The
Claim Number: FA1003001313509
Complainant is The New York Times Company (“Complainant”), represented by Alexis
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <newyourktimes.com>, <newyortimes.com>, <neyyorktimes.com>, and <newyoktimes.com>, registered with eNom, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically March 16, 2010.
On March 17, 2010, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <newyourktimes.com>, <newyortimes.com>, <neyyorktimes.com>, and <newyoktimes.com> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. verified that Respondent is bound by the eNom, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 19, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 8, 2010, by which Respondent could file a response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@newyourktimes.com, postmaster@newyortimes.com, postmaster@neyyorktimes.com and postmaster@newyoktimes.com. Also on March 19, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 14, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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" through submission of a Written Notice, as defined in Rule 1. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <newyourktimes.com>, <newyortimes.com>, <neyyorktimes.com>, and <newyoktimes.com>, are confusingly similar to Complainant’s THE NEW YORK TIMES mark.
2. Respondent has no rights to or legitimate interests in the <newyourktimes.com>, <newyortimes.com>, <neyyorktimes.com>, and <newyoktimes.com> domain names.
3. Respondent registered and used the <newyourktimes.com>, <newyortimes.com>, <neyyorktimes.com>, and <newyoktimes.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The New York
Times Company, is one of the leading media companies in the world, offering
news-related products and services including the online version of The New York Times, various blogs and
electronic media products. Complainant
owns trademark registrations for the THE NEW YORK TIMES marks with the United
States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,120,865 issued Dec. 16, 1997).
Respondent, Nadeem Qadir a/k/a
Bladimir Boyiko a/k/a Cosmos1, registered the <newyourktimes.com> domain name December 28, 2000; the <newyortimes.com> domain name June 8,
2000; the <neyyorktimes.com>
domain name January 8, 2001; and the <newyoktimes.com>
domain name May 17, 2000. All four
disputed domain names resolve to the domain <usseek.com>, which features
ads and links to other third-party news sites, including Complainant and
Complainant’s competitors.
In previous domain name
disputes, “Nadeem Qadir,” “Bladimir Boyiko,” and “Cosmos1” have been deemed to
be aliases controlled by the same person and/or entity. Respondent has a history of cybersquatting
under such aliases, having been the respondent in at least six other UDRP
proceedings in which the respective domain names were transferred to the
respective Complainants. See, e.g.,
Microsoft Corp. v. Nadeem Qadir a/k/a
Bladimir Boyiko a/k/a Cosmos1, FA 1265720 (Nat. Arb. Forum July 14, 2009); Travelocity.com LP v. Boyiko, FA 1245545
(Nat. Arb. Forum Mar. 16, 2009); LEGO
Juris A/S v. Bladimir Boyiko, D2009-0437 (WIPO May 20, 2009).
Preliminary
Issue: Multiple Respondents
In the instant proceedings, Complainant alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (“the Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that all four disputed domain names in this case are registered with the same registrar, Enom, Inc., and associated with the same IP address (216.65.41.185). Complainant also asserts that all four disputed domain names are registered to one of three aliases (“Bladimir Boyiko,” “Nadeem Qadir,” or “Cosmos1”) and associated with one of two email addresses (“vb@russa.com” or “tankim@ownbox.com”). Additionally, all four disputed domain names redirect to the same domain, <usseek.com>. The three aliases were also held to be controlled by the same person/entity in a previous UDRP proceeding. See Microsoft Corp. v. Nadeem Qadir a/k/a Bladimir Boyiko a/k/a Cosmos1, FA 1265720 (Nat. Arb. Forum July 14, 2009).
Accordingly, the Panel finds that Complainant presented sufficient evidence that the disputed domain names are controlled by the same entity; and thus the Panel finds it appropriate to proceed with the instant proceedings. See Yahoo! Inc. v. Zviely, FA 162060 (Nat. Arb. Forum July 24, 2003) ("[W]here it is clear that the same person is registering domain names using different fictitious names, it is appropriate to proceed in a single Complaint against multiple registrant names."); see also Am. Online, Inc. v. Johuathan Invs., Inc. & AOLLNEWS.COM, D2001-0918 (WIPO Sept. 14, 2001) (determining that when service is proper and the respondent(s) fails to respond to the complaint, the panel may accept the complainant’s assertion that the various aliases are the same person or entity as true).
