The Trustees of Columbia University in the City of New York v. Adam Beaumont
Claim Number: FA1805001785271
Complainant is The Trustees of Columbia University in the City of New York (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Adam Beaumont (“Respondent”), Columbia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thenewyorkworld.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Roberto A. Bianchi as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 7, 2018; the Forum received payment on May 7, 2018.
On May 7, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <thenewyorkworld.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 May 11, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 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@thenewyorkworld.com. Also on May 11, 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.
A timely Response was received and determined to be complete on May 25, 2018.
On May 30, 2018, the Forum received an Additional Statement from Complainant.
On June 1, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Roberto A. Bianchi as Panelist.
On June 3, 2018, the Forum received and Additional Submission from Respondent.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant operates Columbia University in New York City, one of the world’s most famous and preeminent universities. In or about 2010, Complainant launched THE NEW YORK WORLD on-line newspaper, providing general news, information and commentary, with a focus on stories relevant to New York City. Complainant has rights in the THE NEW YORK WORLD mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”), Reg. No. 4,153,097, Reg. Date Jun. 5, 2012. See Compl. Ex. 4. The disputed domain name is identical or confusingly similar to Complainant’s mark as it contains the mark in its entirety, while it eliminates the spaces between the terms of the mark, and adds the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to offer services in direct competition to those offered by Complainant. See Compl. Ex. 6. Some of the content on the website at the disputed domain name are articles reproduced from Complainant’s own website. See Compl. Ex. 7. Further, Complainant was the original owner of the disputed domain name, which Respondent registered only after the registration lapsed in 2017 due to Complainant’s oversight. Additionally, Respondent’s website invites Internet users to provide their names and email addresses to Respondent, likely as part of a phishing scheme to benefit Respondent. See Compl. Ex. 6.
Respondent registered and uses the disputed domain name in bad faith. Respondent uses the confusingly similar disputed domain name to take a free ride on Complainant’s goodwill in its THE NEW YORK WORLD mark in order to attract and misdirect consumers to a website that consumers likely mistakenly will believe is sponsored, licensed, or endorsed by Complainant. Respondent creates this confusion to offer services in direct competition with those offered by Complainant, which also disrupts Complainant’s business. See Compl. Ex. 6. Further, Respondent uses the disputed domain name to phish for information from users entering in their personal information on the resolving website. Id. Additionally, Respondent registered the disputed domain name using a proxy service to shield its identity. Moreover, Respondent only registered the disputed domain name after Complainant inadvertently allowed its registration of the domain name to lapse. See Compl. Ex. 3. Finally, Complainant has a long and well-established reputation in the THE NEW YORK WORLD mark through its exclusive use in connection with an on line newspaper. Thus, Respondent clearly had actual and/or constructive knowledge of Complainant and its mark prior to registering the disputed domain name.
B. Respondent
Respondent contends the following:
Respondent does not refute that the disputed domain name is confusingly similar to Complainant’s trademark.
Respondent is a Web Developer / Blogger with a portfolio of websites across different verticals. The disputed domain name appeared on an ‘Expired Domain’ or ‘Drop’ List in which Respondent sought to purchase based on the generic name and geographical location that fits Respondent’s portfolio of websites, travel and lifestyle blogs. Respondent has no intention to imitate or impersonate the expired website and/or to confuse visitors. Further, Respondent uses the domain name in connection with a website as an informational blog with monetization in the form of advertisements. The disputed website is in legitimate fair use as the website is an informational blog with monetization in the form of advertisements.
Respondent registered the disputed domain name in good faith. Respondent is not a competitor of Complainant and did not register the disputed domain name in an attempt to appropriate Complainant’s goodwill in name or trademark, and does not offer competitive services. Additionally, the disputed domain name consists of generic and geographically descriptive terms. Further, Respondent in no way engages in phishing, and collects email addresses solely for professional and marketing purposes. Moreover, Respondent had no knowledge about Complainant`s trademark before, during or after registration of the disputed domain name. Finally, Respondent’s use of a proxy service when registering the disputed domain name was not done in bad faith.
C. Additional Submissions
On May 30, 2018, Complainant submitted an Additional Statement pursuant to the Forum `s Supplemental Rules. In the view of the Panel, this additional submission is mostly a reply to contentions and arguments made in the Response, which are not of a nature that Complainant, in general terms, could not anticipate. In any event, Complainant`s Additional Statement elaborates on arguments already presented in the Complaint. Therefore, the Panel will not consider Complainant`s Additional Statement. Because Respondent`s Additional Submission of June 3, 2018 - made in reply to Complainant`s Additional Statement - mostly repeats the arguments already contained in the Response, the Panel decides also not to consider Respondent`s Additional Submission. See Acumen Enterps., Inc. v. Morgan, FA 1381503 (Forum May 17, 2011) (“The Panel decided not to consider Complainant’s Additional Submission of May 2, 2011 because it does not deal with any argument of Respondent which could not have been anticipated by Complainant”); see also Am. Airlines, Inc. v. Proxied Domains, FA 1248138 (Forum Apr. 8, 2009) (deciding not to consider an additional submission not containing any new information or arguments that could not have been anticipated); see also Vaga-lume Midia Ltda v. Ouz, FA 1287151 (Forum Dec. 7, 2009) (deciding to admit and consider the complainant’s additional submission with evidence unavailable at the time the complaint was submitted).
