The Newsweek/Daily Beast Company LLC v. Online News Interactive, LLC
Claim Number: FA1204001438295
Complainant is The Newsweek/Daily Beast Company LLC (“Complainant”), represented by John F. Burleigh of Jacobs & Burleigh LLP, New York, USA. Respondent is Online News Interactive, LLC (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newsweektoday.com>, registered with GoDaddy.com, LLC.
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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 5, 2012; the National Arbitration Forum received payment on April 5, 2012.
On April 9, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <newsweektoday.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 April 10, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 30, 2012 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@newsweektoday.com. Also on April 10, 2012, 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 May 7, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
i. Complainant’s famous trademark ‘NEWSWEEK’ (the “NEWSWEEK Mark”) is protected in countries around the world, including but not limited to the United States, Canada and countries in the European Union.
ii. Complainant owns numerous trademark registrations for the NEWSWEEK Mark around the world, including but not limited to federal trademark registrations in the United States such as the following representative examples:
(1) NEWSWEEK; Registration No. 603,656, issued on March 22, 1955, for weekly magazines;
(2) NEWSWEEK & Design; Registration No. 1,413,355, issued on October 14, 1986, for magazines of general news and features;
(3) NEWSWEEK (Stylized); Registration No. 2,000,346, issued on September 10, 1996, for on-line news services containing a computerized database featuring news stories and other news related material;
(4) NEWSWEEK.COM; Registration No. 2,418,759, issued on January 9, 2001, for computer services, namely, providing an interactive on-line magazine in the fields of news and general interest information; providing general news information via a global computer network, namely, providing news reports, news columns and an interactive computer database in the field of news; and
(5) NEWSWEEK; Registration No. 3,694,057, issued on October 6, 2009, for retail store services featuring publications, food products and other travel related products.
(6) As the foregoing registrations show, Complainant’s trademark rights in its NEWSWEEK Mark in the United States predate Respondent’s registration of the Domain Name on March 23, 2009.
iii. Complainant also owns the following Community Trade Mark registration in the European Union:
(1) NEWSWEEK, Registration No. 29322, issued on February 2, 1998, for computer programs, printed matter, education and entertainment services, and computer services.
(2) As the foregoing registration shows, Complainant’s trademark rights in its NEWSWEEK Mark in the European Union predate Respondent’s registration of the Domain Name on March 23, 2009.
FACTUAL AND LEGAL GROUNDS
a. Background Facts
i. Complainant’s NEWSWEEK Goods and Services
(1) Complainant’s NEWSWEEK is a leading international weekly news and features magazine and online content publisher. Indeed, NEWSWEEK has over 1.5 million print subscribers worldwide, and millions of users visit NEWSWEEK co-branded websites each month to read their award-winning news reporting and feature writing.
(2) Complainant is the owner of the service mark and trademark NEWSWEEK, the trade name NEWSWEEK, as well as the domain name NEWSWEEK.COM. In continuous use since 1933, the NEWSWEEK Mark has become one of the most recognized brands in the world. Each day, millions of users and subscribers access NEWSWEEK’s products and services around the globe, and as a result, the world’s public has come to associate the NEWSWEEK Mark with products and services of a high and uniform quality.
(3) Complainant has made substantial investments in developing and marketing its products, services, and cultivating its world-famous NEWSWEEK Mark. For example, Complainant has publicized and continues to publicize its NEWSWEEK Mark through network and cable television programs, radio broadcasts, print media, including newspapers and periodicals, and through the Internet. Complainant has spent many millions of dollars in connection with these forms of advertising and promotion.
(4) Long before Respondent’s registration of the infringing Domain Name, Complainant was using the NEWSWEEK Mark in connection with its goods and services. Complainant has also used and promoted its NEWSWEEK Mark through the Internet and by way of traditional media. Finally, Complainant has used its famous and distinctive NEWSWEEK Mark continuously and extensively in international commerce to market its good and services.
(5) Since 2008, Complainant has used the trademark THE DAILY BEAST prominently and consistently in connection with a website providing information relating to news and current events, which it also uses to promote NEWSWEEK products and services.
(6) Because of Complainant’s substantial investments in advertising and promotion, together with its substantial sale of high-quality goods and services, the distinctive NEWSWEEK Mark has become famous among members of the purchasing public, including in the United States.
ii. Respondent’s Infringing Activities and Bad-Faith Acts
(1) Some time in or before February 2012, Respondent established a website named “Newsweek Today,” which Respondent located at and made reachable through the Domain Name (the “Infringing Website”). On the Infringing Website, Respondent made repeated use of the NEWSWEEK name and typeface logo.
(2) Some time in or before February 2012, Respondent began placing on the Infringing Website content owned by Complainant and copied from Complainant’s THE DAILY BEAST website.
