Lee Enterprises, Incorporated v. Polanski
Claim Number: FA0212000135619
PARTIES
Complainant
is Lee Enterprises, Incorporated,
Davenport, IA (“Complainant”) represented by Dana M. Craig, of
Lane & Waterman. Respondent is Polanski, Krakow, Poland
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <billingsgazzette.com>,
registered with Enom, Inc.
PANEL
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on December 5, 2002; the Forum received a hard copy of the
Complaint on December 9, 2002.
On
December 12, 2002, Enom, Inc.
confirmed by e-mail to the Forum that the domain name <billingsgazzette.com> is registered with Enom, Inc. and that Respondent is the
current registrant of the name. Enom, Inc. has verified that
Respondent is bound by the Enom, 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 16, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 6, 2003 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@billingsgazzette.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
January 15, 2003, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed the Honorable Charles K.
McCotter, Jr. (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the 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 Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Complainant argues that Respondent’s <billingsgazzette.com> domain
name is confusingly similar to Complainant’s BILLINGS
GAZETTE mark.
2. Complainant argues that Respondent does
not have rights to or legitimate interests in the <billingsgazzette.com> domain name.
3. Complainant argues that Respondent
registered and used the <billingsgazzette.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant, Lee Enterprises Inc., is a
Delaware corporation with its principal place of business in Davenport, Iowa.
Complainant owns and operates various newspapers throughout the United
States. In Billings, Montana,
Complainant owns the “Billings Gazette,” a daily newspaper, which it has
published for over 100 years within Montana and Wyoming.
Complainant registered the BILLINGS
GAZETTE trademark with the State of Montana on November 8, 1991 (Reg. No.
016776) and in Wyoming on May 3, 1993 (Reg. No. 281,813). Complainant therefore owns the exclusive
right to use the BILLINGS GAZETTE mark in Montana and Wyoming with regard to
newspapers and newspaper services.
Complainant also operates a website that
corresponds to the daily newspaper located at <billingsgazette.com>.
Respondent registered the <billingsgazzette.com> domain name on September 9, 2000. Respondent’s <billingsgazzette.com>
redirects Internet traffic to the commercial website <gotoo.com>, where
Internet users encounter various pop-up windows advertising and providing links
to online casino websites.
Respondent has a history of purchasing
domain names that are misspellings of others’ websites or trademarks and
redirecting the misspelled domain names to casino sites or other commercial
websites that were unrelated to any legitimate purpose.
DISCUSSION
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 the 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.
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 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
has established rights in the BILLINGS GAZETTE mark through registration with
the Montana and Wyoming state trademark officials, as well as continuous use of
the mark in its publication of the “Billings Gazette” daily newspaper for over
100 years. See 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 a Respondent operates. It is sufficient that a Complainant can
demonstrate a mark in some jurisdiction).
Respondent’s <billingsgazzette.com>
domain name is confusingly similar to Complainant’s BILLINGS GAZETTE
mark. Respondent’s domain name
incorporates an obvious typographical error into Complainant’s BILLINGS GAZETTE
mark. More specifically, Respondent’s
second-level domain inserts an extra “z” into Complainant’s mark. An obvious misspelling of a famous and
distinct mark fails to create a domain name capable of overcoming a claim of
confusing similarity under Policy ¶ 4(a)(i).
See Am. Online, Inc. v.
Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that
<oicq.net> and <oicq.com> are confusingly similar to Complainant’s
mark, ICQ); see also Kelson
Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that
<kelsonmd.com> is identical or confusingly similar to Complainant’s
registered service mark, “Kelson”).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Respondent did not respond to the
Complaint that stated, inter alia, that Respondent lacks rights and
legitimate interests in the <billingsgazzette.com> domain
name. Because Complainant’s evidence
and arguments are unopposed, the Panel is permitted to accept all reasonable
inferences made in the Complaint as true.
See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO
Aug. 21, 2000) (“Failure of a respondent to come forward to [contest
complainant’s allegations] is tantamount to admitting the truth of
complainant’s assertion in this regard”);
see also Desotec N.V. v.
Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to
respond allows a presumption that Complainant’s allegations are true unless
clearly contradicted by the evidence).