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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.
Complainant owns trademark registrations with the USPTO for
the THE NEW YORK TIMES marks (e.g.,
Reg. No. 2,120,865 issued Dec. 16, 1997). The Panel finds that federal trademark
registrations with the USPTO serve as conclusive evidence of Complainant’s
rights in the mark, regardless of the location of Respondent’s residence or
business operations, according to Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v.
Complainant urges that Respondent’s disputed domain names
are confusingly similar to Complainant’s THE NEW YORK TIMES mark. The four disputed domain names all differ
from Complainant’s mark in only minor ways:
(1) all the disputed domain names omit the word “the” and add the
generic top-level domain (“gTLD”) “.com”; (2) the <newyortimes.com> and <newyoktimes.com>
disputed domain names both delete a single
letter from Complainant’s mark; (3) the <newyourktimes.com> disputed domain name adds an extra letter;
and (4) the <neyyorktimes.com>
disputed domain name misspells Complainant’s mark by exchanging the “w” for a
“y.” The Panel finds that minor spelling
changes in the disputed domain names, either by deleting or adding a letter or
exchanging one letter for another, are not substantial enough to prevent
confusing similarity under Policy ¶ 4(a)(i).
See Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by
only one letter from a trademark has a greater tendency to be confusingly
similar to the trademark where the trademark is highly distinctive); see also Pfizer
Inc. v. BargainName.com, D2005-0299
(WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was
confusingly similar to the complainant’s PFIZER mark, as the respondent simply
omitted the letter “i”). The Panel also
finds that omitting the article “the” fails to distinguish the disputed domain
names from Complainant’s mark. See 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); see also Saul Zaentz Co. v. Dodds, FA 233054 (Nat. Arb. Forum
Mar. 16, 2004) (the domain name merely omitted the definite article “the” and
the preposition “of” from the complainant’s mark and thus, failed to
“sufficiently distinguish the domain name from the mark pursuant to Policy ¶
4(a)(i)”). The addition of the gTLD
“.com” is irrelevant for the purposes of a Policy ¶ 4(a)(i)
analysis. 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 Respondent’s disputed domain names are confusingly similar
to Complainant’s THE NEW YORK TIMES mark according to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant’s allegation that Respondent lacks rights and legitimate interests in the disputed domain names sufficiently establishes the prima facie case against Respondent that is required under Policy ¶ 4(a)(ii). The burden to demonstrate rights and legitimate interested has now shifted to Respondent. Respondent, however, failed to respond to the allegations in the Complaint. The Panel finds that Respondent’s failure to contest Complainant’s allegations allows the Panel to infer that Respondent lacks rights and legitimate interests in the disputed domain names. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise). This Panel elects, however, to consider the evidence presented according to the Policy ¶ 4(c) factors in order to determine if evidence in the record suggests that Respondent possesses rights and legitimate interests in the disputed domain names.
Complainant contends that Respondent is not commonly known by the disputed domain names, arguing that this lack of association demonstrates Respondent’s lack of rights and legitimate interests. The WHOIS information for each disputed domain name does not reflect that Respondent is commonly known by the disputed domain names. As Respondent is not authorized to use Complainant’s mark and has not presented any evidence of nominal association between Respondent and the disputed domain names, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that Respondent was commonly known by the disputed domain name).
Further, Respondent’s disputed domain names all resolve to
<usseek.com>, a website displaying a variety of third-party links to other
news products and services in competition with Complainant. The Panel finds that using the disputed
domain names in connection with a directory website that advertises links to
Complainant’s competitors does not comport with the bona fide offering of goods or services or the legitimate
noncommercial or fair use required by Policy ¶¶ 4(c)(i)
or 4(c)(iii). See Skyhawke Techns., LLC v.
Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com>
domain name to display a list of hyperlinks, some of which advertise
Complainant and its competitors’ products.
The Panel finds that this use of the disputed domain name does 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 ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum
Feb. 27, 2007) (finding that “using the confusingly similar
<viaggidea.com> domain name to operate a website that features links to
various commercial websites from which Respondent presumably receives referral
fees….is neither a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy
¶ 4(c)(iii).”).
