national arbitration forum

 

DECISION

 

San Diego Daily Transcript v. Admin, Domain c/o San Diego Daily Transcript

Claim Number: FA0805001195346

 

PARTIES

Complainant is San Diego Daily Transcript (“Complainant”), represented by Susan Hwang, California, USA.  Respondent is Admin, Domain c/o San Diego Daily Transcript (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sandiegodailytranscript.com>, registered with Nameview, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 27, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 28, 2008.

 

On June 10, 2008, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <sandiegodailytranscript.com> domain name is registered with Nameview, Inc. and that Respondent is the current registrant of the name.  Nameview, Inc. has verified that Respondent is bound by the Nameview, 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 June 13, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 3, 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@sandiegodailytranscript.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On July 8, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <sandiegodailytranscript.com> domain name is identical to Complainant’s SAN DIEGO DAILY TRANSCRIPT mark.

 

2.      Respondent does not have any rights or legitimate interests in the <sandiegodailytranscript.com> domain name.

 

3.      Respondent registered and used the <sandiegodailytranscript.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has been providing daily weekday newspaper service since 1886.  In 1972, after the newspaper became the official newspaper of record for the city of San Diego, California, the newspaper began to operate under the SAN DIEGO DAILY TRANSCRIPT mark.  In 2003, the official name of the paper dropped the wording San Diego, and resumed official operations under the name of “Daily Transcript.”  The paper is recognized by the Associated Press under the SAN DIEGO DAILY TRANSCRIPT mark and various city and county-government officials and documents have referred to it in the like.  The paper published under the SAN DIEGO DAILY TRANSCRIPT mark provides daily news, public notices and advertisements for all sectors of the San Diego community.  The newspaper generates revenues well in excess of $5 million annually and has a circulation of around 40,000.  Complainant additionally owns and operates the <sddt.com> domain name, which is an abbreviation of the first letter of each word in the SAN DIEGO DAILY TRANSCRIPT mark.

 

The <sandiegodailytranscript.com> domain name was registered on January 26, 2005 and currently resolves to a website providing various links to sponsored third-party links.  Many of these links are to competitors who offer similar goods and services as those offered under Complainant’s mark.  Almost all of the links are directed at the San Diego, California community. 

 

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 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.

 

Identical and/or Confusingly Similar

 

Complainant need not have registered its mark with a governmental authority in order to establish rights in that mark, so long as it can establish common law rights pursuant to Policy ¶ 4(a)(i).  See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).

 

The SAN DIEGO DAILY TRANSCRIPT mark has been used daily since at least 1972 providing daily newspaper services, while Complainant has in total been in operation under the DAILY TRANSCRIPT mark in the San Diego, California area since at least 1886.  In 1972, after the newspaper became the official newspaper of record for the city of San Diego, California, the newspaper operated under the SAN DIEGO DAILY TRANSCRIPT mark.  The paper is recognized by the Associated Press under the SAN DIEGO DAILY TRANSCRIPT mark and various city and county-government official and documents have referred to it in the like.  The newspaper generates revenues well in excess of $5 million annually and has a circulation of around 40,000.  Complainant additionally owns and operates the <sddt.com> domain name, which is an abbreviation of the first letter of each word in the SAN DIEGO DAILY TRANSCRIPT mark.  The Panel finds all of this evidence to sufficiently establish exclusive and continuous use of the SAN DIEGO DAILY TRANSCRIPT mark and accordingly establishes Complainant’s common law rights in its mark pursuant to Policy ¶ 4(a)(i).  See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Enfinger Dev., Inc. v. Montgomery, FA 370918 (Nat. Arb. Forum Feb. 16, 2005) (finding that the complainant had common law rights in the McMULLEN COVE mark because the complainant provided sufficient evidence that the mark had acquired secondary meaning, including development plans, correspondence with government officials, and newspaper articles featuring the mark).

 

The <sandiegodailytranscript.com> domain name contains Complainant’s mark in its entirety, omitting the spaces between words, and including the generic top-level domain (“gTLD”) “.com.”  It is well-established that the omission of spaces and inclusion of a gTLD are irrelevant to a Policy ¶ 4(a)(i) analysis.  Consequently, the Panel finds the disputed domain name to be identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to the complainant's registered trademark GAY GAMES); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.  See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”).  The Panel finds that Complainant has established a prima facie case against Respondent and that the burden is accordingly shifted to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name.  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); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests).

 

Respondent has failed to submit a response to the Complaint.  Therefore, the Panel presumes that Respondent has no rights or legitimate interests in the <sandiegodailytranscript.com> domain name, but will nonetheless examine the record in light of the factors listed under Policy ¶ 4(c).  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”).

 

The WHOIS information for the <sandiegodailytranscript.com> domain name identifies Respondent as “SANDIEGODAILYTRANSCRIPT.COM.”  However, there is nothing else in the record that indicates or allows for a presumption that Respondent is or ever was commonly known by the disputed domain name.  Absent any additional evidence, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”); see also Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).

 

Respondent’s <sandiegodailytranscript.com> domain name is identical to Complainant’s mark and resolves to a website providing various links to sponsored third-party links.  Many of these links are to competitors who offer similar goods and services as those offered under Complainant’s mark.  Almost all of the links are directed at the San Diego, California community.  The Panel finds that this does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

The <sandiegodailytranscript.com> domain name resolves to a variety of third-party links, mostly direct at the San Diego, California community and many of which offer services in direct competition with those offered under Complainant’s SAN DIEGO DAILY TRANSCRIPT mark.  The Panel finds this disruptive use to establish that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).  See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).

 

Furthermore, the Panel presumes that Respondent is commercially benefiting from each Internet user who clicks upon one of these sponsored links.  Consequently, the Panel finds this to further establish Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv).  See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to Respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <sandiegodailytranscript.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  July 22, 2008

 

 

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