Associated Newspapers
Limited v. Durk Dugan
Claim Number: FA0908001280027
PARTIES
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.
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.
Linda M. Byrne as Panelist.
PROCEDURAL HISTORY
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
postmaster@associatednews.info 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
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…”
FINDINGS
Complainant owns a
<associatednewspapers.com>.
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.”
The <associatednews.info>
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.
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.
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).
DECISION
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
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