Austin Chronicle Corporation v. Ciodo c/o Fabian Ciodo
Claim Number: FA0906001270460
Complainant is Austin
Chronicle Corporation (“Complainant”), represented by Peter D. Kennedy, of Graves, Dougherty, Hearon & Moody, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <theaustinchronicle.com>, registered with Lead Networks Domains Pvt. Ltd.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 25, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 26, 2009.
On June 26, 2009, Lead Networks Domains Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <theaustinchronicle.com> domain name is registered with Lead Networks Domains Pvt. Ltd. and that Respondent is the current registrant of the name. Lead Networks Domains Pvt. Ltd. has verified that Respondent is bound by the Lead Networks Domains Pvt. Ltd. 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 30, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 20, 2009 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@theaustinchronicle.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 23, 2009, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <theaustinchronicle.com> domain name is identical to Complainant’s THE AUSTIN CHRONICLE mark.
2. Respondent does not have any rights or legitimate interests in the <theaustinchronicle.com> domain name.
3. Respondent registered and used the <theaustinchronicle.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Austin Chronicle Corporation, operates an alternative weekly newspaper. Complainant has operated this newspaper since September 4, 1981. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its THE AUSTIN CHRONICLE mark (i.e., Reg. No. 3,241,121 issued May 15, 2007).
Respondent registered the <theaustinchronicle.com> domain name on October 6, 2007. The disputed domain name resolves to a website featuring advertisements and links to websites that are unrelated to Complainant.
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.
Previous panels have held that trademark registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). Complainant has registered its THE AUSTIN CHRONICLE mark with the USPTO. Previous panels have also found that the Policy does not require that the mark be registered in the country in which the respondent operates. Therefore, the Panel finds Complainant has established rights in its THE AUSTIN CHRONICLE mark through its trademark registration with the USPTO under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Respondent’s <theaustinchronicle.com> domain name is identical to Complainant’s THE AUSTIN CHRONICLE mark because Respondent simply removes the spaces between the words and adds the generic top-level domain “.com.” The Panel finds the removal of spaces and the addition of the gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. Therefore, the Panel finds Respondent’s disputed domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <theaustinchronicle.com> domain name. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <theaustinchronicle.com> domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Respondent’s <theaustinchronicle.com> domain name resolves to a website featuring advertisements and links to websites that are unrelated to Complainant. The Panel presumes Respondent receives click-through fees from the advertisements and links. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(iii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
Complainant asserts that it has never authorized Respondent to use the THE AUSTIN CHRONICLE mark. The WHOIS information identifies Respondent as “Fabian Ciodo.” The Panel finds no evidence in the record, and no evidence submitted by Respondent, demonstrating that Respondent is commonly known by <theaustinchronicle.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the <theaustinchronicle.com> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
The Panel presumes Respondent receives click-through fees
from the advertisements. Respondent is
using the identical disputed domain name to profit from Internet users’
confusion as to Complainant’s affiliation with the resolving website. Therefore, the Panel finds Respondent’s use
of the disputed domain name constitutes bad faith registration and use under
Policy ¶ 4(b)(iv).
See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June
11, 2006) (holding that the respondent’s previous use of the
<bankofamericanfork.com> domain name to maintain a web directory was
evidence of bad faith because the respondent presumably commercially benefited
by receiving click-through fees for diverting Internet users to unrelated
third-party websites); see also The Ass’n of Junior Leagues Int’l Inc. v.
This Domain Name My Be For
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <theaustinchronicle.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 5, 2009
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