Associated Newspapers Limited v. Durk Dugan
Claim Number: FA0908001280027
Complainant is Associated Newspapers Limited (“Complainant”), represented by Adam
Taylor, of Adlex Solicitors,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <associatednews.info>, registered with GoDaddy.com 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.
Linda M. Byrne as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 18, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 19, 2009.
On August 18, 2009, GoDaddy.com Inc. confirmed by e-mail to the National Arbitration Forum that the <associatednews.info> domain name is registered with GoDaddy.com Inc. and that the Respondent is the current registrant of the name. GoDaddy.com Inc. has verified that Respondent is bound by the GoDaddy.com 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 August 21, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 10, 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on September 9, 2009.
The National Arbitration Forum received Complainant’s Additional Submission on September 14, 2009 and determined that it was timely and complete pursuant to the National Arbitration Forum’s Supplemental Rule 7. The National Arbitration Forum received Respondent’s Additional Submission on September 19, 2009, and determined that it was timely and complete pursuant to the National Arbitration Forum’s Supplemental Rule 7.
On September 15, 2009, , pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Linda M. Byrne as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that Respondent’s domain name <associatednews.info > is confusingly similar to its trademark ASSOCIATED NEWSPAPERS; that Respondent does not have any rights or legitimate interests with respect to the domain name; and that the domain name was registered and used by Respondent in bad faith.
Respondent asserts that its <associatednews.info> domain name is not confusingly similar to the term “Associated Newspaper,” because the words “news” and “newspaper” are common words having different meanings. Respondent alleges that his legitimate interest in the domain name stems from the fact that <associatednews.info> is a “support site” for Respondent’s other site: <associatednews.us>.
Respondent states that his domain name is not aimed at attracting or diverting Complainant’s business because the domain name’s site requires registration and is “accessible to valid media personnel.” Respondent asserts that “the two generic words ‘Associated’ and ‘News’ obviously have to do with what we do as a business…”
C. Additional Submissions
Complainant’s Additional Submission states that Respondent’s bad faith is exemplified by (1) his false and/or incomplete contact information, i.e., a Post Office address, rather than a physical location, a cell phone number associated with an individual other than Respondent, and the signature on the Response by “Durk Duggan,” rather than the registrant’s name, “Durk Dugan;” and (2) Respondent’s failure to respond to Complainant’s correspondence and telephone messages; and (3) Respondent’s ownership of an obvious bad faith registration: <u-tube.us>. Complainant states that it is “inconceivable that the Respondent was unaware of the Complainant, which is internationally well-known as one of the major worldwide players in media and publishing.
Respondent’s Additional Submission states that Complainant has not proven bad faith, noting Complainant’s admission that Respondent is not a competing publisher. With respect to Respondent’s contact information, Respondent states that it is “common business practice…for businesses to use different spellings of their name for pronunciation purposes, career purposes, image, etc.,… and [m]any writers, actors, musicians even use totally fictional names called ‘pen names’ for the same reasons…”
Complainant owns a
On October 26, 2008, Respondent registered the domain names <associatednews.info> and <associatednews.us>. (The latter domain name is not the subject of this proceeding). The <associatednews.info> site has the legend, “Copyright © 2008 AssociatedNews. Info. All rights reserved.”
site contains this message to “Media Clients”: “Our articles and associated
pictures are copyright free to you because they are client sponsored. If you use any of our articles you may not
make any material changes, you must include our attribution (AssociatedNews,
AN) and you must not edit out client information provided in the articles. (Name, websites, 800*, stock symbol, etc.)”. The <associatednews.us> site states,
“We can distribute your Feature Article, your Story Pitch, or a link to your
Media Page to the following sources” which is followed by a list of information
sources, including 43,000
On November 20, 2008, Complainant’s counsel sent a letter to Respondent, noting Complainant’s trademark registrations for ASSOCIATED NEWSPAPERS, and stating that Respondent’s <associatednews.us> site offers publishing services, advertising services, news services, public relations services and commissioned writing services.” The letter alleges that Respondent’s use of the term ASSOCIATED NEWS “is a clear infringement of [Complainant’s] registered trade marks referred to above since the services you offer are identical to the services for which the marks are registered and ASSOCIATED NEWS is confusingly similar to ASSOCIATED NEWSPAPERS.”
A follow-up cease and desist letter, requesting transfer of the <associatednews.info> and <associatednews.us> domain names, was sent to Respondent by Complainant’s counsel, and delivery of this letter was confirmed on February 18, 2009. In addition, Complainant contacted Respondent by telephone to attempt to resolve this matter amicably with the possible payment of a “modest sum.” Respondent did not reply to any of Complainant’s correspondence or telephone messages.