(3) Thus, for example, on February 21, 2012, the Infringing Website, named “Newsweek Today,” featuring the NEWSWEEK typeface logo and containing in the header on each page the names “Newsweek Today” and “NewsweekToday.com,” consisted of content that was substantially a mirror image of the content on Complainant’s THE DAILY BEAST website that same day.
(4) Sometime before February 21, 2012, Complainant learned about the Domain Name and the Infringing Website when it learned from a global Internet media company that was a potential advertiser that this company had placed advertisements on the Infringing Website, incorrectly thinking that the Infringing Website was owned by Complainant.
(5) Respondent’s use of the Domain Name is intended to, and actually does, confuse readers and advertisers seeking Complainant’s website and misdirect them to the Infringing Website.
(6) Respondent, through an affiliated company named “Internet Holdings, Inc.,” has, in flagrant bad faith, attempted to profit through the Domain Name by selling advertising on the Infringing Website. The potential advertiser mentioned in section 6(ii)(4) above advised Complainant that Respondent’s affiliate contacted it to sell it advertising on the “Newsweek Today” website, which it confusingly believed was owned and operated by Complainant. During the first few days the advertisement was posted on the Infringing Website, the advertiser noticed an excessive number of clickthroughs for which it was being charged. It thereupon contacted Complainant only to discover that Complainant had nothing to do with the Infringing Website or the Domain Name. It thereupon cancelled the advertisement, which was removed from the Infringing Website.
(7) On February 22, 2012, in an attempt to resolve this matter amicably, Complainant’s counsel sent a letter to Respondent objecting to its registration and use of the Domain Name and its use of the NEWSWEEK trademark and logo as well as its copying of the copyrighted content of the THE DAILY BEAST website. Among other things, Complainant asked Respondent to cease using the Domain Name, the NEWSWEEK and THE DAILY BEAST trademarks and logos, and Complainant’s copyrighted content, and to transfer the Domain Name to Complainant.
(8) On February 23, 2012, Respondent removed Complainant’s copyrighted content from the Infringing Website, replacing it with the message “Coming Soon.” Respondent did not otherwise respond to Complainant’s letter, and it did not transfer the Domain Name to Complainant or stop using the NEWSWEEK trademark.
(9) Sometime after February 23, 2012, while continuing to use the newsweektoday.com DOMAIN NAME, the “Newsweek Today” name and the NEWSWEEK trademark and logo, Respondent began placing on the Infringing Website content owned by the LA Daily News and copied from its website at dailynews.com.
(10) Respondent’s registration and use of a domain name containing Complainant’s NEWSWEEK trademark constitute blatant violations of Complainant’s intellectual property rights. In addition, Respondent’s registration and use of Complainant’s trademark in a domain name demonstrates disregard and contempt for Complainant’s legal rights as well as ICANN’s Uniform Domain Name Dispute Resolution Policy.
b. The Domain Name is Confusingly Similar to Complainant’s Mark
The Domain Name is confusingly similar to Complainant’s NEWSWEEK Mark for the reasons set forth below.
i. The NEWSWEEK Mark Is a Distinctive, Strong, and Well-Recognized Trademark
The primary word in Respondent’s DOMAIN NAME is identical to Complainant’s NEWSWEEK Mark. The distinctive nature of the Newsweek Mark supports the argument that it is highly unlikely that Respondent could believe that that the Domain Name would not be confusingly similar to Complainant’s Mark. See, e.g., Cable News Network, Inc. v. Dr0w1ssap, FA 1351239 (Nat. Arb. Forum Nov. 22, 2010) (finding <cnnnewsalert.com> and <cnnworldnews.net> confusingly similar to CNN’s world-famous marks); Time Warner Inc. v. MLM Capital LLC, FA 1076561 (Nat. Arb. Forum Oct. 26, 2007) (holding that the addition of generic terms to the Time Warner mark “insufficiently distinguishe[d] the disputed domain names from [Time Warner’s] mark”).
ii. The NEWSWEEK Mark Is Famous
Indeed, the NEWSWEEK Mark is famous. As set forth in sections 5(c) and 6(a)(i), it has been in continuous use since 1933 and registered since 1955, and because of its owners’ substantial investments in advertising and promotion, together with their substantial sale of high-quality goods and services, the distinctive NEWSWEEK Mark has become famous among members of the purchasing public, including in the United States. It is therefore inconceivable that Respondent could believe that the Domain Name, the primary word in which is NEWSWEEK, would not be confusingly similar to the NEWSWEEK Mark.
c. Respondent Has No Legitimate Interest in the Domain Name
From the appearance of Respondent’s website, and Respondent’s own statements, Respondent clearly has no rights or legitimate interest in the Domain Name for the following reasons.
