Times Publishing Company, Inc. v. Russell
Lloyd
Claim Number: FA0207000117012
PARTIES
Complainant
is Times Publishing Company, Inc.,
St. Petersburg, FL (“Complainant”) represented by Bradley Bole, of Rahdert,
Steele, Bryan & Bole, P.A..
Respondent is Russell Lloyd,
St. Petersburg, FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <stpetetimes.com>,
registered with Dotster, 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 July 19, 2002; the Forum received a hard copy of the
Complaint on July 18, 2002.
On
July 24, 2002, Dotster, Inc. confirmed by e-mail to the Forum that the domain
name <stpetetimes.com> is
registered with Dotster, Inc. and that the Respondent is the current registrant
of the name. Dotster, Inc. has verified
that Respondent is bound by the Dotster, 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 25, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 14,
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@stpetetimes.com by e-mail.
A
timely Response was received and determined to be complete on August 13, 2002.
On September 5, 2002, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Sandra Franklin as
Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
contends that it is the owner of registered trademarks for St. Petersburg
Times, a well-known and long-established newspaper. The domain name in dispute is <stpetetimes.com>, and St. Pete Times is a common
abbreviation for the St. Petersburg Times newspaper, as evidenced by
Complainant’s exhibits. Respondent is
aware of the commonly used abbreviation for the newspaper, as the newspaper is
referred to on the Respondent’s website.
Complainant goes on to show that Respondent’s contact information and
website are confusing, referencing a dog rather than a person. Complainant further contends that
Respondent is trading off the goodwill built up by Complainant in St. Pete
Times by diverting people to his site.
B.
Respondent
Respondent
contends that Complainant’s failure to register the domain name <stpetetimes.com> is tantamount
to loss of trademark rights. Respondent
does not believe that Complainant has alleged that the domain name is confusing
similar to its trademark. The
Respondent admits to not conducting any commercial activity under the domain
name, and instead claims to be making fair use of the domain name by providing
news, such as the statement “Russell bought a mangrove swamp”.
FINDINGS
The Panel finds that the Complainant has
established the three elements required to transfer a domain name.
DISCUSSION
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
The Panel finds that the domain name <stpetetimes.com> is confusingly
similar to both the registered mark St. Petersburg Times and the commercially
used abbreviation St. Pete Times, clearly referring to a well-known
newspaper. Respondent’s argument that
Complainant has lost trademark rights by failing to register <stpetetimes.com> with Dotster is
rejected, as trademark rights are established through commercial use,
independent of domain name registration.
Rights or Legitimate Interests
The Panel finds that Respondent has not
demonstrated any rights or legitimate interests in the domain name, as he is
not making a bona fide offering of any goods or services under <stpetetimes.com>, and has no
intention of doing so. The Panel has
determined that the Respondent is not using the domain name for legitimate news
purposes or any other fair use.
Registration and Use in Bad Faith
The Panel finds that Respondent
registered and is using the domain name in bad faith, purposely diverting
readers intending to visit the newspaper website to his website, a site which
would otherwise attract few visitors.
DECISION
The request that the domain name <stpetetimes.com> be transferred
from Respondent to Complainant is hereby GRANTED.
Sandra Franklin, Panelist
Dated: September 18, 2002
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