McClatchy U.S.A., Inc. v. G. Marks
Claim Number: FA1309001520259
Complainant is McClatchy U.S.A., Inc. (“Complainant”), represented by Nate Garhart of Cobalt, LLP, California, USA. Respondent is G. Marks (“Respondent”), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <heraldmediagroup.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.
James Bridgeman as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 18, 2013; the National Arbitration Forum received payment on September 23, 2013.
On September 19, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <heraldmediagroup.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 September 25, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 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@heraldmediagroup.com. Also on September 25, 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.
A timely Response was received and determined to be complete on October 15, 2013.
On October 18, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James Bridgeman 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant relies on the trademark registrations listed below and common law rights in claimed goodwill acquired by use of trademarks incorporating the word “herald” for more than a century in association with its newspaper business. Complainant’s publications have a substantial readership and in Charlotte, North Carolina alone, which is the designated marketing area in which Respondent resides, Complainant’s titles incorporating the word “HERALD” have a circulation of over 234,000 readers.
Complainant claims that the disputed domain name <heraldmediagroup.com> is confusingly similar to the trademarks in which Complainant has rights and is likely to confuse consumers into believing that the website to which it resolves is somehow sponsored by or related to Complainant. Complainant further submits that the disputed domain name incorporates Complainant’s marks and that the addition of the generic terms, “media” and “group” do not render the domain name distinguishable from the trademark. See Harrods Limited v. Peter Pierre, WIPO D2001 - 045 6 (confusing similarity with HARRODS mark was inevitable where the respondent registered harrodsdepartmentstores.com and harrodstorescom); Dr. Ing. H.c.F. Porsche AG v. Vasily Terkin, WIPO D2003-0888 (descriptive component “autoparts” added to complainant’s trademark PORSCHE adds to the confusion in the domain name Porsche-autoparts.com).
Complainant submits that Respondent has no rights or legitimate interest in the disputed domain name. On information and belief, Respondent registered the disputed domain name <heraldmediagroup.com> on or about May 3, 2013. The domain name registration was made long after Complainant first began using the HERALD trademark. Furthermore, on information and belief, Respondent has no United States registered trademark or service mark and no trademark or service mark application or registration anywhere in the world for any mark including the term HERALD.
Complainant argues that Respondent is not presently affiliated with Complainant, nor has he been licensed or permitted to use Complainant’s marks, nor any domain name incorporating these marks. However, Complainant asserts that not coincidentally, Respondent was formerly employed by Complainant from January 30, 2012 through July 22, 2013 and that he registered the disputed domain name in his own name without the consent of Complainant during his period of employment. Complainant submits that Respondent thereby misappropriated the resources, financial and otherwise, of Complainant being his employer at the time.
Moreover, Complainant asserts that Respondent has made no legitimate use of the disputed domain name. The disputed domain name currently points to Complainant’s own site. While it is not clear what benefit Respondent is gaining from the ownership of the domain name, it is clear that Respondent has no legitimate use of his own.
Complainant submits that Respondent’s registration of the disputed domain name <heraldmediagroup.com> was made in bad faith because he intentionally registered the domain name in his own name rather than that of his then employer in an effort to obtain and use company property for his own benefit. Moreover, Complainant alleges that the registration fees for the disputed domain name were paid by Complainant.
Complainant asserts that there is no scenario under which Respondent’s registration of the disputed domain name in his own name could be appropriate.
In the circumstances Respondent’s refusal to transfer the disputed domain name to Complainant is evidence of bad faith use because Respondent is thus necessarily preventing Complainant, the trademark owner, from reflecting its rights in a corresponding domain name.
Although the disputed domain name currently points to one of Complainant’s own sites and has not been used by Respondent for his own purposes, past cases have noted the word "use" in this context does not require a positive act on the part of the Respondent; passively holding a domain name can constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) ("[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith"); Alitalia-Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the Respondent made no use of the domain name in question and there are no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose); Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (same). In this case, the Respondent has made no use of the Disputed Domain Name(s) in question. See also DCI S.A. v. Link Commercial Corp., D2000- 1 23 2 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of Paragraph 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (NAF Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).
Complainant submits that this is an example in a pattern of conduct undertaken by Respondent. Specifically, Respondent also previously registered the Facebook page located at www.facebook.com/rockhilldealsaver, which incorporated another of Complainant’s trademarks (DEAL SAVER, United States Patent and Trademark Office Reg. No. 4,074,031). Facebook terminated the page after Complainant notified it of Respondent’s unauthorized registration thereof. Considering the unique surrounding circumstances—namely, Respondent’s former status as Complainant’s employee—Respondent’s activities constitute bad faith registration and use of the <heraldmediagroup.com> domain name.