i. Respondent Is Not Commonly Known by the Domain Name
Respondent is not and has not been commonly known by anything resembling the NEWSWEEK Mark or indeed anything resembling it. Respondent’s name, Online News Interactive, LLC, bears no similarity to the Domain Name. Further, nothing in Respondent’s WHOIS information demonstrates that Respondent is commonly known by the Domain Name, and Complainant has not authorized the Respondent to use the NEWSWEEK Mark. See, e.g., Time Warner Inc. v. The Real South c/o Joseph Rollins, FA 1230674 (Nat. Arb. Forum Dec. 17, 2008) (finding WHOIS information lacking in resemblance to any of the domains at issue, including <timewarnercares.com> and <timewarnercares.org>); Time Warner Inc. v. Thomas Kerr, FA 1058733 (Nat. Arb. Forum Aug. 28, 2007) (considering the lack of any similar WHOIS information in the context of finding use of <timewarnervote.com> to be confusingly similar to Time Warner’s marks).
ii. NEWSWEEK is a Famous Mark
Given the international fame of the NEWSWEEK Mark, Respondent could not be known by the Domain Name. See Yahoo! Inc. and GeoCities v. Eitan Zviely a/k/a comyahoo.com, et al., FA 162060 (Nat. Arb. Forum July 24, 2003) (“The worldwide fame of Complainant’s marks permit a finding that anyone other than Complainant could [not] be commonly known as YAHOO!. . .” and that the respondent could therefore not have shown that it was commonly known by any of the disputed domain names pursuant to Section 4(c)(ii) of the UDRP).
iii. Respondent is Not Making Any Legitimate Noncommercial, or Fair Use of the Domain Name; Indeed, it is Using the Domain Name to Make Commercial Gains by Misleadingly Diverting Consumers to its Infringing Website
As shown in Section 6(a)(ii), Respondent’s use of the Domain Name is neither noncommercial, fair use, nor legitimate. The only content Respondent places on the Infringing Website has been illegally taken wholesale first from Complainant’s website and then from the LA Daily News’ website. Respondent’s purpose in using the Domain Name, in pretending to be a NEWSWEEK website, and in stealing copyrighted content from third parties, is to derive an illicit commercial profit by selling advertising on the Infringing Website.
d. Respondent’s Bad Faith Under Section 4(b) of the UDRP
Respondent’s registration and use of the Domain Name squarely meets the grounds of bad faith outlined in the UDRP, as well as additional grounds of bad faith defined in previous UDRP decisions.
i. Registration of Well-Recognized Names and Marks
Respondent undoubtedly registered the Domain Name in bad faith with actual knowledge of the NEWSWEEK Mark because the NEWSWEEK mark is registered and, indeed, famous in the United States and elsewhere. Given Respondent’s lack of any legitimate interest in the Domain Name, together with the fact that the NEWSWEEK Mark is famous, there is a legal presumption of bad faith. See Nokia Corp. v. Arzanesh Nezhad Hanzali, FA 1271506 (Nat. Arb. Forum Aug. 26, 2009) (finding a legal presumption of bad faith registration was proper where the marks at issue were internationally famous and respondent had no legitimate interest in the marks); see also Victoria’s Secret v. Hardin, FA 96694 (Nat. Arb. Forum Mar. 31, 2001) (finding respondents had either actual or constructive knowledge of internationally famous mark at the time of registration and such knowledge constitutes bad faith). Accordingly, there can be no question as to Respondent’s bad-faith registration and use of the Domain Name.
ii. Attempt to Attract for Commercial Gain by Creating Likelihood of Confusion
Respondent’s registration and use of the Domain Name constitutes bad faith under UDRP Section 4(b)(iv) because Respondent used the Domain Name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the NEWSWEEK Mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website. Indeed, even when a respondent has only created a welcome or placeholder website, there can be an attempt to attract for commercial gain by creating a likelihood of confusion. See Honeywell Int’l Inc. v. Celeris Controls, FA 1351938 (Nat. Arb. Forum Nov. 15, 2010) (finding domain that resolved to a ‘coming soon’ message was an inactive website and evidence of bad faith registration and use because the domain drew customers away from the complainant); Integrity Systems, Inc. v Integrity Systems, FA 95498 (Nat. Arb. Forum Oct. 16, 2000) (finding non-use of a domain aside from a ‘coming soon’ message to be consistent with bad faith registration and use).
