Guardian News & Media Limited v. PPA Media Services / Ryan G Foo
Claim Number: FA1308001514378
Complainant is Guardian News & Media Limited (“Complainant”), represented by Daniel I Schloss of Greenberg Traurig, LLP, New York, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thegardian.com>, registered with Internet.bs 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.
Sandra J. Franklin 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 20, 2013, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <thegardian.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs 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 August 20, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 9, 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@thegardian.com. Also on August 20, 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 17, 2013, 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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <thegardian.com> domain name is identical to Complainant’s THE GUARDIAN mark.
2. Respondent does not have any rights or legitimate interests in the <thegardian.com> domain name.
3. Respondent registered and uses the <thegardian.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is the owner of a registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,115,099, filed May 25, 1999, registered March 20, 2012) and the Industrial Property Office of New Zealand (“IPONZ”) (Reg. No. 308,822 registered August 18, 2000), as well as registrations in other jurisdictions. Complainant uses the mark in connection with newspapers and other publications.
Respondent registered the <thegardian.com> domain name on July 19, 2001, and uses it to resolve to a pay-per-click website on a parked page displaying third-party links to products and services.
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.”).
The Panel notes that the registration date of the <thegardian.com> domain name predates Complainant’s USPTO trademark registration date but not the filing date. Previous panels have found that a complainant has rights in a mark under Policy ¶ 4(a)(i) dating back to the trademark filing date. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). The disputed domain name registration date does not predate the IPONZ trademark registration. However, previous panels have also found that a Complainant need not own a trademark registration in Respondent’s jurisdiction to have valid rights under Policy ¶ 4(a)(i). See 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 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)). Thus, the Panel finds that Complainant has rights in its THE GUARDIAN mark pursuant to Policy ¶ 4(a)(i) based on its registration with the USPTO.
Respondent’s <thegardian.com> domain name incorporates Complainant’s mark and simply removes the spaces and the letter “u,” and adds the generic top-level domain (“gTLD”) “.com.” A domain name that differs from a trademark by only one letter is not considered distinct from that trademark. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). The addition of a gTLD and the deletion of a space also do not establish distinctiveness under Policy ¶ 4(a)(i). 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 and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s <thegardian.com> domain name is confusingly similar to Complainant’s THE GUARDIAN mark.
The Panel finds that Complainant has satisifed Policy ¶ 4(a)(i).
Omce Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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); 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 asserts that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its mark in any way. The WHOIS record lists “PPA Media Services / Ryan G Foo” as the registrant of the <thegardian.com> domain name. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as a whole in determining whether the respondent is commonly known by the disputed domain name. 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). Therefore, because Respondent was not authorized by Complainant to use its THE GUARDIAN mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <thegardian.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant claims Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <thegardian.com> domain name. Complainant states that Respondent is operating a pay-per-click website on a parked page displaying third-party links to products and services. Past panels have found that such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). The Panel similarly finds that Respondent’s use of the <thegardian.com> domain name to operate a pay-per-click website on a parked page displaying third-party links does not constitute 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).
The Panel finds that Complainant has satisifed Policy ¶ 4(a)(ii).
Respondent uses the disputed domain name to resolve to a parked website featuring third-party pay-per-click links. Complainant asserts that Respondent is intentionally attempting to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s mark. Past panels have held that registering and using a confusingly similar domain name for such use constitutes bad faith under Policy ¶ 4(b)(iv). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Thus, the Panel finds that Respondent’s use of the <thegardian.com> domain name to operate a pay-per-click website on a parked page displaying third-party links constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
The Panel finds that Complainant has satisifed 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 <thegardian.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 23, 2013
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