Western News&Info, Inc. v. Janice Liburs
Claim Number: FA1305001498460
Complainant is Western News&Info, Inc. (“Complainant”), represented by Charlene L. Minx of Steptoe & Johnson LLP, California, USA. Respondent is Janice Liburs (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <campverdebugle.com>, registered with Domainsouffle.com LLC.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 6, 2013; the National Arbitration Forum received payment on May 6, 2013.
On May 16, 2013, Domainsouffle.com LLC confirmed by e-mail to the National Arbitration Forum that the <campverdebugle.com> domain name is registered with Domainsouffle.com LLC and that Respondent is the current registrant of the name. Domainsouffle.com LLC has verified that Respondent is bound by the Domainsouffle.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 May 16, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 2013 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@campverdebugle.com. Also on May 16, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 12, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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
· Complainant owns the trademark rights to the CAMP VERDE BUGLE, which it has used to operate a newspaper since December 31, 1988, servicing the area around the cities of Cottonwood and Verde Valley in the state of Arizona. Complainant also uses the mark in its website at the <campverdebugleonline.com> domain name. Complainant’s rights are illustrated through its United States Patent & Trademark Office (“USPTO”) trademark registrations for the mark (Reg. No. 3,605,350 registered on April 14, 2009).
· Respondent has registered the <campverdebugle.com> domain name, which takes the entire CAMP VERDE BUGLE mark and tacks on the generic top-level domain (“gTLD”) “.com.” This addition is meaningless and irrelevant under the Policy.
· Respondent is not commonly known by the <campverdebugle.com> domain name. Complainant has not licensed or authorized Respondent to make any use of the CAMP VERDE BUGLE mark in domain names. Respondent cannot hide behind a privacy protection service and expect this service to in some way be a defense against a lack of association with the domain name.
· Respondent uses the <campverdebugle.com> domain name to host a directory website that solicits Internet users to click on links to other websites owned by other newspaper companies, as well as an assortment of other unrelated hyperlinks. Respondent likely generates revenue by hosting these advertisements.
· Respondent’s use of the domain name to host competing hyperlinks is disruptive to Complainant’s business. Potential customers seeking Complainant’s official website are likely to navigate to this website and be redirected to the products and services of Complainant’s own competitors.
· Respondent’s decision to link the <campverdebugle.com> domain name’s hyperlinks to competing companies is evidence that Respondent seeks to attract a commercial gain by creating the likelihood that Internet users will mistakenly believe that these hyperlinked companies are affiliated with, or endorsed by, Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the <campverdebugle.com> domain name was registered on April 11, 2013.
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 that it owns the trademark rights to the CAMP VERDE BUGLE, which it has used to operate a newspaper since December 31, 1988. Complainant also uses the mark in its website at the <campverdebugleonline.com> domain name. Complainant claims that its rights are illustrated through a USPTO trademark registration for the mark (Reg. No. 3,605,350 registered on April 14, 2009). The Panel agrees that Complainant’s USPTO registration is a sufficient showing of Policy ¶ 4(a)(i) rights, regardless of where Respondent truly resides. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (Stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant also argues that Respondent has registered the <campverdebugle.com> domain name, which consists of the entire CAMP VERDE BUGLE mark. The Panel notes that the spacing has been removed from the mark. However, the elimination of spacing is not a relevant alteration under the Policy. 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 did not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Thus, the Panel finds that the <campverdebugle.com> domain name is identical to the CAMP VERDE BUGLE mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent is not commonly known by the <campverdebugle.com> domain name. Complainant claims that it has not licensed or authorized Respondent to make any use of the CAMP VERDE BUGLE mark in domain names. The Panel notes that the WHOIS information lists the registrant as “Janice Liburs Porchesterpartners@gmail.com” and agrees that the record is devoid of any grounds for concluding that Respondent is commonly known as the <campverdebugle.com> domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complainant also argues that Respondent uses the <campverdebugle.com> domain name to host a directory website that solicits Internet users to click on links to other websites owned by competing companies, as well as an assortment of other unrelated hyperlinks. Complainant claims that Respondent likely generates revenue by hosting these advertisements. The Panel notes that the disputed domain name resolves to a website with a variety of hyperlinks to newspaper-related businesses, along with an array of generic hyperlinks. The Panel determines that Respondent has made neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use in the hosting of competing hyperlinks on the domain name’s website. See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees. . . . is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s use of the domain name to host competing hyperlinks is disruptive to Complainant’s business. Complainant argues that potential customers seeking Complainant’s official website are likely to navigate to this website and thus be redirected to the products and services of Complainant’s own competitors. The Panel notes that the <campverdebugle.com> domain name’s hyperlinks are primarily focused on the newspaper industry in particular. The Panel agrees that the use of an identical domain name to shuttle Internet users through hyperlinks to Complainant’s competitors is an example of Policy ¶ 4(b)(iii) bad faith registration and use through commercial disruption. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”).
Complainant also argues that Respondent’s action in linking the <campverdebugle.com> domain name’s hyperlinks to competing companies is evidence that Respondent seeks to attract for commercial gain by creating the likelihood that Internet users will mistakenly believe that these hyperlinked companies are affiliated with or endorsed by Complainant. The Panel finds that Complainant’s use of the <campverdebugle.com> domain name to generate advertising revenue through the confusion of Internet users as to Complainant’s endorsement of competing hyperlinks is evidence of Policy ¶ 4(b)(iv) bad faith use and registration. See BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”).
Further, Respondent’s incorporation of the entirety of Complainant’s mark in its domain name is evidence that Respondent knew of Complainant’s mark at the time of registration of the domain and supports a finding of bad faith registration.
Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <campverdebugle.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: June 19, 2013
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