The Associated Press v. Bill Harris Domains / Bill Harris
Claim Number: FA1102001373795
Complainant is The Associated Press (“Complainant”), represented by Steven M. Weinberg of Cowan DeBaets Abrahams & Sheppard, LLP, California, USA. Respondent is Bill Harris Domains / Bill Harris (“Respondent”), Alabama, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <theassociatedpress.com>, registered with eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 18, 2011; the National Arbitration Forum received payment on February 18, 2011.
On February 22, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <theassociatedpress.com> domain name 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 23, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 2011 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@theassociatedpress.com. Also on February 23, 2011, 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 March 18, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <theassociatedpress.com> domain name is identical to Complainant’s THE ASSOCIATED PRESS mark.
2. Respondent does not have any rights or legitimate interests in the <theassociatedpress.com> domain name.
3. Respondent registered and used the <theassociatedpress.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Associated Press, provides media and journalism services throughout the United States. Complainant owns multiple trademark registrations for the THE ASSOCIATED PRESS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 411,547 issued January 23, 1945).
Respondent, Bill Harris Domains/ Bill Harries, registered the disputed domain name on August 31, 2010. The dispute domain name resolves to a site offering links to news sites that compete with Complainant. Respondent presumably receives click-through fees from the linked sites.
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.
Policy ¶ 4(a)(i) requires Complainant to show that it has established rights in the THE ASSOCIATED PRESS mark. Complainant contends that it has established its rights in the mark by registering that mark with a federal trademark authority, the USPTO. Previous panels have determined that registering a mark with a federal trademark authority, like the USPTO, will established rights in the mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Therefore the Panel finds that Complainant has established its rights in the mark under Policy ¶ 4(a)(i) by registering the THE ASSOCIATED PRESS mark with the USPTO (e.g., Reg. No. 411,547 issued January 23, 1945).
Complainant also contends that Respondent’s <theassociatedpress.com> domain name is identical to Complainant’s THE ASSOCIATED PRESS mark. The disputed domain name includes the entire mark while removing three spaces and adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent has failed to differentiate its disputed domain name from Complainant’s THE ASSOCIATED PRESS mark making the two identical under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i); see also Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”).
The Panel finds that Complainant has established the elements of Policy ¶ 4(a)(i).
The Panel finds that Complainant has met its burden of proof by making a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name. Previous panels have found that once complainant meets its prima facie burden the onus shifts to respondent to prove it has rights or legitimate interests in the disputed domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). Respondent has failed to file a response in this matter which allows this Panel to assume that Respondent lacks any rights or legitimates in the disputed domain name. See . However, the Panel will still examine the entire record using the factors included in Policy ¶ 4(c) to determine whether Respondent has rights or legitimate interests in the dispute domain name.
Complainant asserts that Respondent is not commonly known by the <theassociatedpress.com> domain name. Respondent has offered no evidence to show that it is commonly known by the disputed domain name. The WHOIS information identifies the registrant as “Bill Harris Domains/ Bill Harris,” which this Panel finds is not similar to the disputed domain name. Based on the evidence in the record, the Panel finds that Respondent is not commonly known by the disputed domain name 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 the respondent was commonly known by the disputed domain name).
Complainant also asserts that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate or noncommercial fair use of the disputed domain name. Respondent’s <theassociatedpress.com> domain name resolves to a site offering links to Complainant’s competitors. Previous panels have found that this use does not constitute a bona fide offering of goods or services or a legitimate or noncommercial fair use of the disputed domain name. See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Complainant has established the elements of Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s <theassociatedpress.com> domain name disrupts its business, constituting bad faith registration and use. Respondent’s disputed domain name resolves to a site offering links to Complainant’s competitors. Internet users diverting to Respondent’s site by the confusingly similar domain name may then click on the linked sites, utilizing Complainant’s competitors services rather than Complainant’s. The Panel finds that this use does in fact disrupt Complainant’s business, constituting bad faith registration and use under Policy ¶ 4(b)(iii). See 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)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Complainant also argues that Respondent is using the <theassociatedpress.com> domain name for its own commercial gain, constituting bad faith registration and use. Respondent’s disputed domain name resolves to a site which lists links to third-party websites, many of which compete with Complainant. Respondent presumably receives a click-through fee from the linked sites for each Internet user diverted there. The Panel finds that Respondent does in fact gain commercially from the disputed domain name and the confusion created as to Complainant’s affiliation with the domain name, which constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <theassociatedpress.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 30, 2011
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