B. Respondent
Respondent submits that whereas Complainant offers sixteen examples of trademarks incorporating the “disputed word” HERALD, most are augmented with additional elements such as geographically based modifiers which should be considered inseparable when making the comparison with the disputed domain name.
The word “Herald” is frequently used as the name for newspapers. Although Complainant relies on only sixteen examples of trademarks which contain the disputed word HERALD, USPTO’s Trademark Electronic Search System yields sixty-eight records related to live trademarks which also make use of the disputed word. If the focus is put only the word “Herald”, many of these third party trademark registrations relate to services which are similar in composition, and geographical proximity to the Complainant’s named properties and thereby present a far greater chance of being confusingly similar than the domain name in dispute. . According to a 2008 article on the website to which the domain name <mediabistro.com> resolves, the word “HERALD” Is the fourth most common name component for an American newspaper, preceded only by NEWS, DAILY and TIMES.
Respondent concedes that Complainants' mark MIAMI HERALD MEDIA COMPANY H is closest in similarity to the disputed domain name but argues the logic of Complainant’s case is flawed because it allowed the trademark for MIAMI HERALD MEDIA COMPANY to lapse while maintaining registration of the domain name <miamiheraldmediacompany.com>. Currently the domain name <miamiheraldmediacompanyh.com> is available for purchase. Clearly this demonstrates an inconsistency in Complainant’s interpretation of logical practices and serves to show their goals in these proceedings as selective persecution of the Respondent. [For clarification, this Panel notes that Respondent has furnished a search report that shows that the trademark serial number 78754470 MIAMI HERALD MEDIA COMPANY shown as having “dead” status, however, for reasons given below, this Panel deems the status of this particular registration not to be relevant to the outcome of these administrative proceedings ].
Respondent submits that he has rights and a legitimate interest in the use of the word “herald” in the disputed domain name. The word “HERALD” is not the creation of the Complainant, but instead a common word with a rich etymological history. The word can mean “an official at a tournament of arms with duties including the making of announcements and the marshalling of combatants”, “an officer with the status of ambassador acting as official messenger between leaders especially in war”; an “officer of arms”, an “official crier or messenger”, “one that precedes or foreshadows”, “one that conveys news or proclaims”, “one who actively promotes or advocates”. Respondent claims that he has acted in all of the listed capacities on regular occasions during sales work, public relations efforts, in the pursuit of futurist philosophy or in activities related to military service or involving simulated warfare. Through these actions and activities the Respondent claims fair rights to the disputed word by virtue of experience and ability to be recognized as a herald as it is officially defined.
Furthermore the Respondent submits that he is entitled to use the elements “media” and “group” in the disputed domain name because he is associated with a number of individuals and he is capable of, and does produce many forms of media.
Respondent denies that the disputed domain name was registered or is being used in bad faith. Respondent specifically denies that while he was an employee of Complainant, Respondent registered the disputed domain name in his own name without the consent of Complainant, which required the domain to be registered in its own name rather than that of the employee.
Respondent asserts that members of management of Complainant’s company were aware that he registered the domain name and furthermore that Complainant is incorrect in the assumption that there was any mechanism or policy for domain name acquisition in existence for employees while Respondent was employed by Complainant. Respondent’s duties did not involve access to established channels by which alleged misappropriations could have occurred. Instead, with open communication to local management, sales related online development of various sorts were built during the Respondents' personal time and with personal finances. These efforts, being met with approval by local management continued to develop, and positively impact sales efforts.
Respondent denies that Complainant paid for the registration of the disputed domain name and he states that the disputed domain name was purchased before business hours with a personal debit card. Respondent has never been reimbursed for this expenditure. Local management was fully aware of Respondent’s registration of the disputed domain name and no policy violations were mentioned at any time.
Respondent denies that he has refused to transfer the disputed domain name and states that no reasonable or detectable effort was made by the Complainant in this regard.
Respondent asserts that the original registration of the disputed domain name was with the intention that it be used for a legitimate and faithful purpose appropriate to his position as he understood it at the time and by the actions and attitude of local management. As an advertising salesperson attached to declining medium such as a newspaper. It was made clear by corporate policy that digital advertising was the direction that Complainant needed to move towards.
Respondent outlined how he proposed the disputed domain name could have been profitably utilised by Complainant.
With regard to Complainant’s allegation relating to Respondent’s use of the name of Complainant’s “Dealsaver” program on a Facebook page, Respondent asserts that the Dealsaver program was essentially managed by the Respondent during the span of employment and its so-called "unauthorized" associated social media reach, created solely by Respondent, garnered him a Sales Team Leadership Award.
Respondent asserts that he was an innovative and proactive employee willing to invest personal resources to nurture personal and market success of Complainant. There was no bad faith present, only an individual willingness to go above and beyond the call of duty, spending personal time and funds, which were uncompensated for and ultimately unappreciated, attacked and ruined by actions of the Complainant.
