NewsNow Publishing Limited v. Adam Corelli
Claim Number: FA1408001575940
Complainant is NewsNow Publishing Limited (“Complainant”), represented by Ed Baden-Powell of Michael Simkins LLP, United Kingdom. Respondent is Adam Corelli (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newsnow.com>, registered with Uniregistrar Corp.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Carolyn M. Johnson, James A. Carmody and Dennis A. Foster (Chair) as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 20, 2014; the National Arbitration Forum received payment on August 20, 2014.
On August 20, 2014, Uniregistrar Corp confirmed by e-mail to the National Arbitration Forum that the <newsnow.com> domain name is registered with Uniregistrar Corp and that Respondent is the current registrant of the name. Uniregistrar Corp has verified that Respondent is bound by the Uniregistrar 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 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 2014 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@newsnow.com. Also on August 21, 2014, 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 September 10, 2014.
On September 15, 2014, the Forum received an Additional Submission from Complainant, and, on September 22, 2014, the Forum received an Additional Submission from Respondent. The Panel finds that both submissions were in compliance with Supplemental Rule 7 and will consider both in rendering the decision below.
On September 17, 2014, pursuant to Respondent's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Carolyn M. Johnson, James A. Carmody and Dennis A. Foster (Chair) as Panelists.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
- Complainant began providing Internet news services to the public as early as September 27, 1997 through its various domain names, <newsnow.co.uk> (registered April 29, 1997), <newsnow.org> (created July 6, 1998) and <newsnow.net> (created July6, 1988). Since then, Complainant's operations have gained a considerable reputation as an online news portal, as exemplified by the tens of millions of unique visitors to Complainant's websites monthly.
- Complainant obtained a registration for the NEWSNOW service mark from the United States Patent and Trademark Office ("USPTO") in 2012, based on a filing initiated in 2000.
- Other than inclusion of a top-level domain, the disputed domain name, <newsnow.com>, is identical to Complainant's NEWSNOW mark. This engenders confusion, so that advertisers and other Internet users often mistakenly refer to Complainant's website as the disputed domain name.
- Respondent has no rights or legitimate interests in the disputed domain name. Though occasionally referring to the launch of a service, Respondent has never used the disputed domain name for anything other than hyperlinks to third-party websites or to offer the disputed name itself for sale at prices ranging from $118,000 to $300,000. As such, the disputed domain name has not been used in connection with a bona fide offering of goods or services or in a noncommercial or fair use manner.
- Respondent has registered and is using the disputed domain name in bad faith, as Respondent's primary intent is to sell the disputed domain name for an amount far in excess of its out-of-pocket costs related to the name.
B. Respondent
- Respondent’s registration of the disputed domain name predates Complainant’s alleged first-use date of the NEWSNOW mark. Also, Complainant presents no evidence of common law service mark rights that might have existed prior to Complainant's USPTO registration for that mark in 2012. Moreover, the language in that registration does not provide definitive evidence of said first-use date.
- The generic nature of the term, news now, was undoubtedly the reason that Complainant's application for its USPTO registration was so protracted and explains why Complainant failed to register its mark in its home country, the United Kingdom.
- Complainant's registration of other domain names that include the "news now" term does not confer upon Complainant trademark rights that might affect another's registration of the disputed domain name. Also, Complainant obtained the <newsnow.net> domain name only because the original registrant, Respondent, allowed his registration effort to lapse in favor of Complainant.
- Respondent is a Canadian journalist who, since the mid-1980's, has written for and been published by many noteworthy publications in Canada, the United States and the United Kingdom. Respondent registered the disputed domain name because the terms, news and now, relate directly to the publication of news and to his career as a freelance journalist.
- Respondent's initial plans to develop a website for the disputed domain name were interrupted in 2000 by his agreement to sell the name to Complainant for £30,000. Following Complainant's failure to pay and breach of that agreement, Respondent has used the domain name in association with a directory of news sites, and paid advertising links, relating to the descriptive meaning of the phrase, “news now.”
- Under the policy, bad faith registration of a domain name must be aimed specifically at a complainant and, since Complainant was nonexistent at the time of registration, Respondent could not have registered the disputed domain name in bad faith. Moreover, Respondent's offer to sell the disputed domain for various prices at various times is no indication of bad faith, as Complainant had earlier entered into an agreement to buy the name based on Respondent's senior rights in that name.
- Because Complainant has allowed Respondent to own and use the disputed domain name for seventeen years without challenge, the doctrine of laches should apply to preclude a finding in Complainant’s favor.
C. Complainant's Additional Submission
- Complainant is the successor-in-title to the entity that registered <newsnow.co.uk> and started its online news endeavors at the beginning of August, 1997, prior to Respondent's registration of the disputed domain name.
- Complainant's unregistered rights at common law in the NEWSNOW mark arose upon the first use of the mark in August, 1997. The delay in Complainant's obtaining a USPTO registration for the mark resulted not from the generic nature of the mark, but from possible confusion in connection with another pending application before the USPTO.
- Respondent provides no evidence that it granted Complainant access to the <newsnow.net> domain name, and Complainant disputes that such a "favor" ever occurred.