But here Respondent is clearly engaged in intentionally attracting, for commercial gain, Internet users to its website by creating a likelihood of confusion with the NEWSWEEK Mark. As set forth in Section 6(a)(ii) above, Respondent, through an affiliated company named “Internet Holdings, Inc.,” has, in flagrant bad faith, attempted to profit through the Domain Name by selling advertising on the Infringing Website. Sometime before February 21, 2012, a global Internet media company that was a potential advertiser with Complainant placed advertisements on the Infringing Website because it was confused as to the source and ownership of the Domain Name and the “Newsweek Today” website. Because of Respondent’s use of the Domain Name and the NEWSWEEK Mark, this company incorrectly thought that the Infringing Website was owned and operated by Complainant. During the first few days the advertisement was posted on the Infringing Website, this company noticed an excessive number of clickthroughs for which it was being charged. It thereupon contacted Complainant only to discover that Complainant had nothing to do with the Infringing Website or the Domain Name.
As set forth in Section 6(a)(ii) above, without permission, as part of its commercial scheme, Respondent had placed copyrighted content from Complainant’s website on the Infringing Website. In response to the cease-and-desist letter from Complainant’s attorneys, as of February 23, 2012, Respondent stopped placing content from Complainant’s website on the Infringing Website. However, Respondent has replaced Complainant’s copyrighted content with copyrighted content from the LA Daily News. Thus, Respondent continues to use the newsweektoday.com Domain Name, the “Newsweek Today” name and NEWSWEEK logo to attract, for commercial gain, Internet users to the Infringing Website by creating a likelihood of confusion as to its source, sponsorship, affiliation or endorsement.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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."
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.
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.”).
Complainant claims it established its rights in the NEWSWEEK mark by registering it with the USPTO (e.g., Reg. No. 603,656 registered March 22, 1955). The Panel concludes Complainant has established sufficient rights in the NEWSWEEK mark under Policy ¶4(a)(i) by providing evidence of the mark’s registration. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶4(a)(i)).
Complainant also claims Respondent’s <newsweektoday.com> domain name is confusingly similar to its NEWSWEEK mark. The disputed domain name includes the entire mark, while merely adding the generic top-level domain (“gTLD”) “.com” and the generic term “today.” The changes made by Respondent to form the disputed domain name fail to sufficiently differentiate the disputed domain name from Complainant’s NEWSWEEK mark, thereby making them confusingly similar under Policy ¶4(a)(i). See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii), and then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). Complainant has met its burden here.
Complainant claims Respondent is not commonly known by the disputed domain name. The WHOIS information identifies the registrant of the disputed domain name as “Online News Interactive, LLC.” Therefore, the Panel concludes Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii). See Qwest Commc’ns Int’l, Inc. v. Qwest Networking, FA 238004 (Nat. Arb. Forum Apr. 8, 2004) (“The Panel determines that, because of the fame of Complainant’s mark, Respondent does not have rights or legitimate interests in the <qwestcommunications.net> domain name, despite the presence of the word ‘qwest’ in the domain name registration WHOIS information.”); see also Starwood Hotels & Resorts Worldwide, Inc. v. SRW Hotels Worldwide, FA 214416 (Nat. Arb. Forum Jan. 12, 2004) (“Though Respondent’s WHOIS information lists Respondent as ‘SRW Hotels Worldwide,’ part of which constitutes the disputed domain name, there is no evidence before the Panel that Respondent was actually commonly known by that name.”).
Complainant claims Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name resolved to a website offering content copied from Complainant’s own website prior to Complainant’s delivery of a cease-and-desist letter to Respondent. The Panel finds Respondent was attempting to pass itself off as Complainant, especially since one advertiser bought advertising space on <newsweektoday.com> thinking it was Complaint’s web site. Therefore, Respondent was not making 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 Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
After Respondent received a cease and desist letter, Respondent changed the content on the website to mimic the LA Times (which competes with Complainant). Therefore, the Panel finds Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶4(c)(i) and Policy ¶4(c)(iii), respectively. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant argues Respondent is attempting to gain commercially from the disputed domain name. The disputed domain name initially resolved to a copy of Complainant’s website prior to the receipt of a cease-and-desist letter. After receipt of the cease and desist letter, web site mirrors the LA Times web site, a competing news outlet. Complainant argues the website to which the disputed domain name resolves includes advertising on both sidebars and in banner format. Complainant claims Respondent generates revenue by selling the advertising space available. Thus, the Panel concludes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶4(b)(iv). See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Complainant also contends, in light of the fame and notoriety of Complainant's NEWSWEEK mark, Respondent had actual knowledge of its rights in the mark when it registered the <newsweektoday.com> domain name. The Panel finds Respondent had actual knowledge of Complainant’s rights in the NEWSWEEK mark because of its notoriety, which is further evidence of bad faith registration and use under Policy ¶4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered that the <newsweektoday.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, May 11, 2012
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