Complainant additionally
contends that Respondent is capitalizing on common misspellings or
typographical errors of Complainant’s mark as a way of misdirecting Internet
users seeking Complainant’s online presence.
The Panel finds that this practice constitutes typosquatting, which supports
findings that Respondent lacks rights and legitimate interests in the disputed
domain names under Policy ¶ 4(a)(ii). See IndyMac Bank
F.S.B. v. Ebeyer, FA 175292 (Nat. Arb.
Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate
interests in the disputed domain names because it “engaged in the
practice of typosquatting by taking advantage of Internet users who attempt to
access Complainant's <indymac.com> website but mistakenly misspell
Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also Microsoft Corp. v. Domain Registration
The Panel finds that
Respondent has no rights or legitimate interests in the disputed domain names;
Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent has engaged in a pattern of cybersquatting as
evidenced by several adverse UDRP proceedings against Respondent. See, e.g., Microsoft Corp. v. Nadeem Qadir a/k/a Bladimir Boyiko a/k/a Cosmos1,
FA 1265720 (Nat. Arb. Forum July 14, 2009); Travelocity.com
LP v. Boyiko, FA 1245545 (Nat. Arb. Forum Mar. 16, 2009); LEGO Juris A/S v. Bladimir Boyiko,
D2009-0437 (WIPO May 20, 2009). Because
Respondent has a pattern of registering domain names containing third-party
marks, as evidenced by prior UDRP proceedings, the Panel finds that Respondent’s
conduct here as well constitutes bad faith registration and use under Policy ¶
4(b)(ii). See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb.
Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because
the domain name prevented the complainant from reflecting its mark in a domain
name and the respondent had several adverse decisions against it in previous
UDRP proceedings, which established a pattern of cybersquatting); see also Sony Kabushiki Kaisha v. Anderson,
FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering
domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent
previously registered domain names incorporating well-known third party
trademarks).
Respondent’s disputed domain
names all resolve to a directory site featuring links to third-party providers
of news products and services in competition with Complainant. Such a site clearly disrupts Complainant’s
business, as Internet users seeking Complainant’s products will be diverted to
a site featuring competing products. The
Panel finds that this disruption of Complainant’s business and diversion of
Internet users to Complainant’s competitors shows bad faith registration and
use according to Policy ¶
4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24,
2006) (finding that the respondents engaged in bad faith registration and use
pursuant to Policy ¶ 4(b)(iii) by using the disputed domain name 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)).
Respondent’s misspellings of
Complainant’s mark in the disputed domain names capitalize on common mistakes
or typographical errors made when searching for Complainant’s mark. The easy mistakes are intended to attract
Internet users seeking Complainant’s products.
When the Internet users are diverted to Respondent’s website and then
click on any of the third-party links, it is presumed that Respondent is
compensated on a pay-per-click basis.
The Panel finds that Respondent’s efforts to mislead Internet users and divert
those who seek Complainant’s business in order to receive commercial gain
constitute bad faith registration and use under Policy ¶ 4(b)(iv). See
Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006)
(finding bad faith registration and use under Policy ¶ 4(b)(iv) where the
respondent was diverting Internet users searching for the complainant to its
own website and likely profiting); see
also Univ. Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar.
21, 2006) (“Respondent is using the disputed domain name to operate a website
which features links to competing and non-competing commercial websites from
which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain
is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel has previously
concluded that Respondent is engaged in the practice of typosquatting through
the use of confusingly similar disputed domain names. The Panel finds that this practice of
typosquatting is evidence, standing alone, of bad faith registration and use
under Policy ¶ 4(a)(iii). See, e.g.,
Nextel Commc’ns Inc. v. Geer, FA
477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s
registration and use of the <nextell.com> domain name was in bad faith
because the domain name epitomized typosquatting in its purest form). Therefore, the Panel finds that Respondent
had engaged in bad faith registration and use under Policy ¶ 4(a)(iii). See
Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept.
22, 2003) (finding that the <dermatologica.com> domain name was a “simple
misspelling” of the complainant’s DERMALOGICA mark which indicated
typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)).
The Panel finds that
Complainant satisfied the elements of ICANN 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 <newyourktimes.com>, <newyortimes.com>, <neyyorktimes.com>, and <newyoktimes.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 28, 2010.
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