WP Company LLC v. Webseed Publishing
Claim Number: FA1803001775737
Complainant is WP Company LLC (“Complainant”), represented by Tracy-Gene G. Durkin of Sterne, Kessler, Goldstein & Fox P.L.L.C., District of Columbia, USA. Respondent is Webseed Publishing (“Respondent”), District of Columbia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <washingtonpost.news>, registered with Go China Domains, LLC.
The undersigned certifies 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.
Ho Hyun Nahm, Esq.(Chair), Mr. Debrett Gordon Lyons, and Honorable Charles K. McCotter, Jr. as Panelists.
Complainant submitted a Complaint to the Forum electronically on March 13, 2018; the Forum received payment on March 14, 2018.
On March 16, 2018, Go China Domains, LLC confirmed by e-mail to the Forum that the <washingtonpost.news> domain name is registered with Go China Domains, LLC and that Respondent is the current registrant of the names. Go China Domains, LLC has verified that Respondent is bound by the Go China Domains, 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 March 19, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 9, 2018 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@washingtonpost.news. Also on March 19, 2018, 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 Forum transmitted to the parties a Notification of Respondent Default.
On April 18, 2018, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Ho Hyun Nahm, Esq.(Chair), Mr. Debrett Gordon Lyons, and Honorable Charles K. McCotter, Jr. as Panelists.
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" 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 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
i) Complainant, WP Company LLC, is otherwise known as “The Washington Post” or “WaPo,” and publishes THE WASHINGTON POST newspaper, which has been continuously published since 1877. Complainant has rights in the THE WASHINGTON POST, WASHINGTONPOST.COM and similar marks based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. THE WASHINGTON POST—Reg. No. 1,665,832, registered Nov. 26, 1991; WASHINGTONPOST.COM—Reg. No. 2,346,367, registered May 2, 2000). Respondent’s <washingtonpost.news> domain name is confusingly similar to Complainant’s THE WASHINGTON POST mark, as the domain name consists entirely of the mark—less the article “the”—and the “.news” generic top-level domain (“gTLD”). The addition of the “.news” gTLD further increases possible confusing similarity, as it is related to Complainant’s trade as a news outlet.
ii) Respondent has no rights or legitimate interests in the <washingtonpost.news> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the THE WASHINGTON POST marks in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to divert Internet users looking for Complainant’s website to Respondent’s for Respondent’s own competitive commercial publishing activities.
iii) Respondent registered and is using the <washingtonpost.news> domain name in bad faith. Respondent uses the domain name to create the impression that Respondent’s website is related to, associated with, or is in fact Complainant’s website in order to compete with, and disrupt Complainant’s business for commercial gain. Respondent did not include a disclaimer on the resolving website until it received Complainant’s second demand letter, and the resulting disclaimer is insufficient. Respondent also attempts to hide its true identity. Finally, Respondent clearly had actual knowledge of Complainant and its rights at the time Respondent registered and subsequently used the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is otherwise known as “The Washington Post” or “WaPo,” and publishes THE WASHINGTON POST newspaper, which has been continuously published since 1877.
2. Complainant has established rights in the THE WASHINGTON POST mark through its registration with the USPTO (e.g. Reg. No. 1,665,832, registered Nov. 26, 1991).
3. Respondent registered the disputed domain name on July 15, 2017.
4. The WHOIS information of record identifies the registrant of the disputed domain name as “Webseed Publishing.”
5. The disputed domain name resolves to a website that is similar in appearance and layout to Complainant’s website which uses a misleadingly similar font on the website’s masthead, and a nearly identical “favicon” to Complainant’s branding.
6. The disputed domain name resolves to a website promoting commercial news articles specific to Respondent’s agenda.
7. The website of the disputed domain name is used to advertise products for Mike Adams and the “Health Ranger.”
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(f), 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 (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 rights in the THE WASHINGTON POST mark based upon registration of the mark with the USPTO (e.g. Reg. No. 1,665,832, registered Nov. 26, 1991). See Compl. Ex. 12. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore holds that Complainant’s registration of the THE WASHINGTON POST mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <washingtonpost.news> domain name is confusingly similar to the THE WASHINGTON POST mark, as the name consists entirely of the mark—less the article “the”—and the “.news” gTLD. The omission of a small part of a mark and addition of a gTLD are not changes sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See The Pros Closet, Inc. v. Above.com Domain Privacy, FA 1616518 (Forum June 3, 2015) (finding confusing similarity where the <proscloset.com> domain name merely omitted the first term (“the”) from Complainant’s THE PROS CLOSET mark, eliminated spacing between words, and added the “.com” gTLD.); see also Nike, Inc. v. huang wei, FA 166048 (Forum Mar. 24, 2016) (finding the addition of the “.news” gTLD to the mark insufficient to distinguish the resultant domain name for the purposes of the Policy). Complainant argues the addition of the “.news” gTLD serves to increase possible confusion, as it is related to Complainant’s business of publishing news. The Panel therefore determines the <washingtonpost.news> domain name is confusingly similar to the THE WASHINGTON POST mark per Policy ¶ 4(a)(i).