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.
This Panel concludes that Complainant
has established sufficient rights in the ASSOCIATED NEWSPAPERS mark for the
purpose of Policy ¶ 4(a)(i). It is not necessary for Complainant to own a
trademark registration in the country in which Respondent resides. See Renaissance Hotel
Holdings, Inc. v. Renaissance
This Panel concludes that the <associatednews.info> domain name contains the distinctive portion of Complainant’s ASSOCIATED NEWSPAPERS mark with the only alterations being the abbreviation of the word “newspapers” to “news,” and the affixation of the top-level domain “.info.” This Panel believes that the <associatednews.info> domain name is confusingly similar to Complainant’s ASSOCIATED NEWSPAPERS mark under Policy ¶ 4(a)(i). See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (“Notwithstanding the analysis by Respondent, ‘modprops’ is a contraction or shorthand for ‘Modern Props.’ ‘Mod’ connotes [sic] ‘modern’ regardless of any other dictionary meanings, so the names are substantially similar in meaning.”); 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”); see also Microsoft Corp. v. Zournas, FA 1093928 (Nat. Arb. Forum Dec. 10, 2007) (“the Panel finds that Respondent’s <windows.info> domain name is identical to Complainant’s WINDOWS mark as the addition of a gTLD is a necessary addition in the creation of any domain name and therefore an indistinguishing characteristic under Policy ¶ 4(a)(i).“).
Respondent alleges that it is using the <associatednews.info> domain name in connection with a bona fide offering of services pursuant to Policy ¶ 4(c)(i). Respondent’s <associatednews.info> domain name resolves to a website that offers free news articles, columns, and story ideas for use by print, television, and radio media outlets.
This Panel concludes that a determination on this issue is not necessary in view of the Panel’s holding on the issue of bad faith, i.e., that Complainant has not satisfied Policy ¶ 4(a)(iii). The Panel therefore declines to analyze the “Rights or Legitimate Interests” element of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Complainant argues that Respondent’s bad faith is exemplified by (1) his false and/or incomplete contact information, i.e., a post office address rather than a physical location, a cell phone number associated with an individual who was not “Durk Dugan,” and the signature by “Durk Duggan” on the Response, rather than the registrant’s name, “Durk Dugan;” (2) Respondent’s failure to respond to Complainant’s correspondence and telephone messages; and (3) Respondent’s ownership of the domain name <u-tube.us>.
This Panel reaches no finding with respect to the latter argument because <u-tube.us> is not the subject of this proceeding, and this issue is beyond the scope of this decision. With respect to Complainant’s other arguments, this Panel is not convinced that these circumstances rise to the level of bad faith described in Policy ¶ 4(a)(iii). The Respondent’s contact information includes an active post office box and an active telephone number answered by someone who evidently had some connection with Respondent. Complainant has not proven that “Durk Dugan” is the name of a non-existent organization, or someone who owns a large inventory of infringing domain names.
While use of a false registrant name can certainly be an indication of bad faith, this Panel concludes that Complainant has not proven that “Durk Duggan / Dugan” is a false name that establishes Respondent’s bad faith. Cf. Home Dir., Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith); see also Video Direct Distribs. Inc. v. Video Direct, Inc., FA 94724 (Nat. Arb. Forum June 5, 2000) (finding that the respondent acted in bad faith by providing incorrect information to the registrar regarding the owner of the registered name).
This Panel concludes that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). It appears that Respondent is not a competitor of Complainant, and Complainant has not established that the <associatednews.info> site is diverting traffic from Complainant. This case is analogous to Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001), in which the respondent had not attempted to sell the domain name for profit, had not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, was not a competitor of the complainant seeking to disrupt the complainant's business, and was not using the domain name to divert Internet users for commercial gain. Consistent with this decision, this Panel concludes that there is insufficient evidence of bad faith. See also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Respondent contends that the <associatednews.info> domain name is comprised entirely of common terms that have many meanings apart from use in Complainant’s ASSOCIATED NEWSPAPERS mark. This Panel agrees that the words “associated” and “news” are common terms, and that their combination in a domain name does not necessarily constitute bad faith under Policy ¶ 4(a)(iii). See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
In view of the Panel’s determination that all three elements required under the ICANN Policy have not been established, the Panel concludes that relief shall be DENIED.
Linda M. Byrne, Panelist
Dated: September 29, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum