Guardian News & Media Limited v. D-Max Limited
Claim Number: FA1308001514364
Complainant is Guardian News & Media Limited (“Complainant”), represented by Daniel I. Schloss of Greenberg Traurig, LLP, New York, USA. Respondent is D-Max Limited (“Respondent”), St. Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thegaurdian.com>, registered with Tucows, Inc.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 12, 2013; the National Arbitration Forum received payment on August 12, 2013.
On August 13, 2013, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that <thegaurdian.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 August 15, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 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@thegaurdian.com. Also on August 15, 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 September 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 multiple trademark registrations for THE GUARDIAN in relation to its newspapers and other print publications and online publications, as well as other goods and services. Complainant began publishing a daily newspaper in 1821 under the name “The Manchester Guardian,” which became simply “The Guardian” in 1959. It is currently one of the most popular British national daily newspapers, as well as an international multimedia operation. Complainant provides evidence of trademark registrations for its THE GUARDIAN mark with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA755729 filed May 6, 1999, registered December 18, 2009); with the European Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 1,155,845 registered October 17, 2002); and with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,115,099 filed May 25, 1999, registered March 20, 2012). See Complainant’s Exhibit C. Complainant has used the mark THE GUARDIAN in the United Kingdom since 1959 such that it can claim common law rights back to that date. Complainant owns and operates its flagship website located at <theguardian.com> website.
Respondent registered <thegaurdian.com> domain name on August 23, 2000, and makes use of the website by hosting pay-per-click links at the resolving website. The <thegaurdian.com> domain name is confusingly similar to Complainant’s THE GUARDIAN mark as it employs a common misspelling of the mark, resulting in typosquatting. Respondent’s identity is revealed to be “D-Max Limited,” which demonstrates that Respondent is not commonly known by the domain name. Respondent does not use the disputed domain name in a manner showing a bona fide offering of goods or services or a legitimate noncommercial or fair use, as the domain name is used for nothing more than a website containing links that result in commercial profit to Respondent. Respondent’s bad faith registration and use is shown by its attempt to attract Internet users to its website by creating the likelihood of confusion with Complainant mark in order to generate revenue.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Guardian News & Media Limited which list its address as London, United Kingdom. Complainant owns numerous registrations for the mark, THE GUARDIAN for newspapers, print publications, and online publications as well as related goods and services in numerous countries. Complainant states that it has used its mark continuously in the above manner since at least 1959. Complainant operates online at its flagship website located at <theguardian.com>.
Respondent is D-Max Limited which list its address as Charlestown, Nevis in St.Kitts and Nevis. Respondent’s registrar’s address is listed as Ontario, Canada. Respondent registered <thegaurdian.com> domain name on August 23, 2000. Respondent submitted correspondence stating that it did not wish to contest this Complaint. Respondent stated, “The registrant authorizes the immediate transfer of the domain name to the Complainant.”.
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 rights in the THE GUARDIAN mark, and provides evidence of numerous international trademark registrations to support its claim, including registration with the CIPO (Reg. No. TMA755729 filed May 6, 1999; registered December 18, 2009); the OHIM (Reg. No. 1,155,845 registered October 17, 2002); and the USPTO (Reg. No. 4,115,099, filed May 5, 1999, registered March 20, 2012). Previous panels have stated that a complainant may demonstrate rights in a mark through its various trademark registrations with international government agencies, and further, a complainant need not register its mark in the respondent’s country of residence in order to claim rights under the Policy. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)). The Panel finds that Complainant’s many trademark registrations throughout the world are sufficient to establish its rights in THE GUARDIAN mark under Policy ¶ 4(a)(i), regardless of Respondent’s residence in St. Kitts and Nevis. The Panel finds that Complainant has rights in THE GUARDIAN mark sufficient to satisfy Policy ¶ 4(a)(i).
Complainant asserts that <thegaurdian.com> domain name consists of a common misspelling of THE GUARDIAN mark, resulting in confusing similarity between the two. The Panel notes that the letters “u” and “a” within the mark are transposed in the domain name, and further, the spacing between the two terms of the mark is omitted. The Panel finds that transposing letters and removing spacing from a mark to form the domain name renders the domain name confusingly similar to the mark. 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 do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Wyndham IP Corp. v. LaPorte Holdings, Inc., FA 373545 (Nat. Arb. Forum Jan. 17, 2005) (finding the <wynhdam.com> and <wyandham.com> domain names to be confusingly similar to the complainant’s WYNDHAM mark because the domain names merely transposed letters in the mark). The Panel also notes that the domain name includes the generic top-level domain (“gTLD”) “.com,” but such an inclusion has no impact on an analysis of confusing similarity. 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.”). The Panel finds that <thegaurdian.com> domain name is confusingly similar to Complainant’s THE GUARDIAN mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that 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 does have 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). The Complainant has met this burden.
Complainant claims that Respondent’s identity in the WHOIS information for the disputed domain name was revealed to be “D-Max Limited,” and argues that Respondent is not commonly known by the disputed domain name. Complainant alleges that it has never consented to Respondent’s use of THE GUARDIAN marks and that no relationship exists between the parties that would give rise to any ownership rights by Respondent of the disputed domain name. The panel in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), maintained that a respondent is not commonly known by a domain name in question where the WHOIS information, as well as other information on record, gave no support to a claim that the respondent was commonly known by the disputed domain name, and the respondent could not be commonly known by the domain name where the complainant had not authorized registration of a domain name using the mark. The Panel finds that based on Respondent’s lack of permission to use THE GUARDIAN mark, and the evidence in the WHOIS information showing that Respondent is known by a different name, Respondent cannot be found to be commonly known by <thegaurdian.com> domain name for the purposes of Policy ¶ 4(c)(ii).
Complainant argues that Respondent has established a series of “pay-per-click” links at the resolving websites, which lead website visitors to other websites. Complainant claims that the first link at the top of the resolving website states “Guardian Newspaper,” and the second one says “The Guardian,” both in direct reference to Complainant, and thus Respondent explicitly targets those seeking Complainant’s online content. The Panel notes that the other hyperlinks displayed appear unrelated to Complainant’s business, advertising “Lance Armstrong,” “Academic Success,” and “Best Massage Chair.” See Complainant’s Exhibit D. The Panel finds that Respondent’s website offering visitors hyperlinks to unrelated entities is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain name. See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant alleges that Respondent intends to divert customers from Complainant’s website to its own, in order to make a commercial gain by creating confusion between THE GUARDIAN mark and <thegaurdian.com> domain name. Complainant asserts that it is “plainly apparent” that Respondent’s only purpose in registering the disputed domain name was to generate revenue by diverting web traffic intended for Complainant. The Panel again notes Complainant’s Exhibit D, which displays a screenshot of Respondent’s use of the resolving website, offering visitors an array of hyperlinks which Complainant alleges generate a profit for Respondent. The Panel finds that Respondent demonstrates bad faith registration and use under Policy ¶ 4(b)(iv) by registering a domain name with the intent to confuse Internet users into believing the domain name is associated with Complainant, and consequently reaping a financial benefit. 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).
Lastly, Complainant argues that Respondent utilizes a frequent misspelling of THE GUARDIAN mark by transposing the letters “u” and “a” within the domain name, and claims that such conduct is a demonstration of bad faith registration. The Panel notes that registering a domain name consisting of a common misspelling of a mark is known as “typosquatting,” and is commonly found to be a result of bad faith. The Panel finds that in the present dispute, <thegaurdian.com> domain name also fails to include the spacing between the words of the mark, which is not generally considered a misspelling of the mark. However, because domain names cannot contain spacing, the Panel finds that the only substantive change to the mark in the domain name is the common misspelling of the word “guardian,” and thus concludes that Respondent registration evidences bad faith pursuant to Policy ¶ 4(a)(iii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that <thegaurdian.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: September 23, 2013
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