Denver Newspaper Agency v. MediaNews Group c/o Host Master
Claim Number: FA0911001294673
Complainant is Denver Newspaper Agency (“Complainant”), represented by Jill
J. Chalmers, of Holme Roberts and Owen LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <denverpostclassifieds.com>, registered with Nameview, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 13, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 16, 2009.
On November 26, 2009, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <denverpostclassifieds.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 December 4, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 23, 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@denverpostclassifieds.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 31, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 <denverpostclassifieds.com> domain name is confusingly similar to Complainant’s THE DENVER POST mark.
2. Respondent does not have any rights or legitimate interests in the <denverpostclassifieds.com> domain name.
3. Respondent registered and used the <denverpostclassifieds.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Denver Newspaper
Agency, is a publishing company that promotes its newspaper business
under the THE DENVER POST mark, for which Complainant has several registrations
with the United States Patent and Trademark Office (“USPTO”) on (e.g., Reg. No.
1,919,631 issued September 9, 1995).
Complainant has used the THE DENVER POST mark to promote its newspaper
since at least as early as 1901.
Complainant is one of the top 50 largest-circulation newspapers in the
Respondent, MediaNews Group c/o Host Master, registered the <denverpostclassifieds.com> domain name on November 12, 2001. The disputed domain name resolves to a website that contains advertisements and links to newspapers and other online sites that compete with 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.
The Panel finds that Complainant has
established sufficient rights in the THE DENVER POST mark through its registrations
of the mark with the USPTO (e.g.,
Reg. No. 1,919,631 issued September 9, 1995) pursuant to Policy ¶ 4(a)(i).
Complainant contends that
Respondent’s <denverpostclassifieds.com> domain name is confusingly similar to its THE
DENVER POST mark.
The <denverpostclassifieds.com> domain name differs from Complainant’s mark in three ways:
(1) the descriptive term “classifieds” has been added to the end of the mark;
(2) the article “the” has been removed from the mark; and (3) the generic
top-level domain (gTLD) “.com” has been added to the mark. The Panel finds that descriptive terms are not
sufficient to distinguish a domain name when added to a mark, and that the
removals of articles and spaces are likewise incapable of creating a sufficient
distinction. See Allianz of Am.
Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the
addition of the generic term “finance,” which described the complainant’s
financial services business, as well as a gTLD, did not sufficiently
distinguish the respondent’s disputed domain name from the complainant’s mark
under Policy ¶ 4(a)(i)); see also Buffalo
News v. Barry, FA 146919 (Nat. Arb. Forum Mar. 31, 2003) (finding the
respondent's <bufalonews.com> domain name confusingly similar to
Complainant's THE BUFFALO NEWS mark); see
also Mega Soc. v. LoSasso, FA 215404 (Nat. Arb. Forum Jan. 30, 2004)
(finding that the <megasociety.net> and <megasociety.com> domain
names were identical or confusingly similar to Complainant's THE MEGA
SOCIETY mark). The Panel also finds that the addition of the gTLD “.com” does not sufficiently
distinguish a domain name from the incorporated mark for the purposes of Policy
¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA
914943 (Nat. Arb. Forum Mar. 27,
2007) (concluding that the affixation of a gTLD to a domain name is irrelevant
to a Policy ¶ 4(a)(i) analysis). Therefore,
the Panel finds that because the changes to the THE DENVER POST mark do not
sufficiently distinguish the disputed domain name from Complainant’s mark,
Respondent’s disputed domain name is confusingly similar to Complainant’s mark
pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <denverpostclassifieds.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii), and that Respondent has failed to submit a Response. See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).
Complainant contends that Respondent is not commonly known
by the <denverpostclassifieds.com>
domain name nor has it ever been the owner or licensee of the THE DENVER POST
mark. Respondent has been identified as
“MediaNews Group c/o Host Master,” and
nothing in the WHOIS listing for the disputed domain name lists Respondent as
any variant on the THE DENVER POST mark.
Because there is no evidence that Respondent has ever been known by any
variant on the THE DENVER POST mark, the Panel therefore finds that Respondent
is not commonly known by the <denverpostclassifieds.com>
domain name pursuant to
Policy ¶ 4(c)(ii).
See IndyMac
Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum
Dec. 7, 2006) (finding that the respondent failed to establish rights and
legitimate interests in the <emitmortgage.com> domain name as the
respondent was not authorized to register domain names featuring the
complainant’s mark and failed to submit evidence of that it is commonly known
by the disputed domain name); see also Braun Corp. v. Loney,
FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was
not commonly known by the disputed domain names where the WHOIS information, as
well as all other information in the record, gave no indication that the
respondent was commonly known by the disputed domain names, and the complainant
had not authorized the respondent to register a domain name containing its
registered mark).
Complainant contends
that Respondent is using the <denverpostclassifieds.com>
domain name to operate a website
that contains links to Complainant’s competitors in the publishing business. The Panel finds that using a domain name
incorporating a mark to promote the businesses of competitors of the mark’s
owner is neither a bona fide offering
of goods or services under Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use of a
domain name under Policy ¶ 4(c)(iii).
See Wal-Mart Stores, Inc. v. Power of Choice
Holding Co., FA 621292 (Nat.
Arb. Forum Feb. 16, 2006)
(finding that the respondent’s use of domain names confusingly similar to the
complainant’s WAL-MART mark to divert Internet users seeking the complainant’s
goods and services to websites competing with the complainant did not
constitute a bona fide offering of goods or services under Policy ¶
4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Carey
Int’l, Inc. v. Kogan, FA
486191 (Nat. Arb. Forum July 29, 2005) (holding that the respondent’s use of
disputed domain names to market competing limousine services was not a bona
fide offering of goods or services under Policy ¶ 4(c)(i), as the
respondent was appropriating the complainant’s CAREY mark in order to profit
from the mark). The Panel therefore
finds that Respondent’s use of the <denverpostclassifieds.com> domain name is neither a bona fide offering of goods or services
under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the <denverpostclassifieds.com>
domain name under Policy
¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that
Respondent is using the <denverpostclassifieds.com>
domain name (initial registration: November
12, 2001) to host a website advertising competitors
of Complainant, and that this diversion of Internet users to competing
businesses is an intentional disruption of Complainant’s business by Respondent. Consequently, Complainant contends that
Respondent’s actions are evidence of Respondent’s registration and use
of the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). The Panel
agrees with Complainant’s contentions and finds that Respondent’s competitive
use of the disputed domain name indicates that Respondent registered and is
using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v.
Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the
respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a
commercial search engine with links to the products of the complainant and to
complainant’s competitors, as well as by diverting Internet users to several
other domain names); see also Tesco
Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13,
2007) (concluding that the use of a confusingly similar domain name to attract
Internet users to a directory website containing commercial links to the
websites of a complainant’s competitors represents bad faith registration and
use under Policy ¶ 4(b)(iii)).
Complainant also contends that Respondent is collecting “click-through” fees from the companies to which Respondent is diverting Internet users, and that these fees constitute commercial gain which is evidence of Respondent bad faith registration and use of the <denverpostclassifieds.com> domain name pursuant to Policy ¶ 4(b)(iv). The Panel agrees and finds that Respondent’s commercial gain from its use of the <denverpostclassifieds.com> domain name is evidence of its bad faith registration and use of the <denverpostclassifieds.com> domain name pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); 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 finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <denverpostclassifieds.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: January 13, 2010
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