The Newsweek/Daily Beast Company LLC v. PLK
Claim Number: FA1102001375232
Complainant is The Newsweek/Daily Beast Company LLC (“Complainant”), represented by Brian J. Winterfeldt of Steptoe & Johnson LLP, Washington, D.C., USA. Respondent is PLK (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newsweekdailybeast.com>, registered with Hangang Systems, Inc. d/b/a doregi.com.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 28, 2011; the National Arbitration Forum received payment on February 28, 2011. The Complaint was submitted in both Korean and English.
On March 1, 2011, Hangang Systems, Inc. d/b/a doregi.com confirmed by e-mail to the National Arbitration Forum that the <newsweekdailybeast.com> domain name is registered with Hangang Systems, Inc. d/b/a doregi.com and that Respondent is the current registrant of the name. Hangang Systems, Inc. d/b/a doregi.com has verified that Respondent is bound by the Hangang Systems, Inc. d/b/a doregi.com 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 March 9, 2011, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of March 29, 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@newsweekdailybeast.com. Also on March 9, 2011, the Korean language 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 31, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 a response from Respondent.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <newsweekdailybeast.com> domain name is confusingly similar to Complainant’s NEWSWEEK mark.
2. Respondent does not have any rights or legitimate interests in the <newsweekdailybeast.com> domain name.
3. Respondent registered and used the <newsweekdailybeast.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Newsweek/Daily Beast Company LLC, provides international weekly news and features in both magazine and online formats. Complainant owns multiple trademark registrations for the NEWSWEEK mark, both with the Korean Intellectual Property Office (“KIPO”) and the United States Patent and Trademark Office (“USPTO”):
KIPO
Reg. No. 3,215 issued October 16, 1958;
Reg. No. 50,529 issued December 9, 1998;
USPTO
Reg. No. 603,656 issued March 22, 1955;
Reg. No. 1,413,355 issued October 14, 1986;
Reg. No. 2,000,346 issued September 10, 1996; and
Reg. No. 3,694,057 issued October 6, 2009.
Complainant also holds a trademark registration with the USPTO for its THE DAILY BEAST mark (Reg. No. 3,796,437 issued June 1, 2010).
Respondent, PLK, registered the <newsweekdailybeast.com> domain name on November 12, 2010. The disputed domain name does not resolve to a website displaying any active content.
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’s trademark registrations with the KIPO and/or the USPTO conclusively prove Complainant’s rights in its NEWSWEEK and THE DAILY BEAST marks for the purposes of Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Respondent’s <newsweekdailybeast.com> domain name is confusingly similar to Complainant’s NEWSWEEK mark because the disputed domain name merely combines Complainant’s NEWSWEEK mark with its THE DAILY BEAST mark, and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that combining two of Complainant’s marks does not prevent confusing similarity, and may increase confusion, as both elements of the disputed domain name clearly pertain to Complainant. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also Fitness Anywhere, Inc. v. Mode Athletics, FA 1320667 (Nat. Arb. Forum May 20, 2010) (“Respondent’s <trxsuspensiontraining.com> disputed domain name is confusingly similar to Complainant’s TRX and SUSPENSION marks because it combines Complainant’s marks and merely adds the generic top-level domain “.com.”). The Panel also finds that the addition of the gTLD is irrelevant in determining confusing similarity. 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). The Panel thus determines that Respondent’s <newsweekdailybeast.com> domain name is confusingly similar to Complainant’s NEWSWEEK mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant has the burden of presenting a prima facie case against Respondent. Once a prima facie case has been established, Respondent bears the burden of proving its rights and legitimate interests in the disputed domain name. Complainant presented a prima facie case in these proceedings and Respondent failed to respond. The Panel may therefore infer that Complainant’s allegations are true and that Respondent accordingly lacks rights and legitimate interests in the disputed domain name. See Am. Express v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). The Panel elects, however, to consider the evidence presented in light of the Policy ¶ 4(c) factors to determine whether Respondent possesses any rights and legitimate interests in the disputed domain name.
Complainant argues that Respondent is not commonly known by the <newsweekdailybeast.com> domain name. The WHOIS information for the disputed domain name identifies the registrant as “PLK,” which does not appear to be connected with the disputed domain name. The Panel concludes that Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See 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); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent is not currently using the <newsweekdailybeast.com> domain name to provide any content, and therefore Respondent is not making a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The Panel agrees. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where the respondent merely passively held the domain name).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
When conducting a Policy ¶ 4(a)(iii) analysis, the Panel finds that it may consider the totality of the circumstances without being limited to the enumerated factors in Policy ¶ 4(b). See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples of [bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Respondent’s <newsweekdailybeast.com> domain name is not actively used to provide any substantive content or offer any goods. The Panel finds that failure to use the disputed domain names serves is evidence of bad faith registration and use according to Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Complainant asserts that on January 31, 2011, RTST, LLC, the then owner of the THE DAILY BEAST marks, merged with Harman Newsweek LLC, the then owner of the NEWSWEEK marks, to become Complainant. On November 11, 2010, the NEWSWEEK and DAILY BEAST publications made the announcement of the upcoming merger. On November 12, 2010, only one day after the merger announcement, Respondent registered the <newsweekdailybeast.com> domain name. Complainant argues, and the Panel agrees, that the timing of Respondent’s registration indicates opportunistic bad faith registration of the disputed domain name according to Policy ¶ 4(a)(iii). See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”); see also Tech. Props., Inc. v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (“The Respondent took advantage of the public announcement that Tandy Corporation was changing its name to RadioShack by registering the domain names on the same day as a public announcement of a company’s name change. This is also evidence of bad faith.”).
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 <newsweekdailybeast.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 7, 2011
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