdispatch.com> domain name.
3. Respondent is engaged in the habitual registration of famous trademarks with the intent to persuade the trademark holder into purchasing the domain name. Respondent accomplishes this by creating the false perception that the trademark holder’s mark is affiliated with Respondent’s controversial website; thus, Respondent registered and used the <stlouispostdispatch.com> domain name in bad faith.
B. Respondent did not submit a Response in this proceeding.
Complainant holds U.S. Patent and Trademark Office (“USPTO”) Reg. No. 1,657,386 for the SAINT LOUIS POST DISPATCH mark. Complainant’s mark was registered on September 17, 1991 and the USPTO lists Complainant’s first use of the mark as March 10, 1879. Complainant operates as a daily newspaper published in St. Louis, Missouri. Complainant operates and provides news related services from the <stltoday.com> domain name.
The SAINT LOUIS POST DISPATCH mark has represented Complainant’s trade name since the 19th century. Complainant’s newspaper, along with the collective Pulitzer newspaper enterprise, has acquired a large amount of goodwill and distinctiveness due to the longstanding services provided under the St. Louis Post-Dispatch moniker.
Respondent registered the <stlouispostdispatch.com> domain name on May 10, 2002. Respondent is a notorious trademark infringer that has habitually registered famous trademarks and linked them to the same <abortionismurder.org> domain name and corresponding website, which includes graphic images. Complainant’s investigation revealed that the subject domain name resolves to the <abortionismurder.org> website that has become associated with Respondent as its signature infringement. Respondent’s WHOIS contact information for Organization Name is entered as “Buy This Domain” and the Email Address is recorded as “email@example.com.”
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 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; and
(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.
Complainant has established rights in the <stlouispostdispatch.com> domain name through registration of its mark with the USPTO and continuous use of the mark in dispensing news related services since 1879.
Respondent’s <stlouispostdispatch.com> domain name is confusingly similar to Complainant’s registered SAINT LOUIS POST DISPATCH mark. Respondent’s disputed domain name deviates from Complainant’s mark only by the abbreviation of the city “Saint Louis.” Common geographical abbreviations fail to create a distinct and separate mark and do not detract from the overall impression of the dominant part of the domain name, namely, Complainant’s mark. See Coca-Cola Co. v. Busch, 44 F.Supp. 405, 410 (E.D.Pa. 1942) (“the abbreviation of the trade-mark which the public has used and adopted as designating the product of the [trademark owner] is equally as much to be protected as the trademark itself”); see also Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name is confusingly similar to Complainant’s MINNESOTA STATE LOTTERY registered mark).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to submit a Response in this proceeding, and Complainant’s submissions have gone unopposed. Therefore, the Panel is permitted to make all reasonable inferences in favor of Complainant. See 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”); see also Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
Additionally, when Respondent fails to submit a Response, and its rights and interests are not apparent to the Panel, it is presumed that Respondent lacks rights and legitimate interests in the <stlouispostdispatch.com> domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint); see also Strum v. Nordic Net Exchange AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (finding that in accordance with Paragraph 14(b) of the Policy, the Panel may draw such inferences as it considers appropriate, if Respondent fails to comply with the Panel's requests for information).
While the burden of proof is on the Complainant, Paragraph 4(c) of the Policy advises a Respondent how to demonstrate its rights to and legitimate interests in the Domain Name. Because Complainant asserts that Respondent has no rights or legitimate interests, the burden falls upon Respondent to demonstrate such rights and legitimate interests. Respondent has not responded to Complainant’s allegations; thus, Respondent has not demonstrated rights or legitimate interests in the domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).
As stated, Respondent is a habitual trademark infringer that attempts to harass trademark holders into purchasing infringing domain names by connecting the domain names to unrelated websites thereby tarnishing the goodwill associated with the mark. Unrefuted evidence suggests Respondent’s primary motivation in registering <stlouispostdispatch.com> was to profit from the sale of the domain name. Respondent’s attempt to extract pecuniary gain from a recently acquired domain name demonstrates a lack of any legitimate business purpose under Policy ¶¶ 4(c)(i) and (iii). See Rittenhouse Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8, 2002) (finding that, by linking the confusingly similar domain name to an “Abortion is Murder” website and subsequently asking for compensation beyond out-of-pocket costs to transfer the domain name, Respondent has not demonstrated a right or legitimate interest in the disputed domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Hewlett-Packard Co. v. High Perf. Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling it).
Respondent’s infringing domain name resolves to a website endorsing a particular social agenda. However, Respondent’s social views have no logical connections that warrant the use of the <stlouispostdispatch.com> domain name. Respondent is known as John Barry a/k/a Buy This Domain, and has established a reputation as such. Because of Complainant’s longstanding use of its SAINT LOUIS POST DISPATCH mark and the circumstances surrounding the registration of the domain name, it is presumed that Respondent does not have any rights or legitimate interests in the domain name under 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 a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).
The Panel finds that Respondent does not have any rights or legitimate interests in the domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.
Uncontested circumstances indicate that Respondent acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration; thus, Respondent’s behavior evidences bad faith registration and use under Policy ¶ 4(b)(i). Respondent’s WHOIS contact information reflects Respondent’s obvious intentions to sell the domain name as Respondent’s data is recorded as “Buy This Domain” and “firstname.lastname@example.org.” See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).
Additionally, Respondent has engaged in a pattern of infringing behavior that typically imitates typosquatting activity. However, in the present situation, Respondent registered a domain name that reflects Complainant’s actual mark, absent any typographical errors. It is conceivable that Complainant may eventually desire to register its SAINT LOUIS POST DISPATCH mark in a corresponding domain name reflecting the geographical abbreviation of “Saint Louis.” Respondent’s registration and use of the infringing domain name is bad faith pursuant to Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks); see also Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct); see also Toyota Jidosha Kabushiki Kaisha v. S&S Enter. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (finding that “Registration of a domain name goes further than merely correctly using in an advertisement the trademark of another in connection with that other’s goods or services: it prevents the trademark owner from reflecting that mark in a corresponding domain name”).
The criteria specified in Policy Paragraph 4(b) do not represent an exhaustive list of bad faith evidence. The Panel may take into consideration the totality of circumstances surrounding the dispute in order to determine if Respondent registered or used the <stlouispostdispatch.com> domain name in bad faith. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in [UDRP] Paragraph 4(b) are intended to be illustrative, rather than exclusive”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).
The circumstances surrounding Respondent’s registration of the subject domain name indicate that Respondent was motivated by commercial gain and the desire to deceitfully capitalize on the goodwill and success of Complainant’s mark to advance his own cause. Complainant’s mark is listed on the Principal Register of the USPTO and has maintained a significant presence in the midwestern region of the United States for over a century. Respondent incorporated Complainant’s entire mark into an infringing domain name that bears no connection to Respondent’s attached website. Because of the aforementioned circumstances, and Respondent’s infringing registration history, it is proper to infer that Respondent had knowledge of Complainant’s established mark when registering the disputed domain name. Respondent’s subsequent registration and use of the infringing domain name, despite knowledge of Complainant’s preexisting rights, represents bad faith under Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072).
The Panel determines 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 hereby GRANTED.
Accordingly, it is Ordered that the <stlouispostdispatch.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: August 13, 2002
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