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <washingtonpost.news> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the THE WASHINGTON POST or WASHINGTONPOST.COM marks in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the at-issue domain name as “Webseed Publishing,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s marks. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <washingtonpost.news> domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <washingtonpost.news> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Rather, Complainant claims Respondent uses the domain name to divert Internet users looking for Complainant’s website to Respondent’s for Respondent’s own competitive commercial publishing activities. Use of a domain name to confuse Internet users and compete with a mark holder for commercial gain may not be considered a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Diners Club Int’l Ltd. v. Car in Won Australia pty Ltd, FA 338427 (Forum Nov. 10, 2004) (“Since Complainant and Respondent both offer credit card accounts for sale, the Panel finds that Respondent is using the domain names to offer strictly competing services with Complainant, which would be legitimate had Respondent not incorporated Complainant’s mark in a confusingly similar domain name to accomplish this end.”). Complainant claims the domain name resolves to a website promoting commercial news articles specific to Respondent’s agenda and not at all specifically related to Complainant. See Compl. Ex. 14. Complainant also argues the website is used to advertise products for Respondent’s affiliate, Mike Adams, the “Health Ranger.” See Compl. Exs. 14 and 15. The Panel therefore determines Respondent lacks rights and legitimate interests in the domain name per Policy ¶¶ 4(c)(i) and (iii).
Complainant also claims that to the extent Respondent may argue the domain name is being used for the legitimate noncommercial purpose of criticizing Complainant, the <washingtonpost.news> domain name cannot help but convey an association with Complainant. A use of a domain name to criticize a mark holder may be considered legitimate and noncommercial, though the use may not be legitimate if it serves to confuse Internet users for commercial gain. See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”); see also Diners Club International, Ltd. v. Infotechnics Limited FA 0307000169085 (Forum Aug. 20, 2003) (“Respondent may have the right to post criticism of Complainant on the Internet, however, Respondent does not have the right to completely appropriate Complainant’s registered trademark in a domain name in a way that will mislead Internet users as to the source or affiliation of the attached website.”). Complainant claims that even if Respondent claims it is providing a legitimate critical, fair use, website, it is in any case only a pretext for Respondent to put its own stories, ideas, and products before the eyes of Complainant’s readers. See Compl. Exs. 14 and 15. In support of this argument, Complainant point to Respondent’s use of a misleadingly similar font on the website’s masthead, and a nearly identical “favicon” in an attempt to copy Complainant’s branding. See Compl. VIII.C.2. The Panel agrees and finds Respondent to lack rights and legitimate interests in the <washingtonpost.news> domain name.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant claims Respondent’s use of the <washingtonpost.news> domain name to pass off as Complainant in order to compete with Complainant’s business demonstrates that Respondent registered and used the domain name in bad faith. Use of a domain name to create a false impression of affiliation with a complainant in order to compete with and disrupt the complainant’s business is behavior indicative of bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). Complainant claims the at-issue domain name resolves to a website that is remarkably similar in appearance and layout to Complainant’s website. Compare Compl. Ex. 14 (screenshots from Respondent’s website resolving from the <washingtonpost.news> domain name) with Compl. Ex. 16 (Screenshots from Complainant’s website at <washingtonpost.com>); see also Compl. VIII.B.2. Complainant further claims Respondent uses the domain name to offer competitive news content. See Compl. Ex. 14. The Panel therefore finds Respondent registered and used the domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant further claims Respondent commercially benefits from the confusing <washingtonpost.news> domain name by advertising for its affiliate. Use of a confusingly similar domain name to confuse Internet users and advertise unrelated goods can indicate bad faith per Policy ¶ 4(b)(iv). See AOL LLC v. AIM Profiles, FA 964479 (Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name). The Panel recalls Complainant’s contention that the at-issue domain name resolves to a page which advertises products for Respondent’s affiliate, Mike Adams, the “Health Ranger.” See Compl. Exs. 14 and 15. The Panel therefore determines Respondent registered and used the <washingtonpost.news> domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant claims that although a disclaimer now appears on the website resolving from the <washingtonpost.news> domain name, it was only placed on the website after Complainant’s second demand letter, and is insufficient to allay consumer confusion. A disclaimer on a website may be sufficient to avoid a finding of bad faith, if it is found to eliminate possible consumer confusion. See Caterpillar Inc. v. Off Rd. Equip. Parts, FA 95497 (Forum Oct. 10, 2000) (finding no bad faith when the respondent put a very visible disclaimer on its website located at <catparts.com> , because the disclaimer eliminated any possibility that the respondent was attempting to imply an affiliation with the complainant and the complainant’s CATERPILLAR mark); but see Continental Airlines, Inc. v. Vartanian, FA 1106528 (Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note mitigate a finding of bad faith under Policy ¶ 4(a)(iii)”). Complainant claims Respondent’s disclaimer was only recently added, and only appears in very small font only on the landing page for the domain name. See Compl. Ex. 14. Further, Respondent does not use the disclaimer on individual article pages which may be shared through social media. See Compl. Ex. 17. The Panel therefore determines that Respondent’s included disclaimer is insufficient to eliminate customer confusion and thus defeat a finding of bad faith per Policy ¶ 4(a)(iii).
Complainant also contends that in light of the fame and notoriety of Complainant's THE WASHINGTON POST and WASHINGTONPOST.COM marks, it is inconceivable that Respondent could have registered the <washingtonpost.news> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant further asserts that Respondent’s use of the <wapo.news> domain name (subject of a separate complaint) to display the same content as the <washingtonpost.news> domain name indicates it had actual knowledge of Complainant’s rights. The Panel agrees and infers, due to the fame and notoriety of Complainant's THE WASHINGTON POST and WASHINGTONPOST.COM marks and the manner of use of the disputed domain names, that Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <washingtonpost.news> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq.(Chair)
Mr. Debrett Gordon Lyons
Honorable Charles K. McCotter, Jr., Panelists
Dated: April 23, 2018
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