- In registering the disputed domain name, Respondent was surely aware that <newsnow.co.uk> has been registered previously and was being used for business purposes.
- Despite Respondent's contention that he is a journalist, the disputed domain name has never been used to post his work in this vein or to offer news in general. Instead, Respondent's website has always offered only hyperlinks to third party websites. It is doubtful that such an under-marketed website could generate advertising fees sufficient to justify the asking price for the disputed domain name as posted by Respondent.
- Complainant never concluded an agreement to buy the disputed domain name from Respondent. Complainant's offer to buy the disputed domain name failed to reach agreement because Complainant did not believe that Respondent would accept an appropriate sale structure relating to transfer and payment.
- The parameters of bad faith registration of a domain name are not limited to violating the rights of a specific rights holder, but may include opportunistic behavior designed to deprive parties, even if unknown, of their rights.
- Respondent's offer to sell the disputed domain name to Complainant on January 5, 1998, only a few months after registration of the name, is further evidence of Respondent's bad faith. Moreover, as noted in a prior UDRP decision against Respondent, he had a propensity to register domain names in the 1990's for sale to owners of corresponding trademarks or service marks for sums far beyond out-of-pocket costs.
- The equitable doctrine of laches does not pertain to Policy cases.
D. Respondent's Additional Submission
- Complainant has failed to submit evidence to support its claim to have gained service mark rights in any enterprise by virtue of its acquisition of the <newsnow.co.uk> domain name. Moreover, records indicate that Complainant did not begin meaningful operations -- through use of such domain name -- before 2003.
- Complainant did not establish common law rights in NEWSNOW prior to registration of the disputed domain name.
- Complainant's contention that Respondent's use of the disputed domain name for links to third-party news-related websites is not "substantial" is not relevant when the Policy standard for no legitimate interests is effectively "no" use. Moreover, Respondent's plans for more extensive use of the name were interrupted by his negotiations with Complainant for purchase of the name.
- Complainant has cited two prior proceedings brought against Respondent that have no bearing on this case and in which Respondent was ultimately exonerated of any wrongdoing.
Based in the United Kingdom, Complainant is a company that delivers news services online through its domain names, including <newsnow.co.uk>. It started such services at the beginning of August, 1997 and registered its NEWSNOW service mark with the USPTO (Reg. No. 4,097,422; registered Feb. 14, 2012).
Respondent is the owner of the disputed domain name, <newsnow.com> which was registered on August 10, 1997.
Beginning in January, 1998, the parties engaged in lengthy email correspondence concerning the possible sale of the name to Complainant. Following the breakdown in those communications in 2000, the disputed domain name was connected for years to Respondent's websites that have presented hyper-links to news-related third-party websites. Also, during some periods, Respondent placed upon his websites offers to sell the disputed domain name for various amounts in excess of $100,000.
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.
Preliminary Issue: Dispute Outside the Scope of the UDRP
The Panel observes that the disputed domain name, <newsnow.com>, was registered on August 10, 1997, which precedes the adoption of the Policy. Moreover, the Panel notes that both parties have referenced evidence (Respondent Annex L) that indicates that they engaged in email correspondence as early as January 5, 1998 -- again before implementation of the UDRP -- concerning transfer of the name from Respondent to Complainant.
At this point, the recollections of the parties diverge. Respondent contends that by 2000, after lengthy correspondence, the parties had entered into a binding agreement in which Complainant agreed to purchase the disputed domain name from Respondent for £30,000. On the other hand, Complainant claims that such an agreement was never consummated. Respondent insists that Complainant is in breach of contract; Complainant avers that no such contract ever existed. The Panel believes that the foregoing describes a contractual dispute between the parties that arose largely before the Policy came into play and that lies beyond the purview of this Policy proceeding.
In the Panel's view, the Policy is not designed to adjudicate relatively complex contractual disputes. On the contrary, the Policy is designed primarily to address the practice of cyber-squatting, where entities deliberately infringe upon the established rights of domain name owners through the bad faith registration and use of identical or confusingly similar domain names. See Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007) (“The Complaint before us describes what appears to be a common-form claim of breach of contract or breach of fiduciary duty. It is not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the Policy was designed to address.”); see also Jason Crouch and Virginia McNeill v. Clement Stein, D2005-1201 (WIPO Jan. 31, 2006) (“The Policy was adopted to deal as is with the problem of cyber-squatting, the registration of domain names consisting of, including, or confusingly similar to marks belonging to another for the purpose of profiting from the goodwill associated with said marks.”). Therefore, the Policy serves not as a means to resolve all disputes involving domain names, but is narrowly tailored to address only those cases that can be decided following a relatively brief examination of limited evidence. See Jason Crouch and Virginia McNeill, supra (“The questions under the Policy to be addressed by the Panel are relatively simple and straightforward. The proceeding is a summary one, without the benefit of confrontation of the witnesses, or even of a hearing.”).
Accordingly, given the nature and duration of the contractual matters at issue here, the Panel finds that this dispute does not fall within the scope of the Policy.
Accordingly, it is Ordered that the Complaint be dismissed.
Carolyn M. Johnson, Panelist James A. Carmody Panelist
Dennis A. Foster, Chair
Dated: October 1, 2014
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