California Newspapers Partnership v. Whois Watchdog / Domain Administrator
Claim Number: FA1105001387445
Complainant is California Newspapers Partnership (“Complainant”), represented by Lauri S. Thompson of Greenberg Traurig, LLP, Nevada, USA. Respondent is Whois Watchdog / Domain Administrator (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bayareanews.com>, registered with REBEL.COM CORP.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 5, 2011; the National Arbitration Forum received payment on May 5, 2011.
On May 9, 2011, REBEL.COM CORP. confirmed by e-mail to the National Arbitration Forum that the <bayareanews.com> domain name is registered with REBEL.COM CORP. and that Respondent is the current registrant of the name. REBEL.COM CORP. has verified that Respondent is bound by the REBEL.COM CORP. 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 May 9, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 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@bayareanews.com. Also on May 9, 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 June 6, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <bayareanews.com> domain name is confusingly similar to Complainant’s BAYAREANEWSGROUP mark.
2. Respondent does not have any rights or legitimate interests in the <bayareanews.com> domain name.
3. Respondent registered and used the <bayareanews.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant publishes daily newspapers in California, USA under its BAYAREANEWSGROUP mark. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its BAYAREANEWSGROUP mark (Reg. No. 3,828,326; filed January 27, 2010; issued August 3, 2010).
Respondent registered the <bayareanews.com> domain name on March 25, 2003. The disputed domain name resolves to a website that contains hyperlinks to third-party news websites that compete with Complainant’s newspaper business.
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.
Complainant claims that it has established rights in its BAYAREANEWSGROUP mark. Complainant provides evidence of a trademark registration for its mark with the USPTO (Reg. No. 3,828,326; filed January 27, 2010; issued August 3, 2010). The Panel determines that Complainant has developed rights in its BAYAREANEWSGROUP mark under Policy ¶ 4(a)(i), dating back to January 27, 2010. 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 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 the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The effective date of Complainant's federal rights is . . . the filing date of its issued registration. Although it might be possible to establish rights prior to that date based on use, Complainant has submitted insufficient evidence to prove common law rights before the filing date of its federal registration.”).
Complainant also asserts common law rights in its BAYAREANEWSGROUP mark dating back to 2006. Complainant claims that it created a media division under the BAYAREANEWSGROUP mark to identify its newspapers and advertising services in 2006. Complainant contends that it operates the San Jose Mercury News, the Contra Coast Times, and the Oakland Tribune, all of which reach an average of 2.7 million adults each week and have been in continuous operation since at least 2006. Complainant’s trademark registration with the USPTO lists the first use of the mark as August 2, 2006. The Panel finds that Complainant has established common law rights in its BAYAREANEWSGROUP mark under Policy ¶ 4(a)(i), dating back to 2006. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)).
Respondent’s <bayareanews.com> domain name contains Complainant’s entire mark with the exception of the term GROUP. The disputed domain name also contains the generic top-level domain (“gTLD”) “.com.” The Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s BAYAREANEWSGROUP mark under Policy ¶ 4(a)(i). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”); see also 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 finds Policy ¶ 4(a)(i) has been satisfied.
Because of the reasons the Panel gives in its discussion of Policy ¶ 4(a)(iii), the Panel declines to analyze Policy ¶ 4(a)(ii). See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”).
According to the WHOIS information, Respondent registered the <bayareanews.com> domain name on March 25, 2003. Complainant first began using the BAYAREANEWSGROUP mark in 2006. Complainant does not provide any evidence that would demonstrate Complainant’s use of the mark prior to Respondent’s registration of the disputed domain name. Therefore, the Panel cannot find that Respondent registered the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (finding the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark).
The Panel finds that Policy ¶ 4(a)(iii) has not been satisfied.
Having considered all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <bayareanews.com> domain name REMAIN WITH Respondent.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 20, 2011
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