Respondent’s <billingsgazzette.com>
domain name has been used to link Internet users to the commercial
website <gotoo.com>. Respondent’s
use and management of the domain name shows that it is intentionally
capitalizing on Complainant’s mark to attract Internet traffic to another
website, which has no relationship with Complainant. Respondent’s conduct regarding the domain name does not represent
a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See
Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding
that, because Respondent's sole purpose in selecting the domain names was to
cause confusion with Complainant's website and marks its use of the names was
not in connection with the offering of goods or services or any other fair
use); see also Vapor Blast Mfg. Co. v. R & S Tech.,
Inc., FA 96577 (Nat.
Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the
domain name to confuse and divert Internet traffic is not a legitimate use of
the domain name).
Respondent has submitted no evidence that
it is “commonly known” by the <billingsgazzette.com>
domain name. Conversely, Complainant has submitted
evidence establishing itself as the principal holder of all rights and
legitimate interests in the BILLINGS GAZETTE mark. Thus, the Panel accepts Complainant’s allegations that Respondent
has no rights or legitimate interests to the domain name under Policy ¶
4(c)(ii). See Victoria’s Secret v. Asdak, FA 96542
(Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was
not commonly known by a domain name confusingly similar to Complainant’s
VICTORIA’S SECRET mark because of Complainant’s well-established use of the
mark); see also Broadcom Corp. v.
Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no
rights or legitimate interests because Respondent is not commonly known by the
disputed domain name or using the domain name in connection with a legitimate
or fair use).
Complainant has sufficiently supported
its allegation that Respondent is not engaging in a noncommercial or fair use manner of the disputed domain name under Policy ¶ 4(c)(iii). Respondent intentionally
misspelled the distinctive BILLINGS GAZETTE mark to benefit from the reputation
and goodwill associated with Complainant’s mark. Additionally, Respondent is diverting Internet traffic to a
commercial website not associated with Complainant. Neither of these circumstances lead the Panel to conclude that
the <billingsgazzette.com> is being used in accord with Policy
¶ 4(c)(iii). See
Encyclopaedia Brittanica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000)
(finding that fair use does not apply where the domain names are misspellings
of Complainant's mark); see also AltaVista
v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain
name to direct users to other, unconnected websites does not constitute a
legitimate interest in the domain name).
Accordingly, the Panel finds that
Respondent has no rights or legitimate interests in the domain name pursuant to
Policy ¶ 4(a)(ii).
Respondent’s management of
the <billingsgazzette.com> domain name
illustrates bad faith registration and use under Policy ¶ 4(b)(iv). Respondent is engaged in linking the
disputed domain name to advertisements for gambling websites. A finding for bad faith can be made under
Policy ¶ 4(b)(iv) when one
intentionally misdirects Internet traffic to either gambling pop-up
advertisements or gambling websites. See Mars,
Inc. v. Double Down Magazine, D2000-1644 (WIPO Jan. 24, 2001) (finding bad
faith under Policy ¶ 4(b)(iv) where Respondent linked the domain name
<marssmusic.com>, which is identical to Complainant’s mark, to a gambling
website); see also Encyclopaedia
Britannica Inc. v. Shedon.com, D2000-0753 (WIPO Sept. 6, 2000) (finding
that the Respondent violated Policy ¶ 4(b)(iv) by using the domain name
<britannnica.com> to hyperlink to a gambling site).
Respondent’s bad faith use of the domain
name is also demonstrated by Respondent’s “typosquatting”. By adding the letter “z” to the BILLINGS
GAZETTE mark, Respondent incorporated a common typographical error into Complainant’s
mark, causing Internet users who make a slight spelling or typing error to
reach an unintended website.
Typosquatting has been recognized as a bad faith use of a domain name
under the UDRP. See e.g. Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum
May 30, 2000) (awarding <hewlitpackard.com> a misspelling of
HEWLETT-PACKARD to Complainant); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8,
2000) (awarding <davemathewsband.com> and <davemattewsband.com>,
common misspellings of DAVE MATTHEWS BAND, to Complainant).
Accordingly, the Panel finds that Policy
¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel hereby concludes that the requested
relief shall be GRANTED.
Accordingly, it is ordered that the
domain name <billingsgazzette.com>
be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: January 22, 2003
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