Complainant is a publisher of a number of newspapers that incorporate the word “Herald” in their titles.
Complainant is the owner of a large portfolio of US Federal Trademark registrations, including: USPTO registrations for THE BELLINGHAM HERALD (Reg. No. 2,894,673 registered on October 19, 2004); USPTO registration number 3,249,551 THE BRADENTON HERALD (Reg. No. 3,249,551 registered on June 5, 2007); THE MIAMI HERALD (Reg. No. 1,609,779 registered on August 14, 1990); THE MIAMI HERALD (Stylized) (Reg. No. 1,609,777 registered on August 14, 1990); TRI-CITY HERALD (Reg. No. 2,651,658 registered on November 19, 2002); GOLDEN HERALD AWARDS (Reg. No. 3,250,341 registered on June 12, 2007); LEXINGTON HERALD-LEADER (Stylized) (Reg. No. 1,960,146 registered on March 5, 1996); THE HERALD (Reg. No. 2,801,750 registered on March 5, 1996); THE SUN HERALD (Stylized) (Reg. No. 1,956,151 registered on January 6, 2004); EL NUEVO HERALD (Reg. No. 1,609,778 registered on August 14, 1990); EL NUEVO HERALD (Stylized) (Reg. No. 1,611,233 registered on August 28, 1990); HERALD HUNT (Reg. No. 3,391,108 registered on March 4, 2008); 5 MINUTEHERALD (Reg. No. 3,089,123 registered on May 9, 2006, cancelled ); THE ENQUIRER-HERALD (Reg. No. 3,158,200 registered on October 17, 2006); (Reg. No. LAKEWOOD RANCH HERALD (Reg. No. 3,381,541 registered on February 12, 2008); MIAMI HERALD MEDIA COMPANY H & Design (Reg. No. 3,438,085 registered on July 10, 2007). Copies of the USPTO’s Trademark Electronic Search System records for each of the above registrations are attached as an exhibit to the Complaint.
Respondent was an employee of Complainant during the period from on or about January 30, 2012 through July 22, 2013.
Respondent registered the disputed domain name on May 3, 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.
Complainant has rights in the trademark THE HERALD and other above-listed marks and newspaper titles incorporating the word “herald”. The disputed domain name is a combination of three word elements namely “herald”, “media” and “group”.
Having compared the disputed domain name and Complainant’s trademarks, this Panel finds that the disputed domain name is confusingly similar to Complainant’s THE HERALD mark. The word “herald” is the distinctive and dominant element of the disputed domain name and the additional descriptive elements “media” and “group” do not distinguish the domain name. In fact in the context as the elements are descriptive of Complainant’s business and group of publications, the additional elements contribute to the likelihood of confusion.
This Panel finds therefore that the first element of the test in Policy ¶4(a)(i) has been satisfied by Complainant.
Respondent has admitted that he was an employee of Complainant and that he registered the disputed domain name because it referred to Complainant’s business. In his submissions he claims to have a right and legitimate interest in use of the word “herald” in the disputed domain name because of its dictionary meanings. Giving Respondent the benefit of the doubt, this Panel finds that while such arguments may not be specious, they are certainly not convincing in the context where Respondent was an employee of Complainant-company and admits that he registered the disputed domain name to refer to Complainant’s business.
Respondent does not deny that he was never given permission by Complainant to register the domain name.
This Panel finds therefore that the second element of the test in Policy ¶4(a)(ii) has also been satisfied by Complainant.
This Panel finds that the disputed domain name was registered by Respondent in bad faith. While he was an employee of Complainant, he registered the disputed domain name, which was chosen and registered to intentionally refer to Complainant’s business, without the permission of Complainant.
His decision to register the disputed domain name in his own name and to use his own credit card to pay for the registration indicates that on the balance of probabilities a bad faith intention on his part. It is not possible to decide what his exact intention may have been, but if he had registered the domain name for the benefit of his employer as he claims, he would most probably have taken a different approach, and alerted Complainant to his plan, sought the permission of Complainant to register the domain name and perhaps arrange for payment of the registration fee by Complainant. He would also have registered the domain name in the name of Complainant rather than his own name.
This Panel does not accept Complainant’s argument that Respondent has engaged in passive domain name registration. This Panel finds that Respondent is actually and actively using the disputed domain name to point to Complainant’s website. He is doing so without the license or consent of Complainant in circumstances where he is holding on to the registration in his own name. Under the Policy, each case must be decided on its own individual facts. This panel finds that in the circumstances of the present case by arranging to have the disputed domain name resolve to Complainant’s website, while retaining ownership and control of the domain name is bad faith use under the Policy.
Respondent has succeeded in the third and final element of the test in Policy ¶ 4(a)(ii) and is entitled to the remedy sought in this Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <heraldmediagroup.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman Panelist
Dated: November 1, 2013
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