Pulitzer, Inc. and St. Louis
Post-Dispatch, LLC v. John Barry a/k/a Buy This Domain
Claim Number: FA0206000114673
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@stlouispostdispatch.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
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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
FINDINGS
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 “dom4sale@aol.com.”
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 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 “dom4sal@aol.com.” 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.
DECISION
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
Click Here to
return to the main Domain Decisions Page.
Click
Here to return to our Home Page