McClatchy Management Services, Inc. v.
Please DON'T Kill Your Baby a/k/a William and Mark Purdy II, Willaim S. Purdy
Claim
Number: FA0304000153541
Complainant is
McClatchy Management Services, Inc., Sacramento, CA (“Complainant”)
represented by Ann Dunn Wessberg, of Faegre & Benson LLP.
Respondent is Please DON'T Kill Your Baby a/k/a William and Mark
Purdy II, William S. Purdy of South St. Paul, MN (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <startribunes.com> and <startribunesays.com>,
registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com
and <startribuneknows.com>, registered with Go Daddy Software,
Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on April 1, 2003; the Forum received a hard copy of the
Complaint on April 2, 2003.
On
April 2, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.Com, confirmed by
e-mail to the Forum that the domain names <startribunes.com> and <startribunesays.com>
are registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com, and that
Respondent is the current registrant of the names. On April 2, 2003, Go Daddy
Software, Inc. confirmed by e-mail to the Forum that the domain name
<startribuneknows.com> is registered with Go Daddy Software,
Inc., and that Respondent is the current registrant of the name. Intercosmos
Media Group, Inc. d/b/a Directnic.Com and Go Daddy Software, Inc. verified that
Respondent is bound by their respective registration agreements and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
April 8, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 28, 2003 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@startribunes.com, postmaster@startribunesays.com, postmaster@startribuneknows.com
by e-mail.
Having
received no formal Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
May 14, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names registered by
Respondent, <startribunes.com>, <startribunesays.com>
and <startribuneknows.com>, are confusingly similar to
Complainant’s STAR TRIBUNE mark.
2. Respondent has no rights or legitimate
interests in the <startribunes.com>, <startribunesays.com>
and <startribuneknows.com> domain names.
3. Respondent registered and used the <startribunes.com>,
<startribunesays.com> and <startribuneknows.com>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, McClatchy
Management Services, Inc., owns the STAR TRIBUNE mark (U.S. Reg. No.
1,495,070). This mark was registered on the Principal Register of the U.S.
Patent and Trademark Office on July 5, 1988. Complainant uses the STAR TRIBUNE
mark in connection with a daily newspaper for the Minneapolis-St. Paul area. In
addition to its printed edition, Complainant provides news-related services
online at the <startribune.com> domain name, and holds the
STARTRIBUNE.COM mark (U.S. Reg. No. 2,249,689, registered on the Principal
Register on June 1, 1999).
Respondent,
Please DON'T Kill Your Baby a/k/a William and Mark Purdy II, William S. Purdy,
registered the <startribunes.com> and <startribunesays.com>
domain names on July 6, 2002. After receiving a cease-and-desist letter
from Complainant, Respondent registered the <startribuneknows.com>
domain name on July 14, 2002. Respondent is not licensed or authorized to use
Complainant’s STAR TRIBUNE mark for any purpose.
Upon reaching
the <startribunes.com> domain name, Internet users are shown
content from the <abortioncams.com> website, which includes highly
graphic images of dismembered, aborted fetuses. Similar content is posted for
users reaching the <startribuneknows.com> domain name, although
this content comes from the <abortionismurder.org> domain name. Upon
reaching the <startribunesays.com> domain name, Internet users are
subjected to content from the <babysave.com> domain name, which displays
anti-abortion links.
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."
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 will
draw such inferences as the Panel considers appropriate pursuant to paragraph
14(b) of the Rules.
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
established in this proceeding that it has rights in the STAR TRIBUNE mark
through registration of the mark on the Principal Register of the U.S. Patent
and Trademark Office, as well as through use of the mark in commerce.
Respondent’s <startribunes.com> domain name is confusingly similar to Complainant’s STAR TRIBUNE mark. It is well
established that the elimination of the space between the words in a mark does
not create a notable distinction between a mark and a domain name. Likewise,
Respondent’s pluralization of Complainant’s mark is inconsequential for
purposes of a Policy ¶ 4(a)(i) analysis. See Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000)
(finding that “the addition of an ‘s’ to the end of Complainant’s mark, ‘Cream
Pie’ does not prevent the likelihood of confusion caused by the use of the
remaining identical mark. The domain name <creampies.com> is similar in
sound, appearance, and connotation”).
Respondent’s <startribunesays.com> and <startribuneknows.com> domain names are also confusingly similar to
Complainant’s STAR TRIBUNE mark. Both of these marks entirely incorporate
Complainant’s mark, with the addition of a generic word that implies that
Complainant endorses or somehow expresses itself through the domain name. The
addition of these words fosters confusing similarity between the domain names
and the mark. See Brambles
Industries Ltd. v. Geelong Car Co. Pty. Ltd., trading as Geelong City Motors,
D2000-1153 (WIPO Oct. 17, 2000) (finding the domain name
<bramblesequipment.com> confusingly similar because the combination of
the two words "brambles" and "equipment" in the domain name
implies an association with Complainant’s business); see also Westfield Corp., Inc. v. Hobbs,
D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com>
domain name confusingly similar because the WESTFIELD mark was the dominant
element).
Accordingly, the
Panel finds that the <startribunes.com>, <startribunesays.com>
and <startribuneknows.com> domain
names are confusingly similar to Complainant’s STAR TRIBUNE mark under Policy ¶
4(a)(i).
Complainant
carries the initial burden of demonstrating that Respondent has no rights or
legitimate interests in the disputed domain name. Complainant is able to meet
this burden by showing that Respondent would not be able to rely upon the
examples of circumstances demonstrating rights or legitimate interests in a
domain name listed in Policy ¶¶ 4(c)(i)-(iii). In making such a showing,
Complainant establishes a prima facie case against Respondent, shifting
the burden to Respondent. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that
Respondent has no rights or legitimate interests with respect to the domain,
the burden shifts to Respondent to provide credible evidence that substantiates
its claim of rights and legitimate interests in the domain name); see also
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding where a Complainant has asserted that Respondent has no rights or
legitimate interests with respect to the domain name it is incumbent on
Respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”).
Respondent uses each of the disputed domain names to redirect Internet
users to content from anti-abortion websites. Two of the disputed domain names
post graphic images of aborted fetuses while the other lists a series of links
to other anti-abortion web pages. In each instance, Respondent entirely
appropriates Complainant’s STAR TRIBUNE mark, and whether Respondent is
actively tarnishing that mark with graphic imagery or simply taking advantage
of the goodwill surrounding the mark to express its viewpoint, Respondent is
not making a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) or a legitimate noncommercial or fair use of the domain names pursuant
to Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Tencent Comm.
Corp., FA 93668 (Nat.
Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal
to suck surfers into a site sponsored by Respondent hardly seems legitimate”); see
also E. & J. Gallo Winery v.
Hanna Law Firm, D2000-0615 (WIPO Aug. 3, 2000) (finding that establishing a
legitimate free speech/complaint site does not give rights to use a famous mark
in its entirety).
No evidence before the Panel refutes Complainant’s allegation that
Respondent is not “commonly known by” the disputed domain names or any
variation of Complainant’s STAR TRIBUNE mark. Thus, Policy ¶ 4(c)(ii) does not
apply to Respondent. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb.
Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information
implies that Respondent is ‘commonly known by’ the disputed domain name” as one
factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail").
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<startribunes.com>, <startribunesays.com> and <startribuneknows.com>
domain names under Policy ¶
4(a)(ii).
In determining whether a domain name has been registered and used in
bad faith, the Panel may look to Policy ¶ 4(b) for guidance. However, the Panel
may also look to the totality of the circumstances surrounding Respondent’s
registration and use of any disputed domain names in reaching its conclusion
under Policy ¶ 4(a)(iii). See Twentieth Century Fox Film Corp. v.
Risser, FA 93761 (Nat.
Arb. Forum May 18, 2000) (finding that in determining if a domain name has been
registered in bad faith, the Panel must look at the “totality of circumstances”);
see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be
illustrative, rather than exclusive”).
In the present
dispute, the Panel finds that the evidence supports an inferrence that
Respondent registered the <startribunes.com> and <startribunesays.com>
domain names with actual knowledge of Complainant’s rights in the Star Tribune
mark. Respondent is domiciled in the Minneapolis-St. Paul area and it is highly
unlikely that Respondent chose to use Complainant’s mark without any knowledge
of that mark. Furthermore, Respondent’s registration of the <startribuneknows.com>
domain name came
after it had received a cease-and-desist letter from Complainant, which establishes
to a legal certainty that Respondent knew it was infringing on Complainant’s
mark with respect to this domain name. By intentionally taking advantage of the
goodwill surrounding Complainant’s mark to further its own political agenda,
Respondent registered the disputed domain names in bad faith. Respondent is
using each of the domain names in a manner that tarnishes Complainant’s mark
and gives the impression to Internet users that Complainant supports or
condones the content at the disputed domain names. This amounts to bad faith
use and registration of each of the disputed domain names. See Entrepreneur
Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that
"[w]here an alleged infringer chooses a mark he knows to be similar to
another, one can infer an intent to confuse"); see also Reuters Ltd. v. Teletrust IPR Ltd.,
D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith
where the Respondent was aware of Complainant’s famous mark when registering the
domain name as well as aware of the deception and confusion that would
inevitably follow if he used the domain names); see also Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it
is “inconceivable that the respondent could make any active use of the disputed
domain names without creating a false impression of association with the
Complainant”).
The Panel thus
finds that Respondent registered and used the <startribunes.com>, <startribunesays.com>
and <startribuneknows.com> domain
names in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <startribunes.com>, <startribunesays.com>
and <startribuneknows.com> domain names be TRANSFERRED from
Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 28, 2003.
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