Complainant operates Columbia University in New York City. As stated in the Complaint, in or about 2010, Columbia University’s School of Journalism launched an on-line newspaper entitled THE NEW YORK WORLD, containing general news, information and commentary focused on subjects related to New York City. The newspaper was available at the “www.thenewyorkworld.com” website, beginning in approximately November 2010.
According to the relevant WhoIs database, the record for the disputed domain name was created on September 9, 2010.
Complainant owns U.S. Trademark THE NEW YORK WORLD, Registration No. 4153097, Reg. Date June 5, 2012, filed on July 25, 2011, covering “Providing an on-line non-downloadable newspaper featuring general news, information and commentary about people from all over the world”, in International Class 41. Stated date of first use and first use in commerce: November 5, 2010.
Respondent is a web developer / blogger with a portfolio of websites. Due to oversight, Complainant failed to renew the registration of the disputed domain name when it expired. On or around October/November 2017. Respondent registered the disputed domain name after it appeared on a drop list.[1]
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 shown to the satisfaction of the Panel that it owns rights in the THE NEW YORK WORLD service mark. See section on “Findings” above.
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s mark THE NEW YORK WORLD as it contains this mark in its entirety, while it eliminates the spaces between the terms of the mark, and adds the generic top-level domain “.com.” Respondent does not deny that the disputed domain name is confusingly similar to Complainant’s trademark. The Panel agrees with the Parties that the disputed domain name is identical or confusingly similar to Complainant’s mark. Accordingly, the first requirement of the Policy is met.
Respondent was able to register the disputed domain name after an oversight, as Complainant let it lapse without renewing its registration. In the Panel`s view, the expiration of the registration of a domain name - due to oversight, lack of interest of the current registrant or to any other reason - simply means that the registration is open on a “first come first served” basis. Whether a domain name appeared on a drop list or was never registered before, in a UDRP dispute where the disputed domain name is confusingly similar to a mark owned by the complainant, the respondent cannot base a claim of rights or legitimate interests simply on the “first come first served” argument, i.e., because nobody else owned the registration. Otherwise, any domain name registration would provide the basis for a right or legitimate interest, thus avoiding the application of Policy ¶ 4(a)(ii), which is absurd. See Testing Service v. TOEFL, D2000‑0044 (WIPO Mar, 16 2000) (“If mere registration of the domain name were sufficient to establish rights or legitimate interests for the purposes of Paragraph 4(a)(ii) of the Policy, then all registrants would have such rights or interests, and no Complainant could succeed on a claim of abusive registration. Construing the Policy so as to avoid an illogical result, the Panel concludes that mere registration does not establish rights or legitimate interests in a domain name so as to avoid the application of Paragraph 4(a)(ii) of the Policy.”)
Under Policy ¶ 4(a)(ii), Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name; 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).
The question here is whether Respondent registered and used the disputed domain name based on the generic name and geographical location, in the context of Respondent’s portfolio of websites, travel and lifestyle blogs or, as contended by Complainant, with the intention to create confusion with the original website of Complainant, including by imitating or impersonating the owner of the original website.
The Panel notes that in the disputed domain name the term “New York” is a notorious geographic location. The Panel also notes that in Complainant`s registration for THE NEW YORK WORLD trademark, the use of the term “New York” is disclaimed, and that the terms “the” and “world” are generic and dictionary words. However, the Panel also notes that Complainant`s service mark obtained registration with the USPTO because it is distinctive of the service of providing an on-line non-downloadable newspaper in International Class 41. In the Panel`s view, it is more likely than not that Respondent did not ignore that until the expiration of the disputed domain name, it was Complainant who owned and published the online newspaper on the corresponding website. In fact, Respondent admits that he took from “archive.org” several articles that had been published by Complainant on its original website, and posted them on his website at the disputed domain name. According to Respondent, the reasoning behind this is that he noticed that several previous web articles were receiving 404 errors from the server, and that author and date of the article were purposefully removed “as to not cause any confusion”. In the Panel`s opinion, Respondent`s suppression of the author`s name and date of the article rather contributes to the confusion Respondent was attempting to create among inadvertent Internet users - presumably looking for Complainant`s online newspaper - the false impression that nothing has changed on the website after the registration of the “dropped” domain name. In particular, the Panel notes that the legend “Article republished from TheNewYorkWorld.com” displayed at the end of one copyright article is in a very small print and appears to be meaningless to readers who may reasonably believe they are reading an online newspaper published by the Columbia University`s School of Journalism.
Complainant also has shown that on the website at the disputed domain name Respondent is requesting personal data from Internet users visiting the website, allegedly for marketing purposes. In the view of the Panel, this data collection with a commercial purpose is possible because Internet users may reasonably believe the data are being requested by Complainant, impersonated by Respondent. The Panel believes this is neither a use of the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a fair or legitimate noncommercial use under Policy ¶ 4(c)(iii). In addition, the name of the registrant of the disputed domain name (Respondent) is Adam Beaumont, which means that Policy ¶ 4(c)(ii) also does not apply.
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name and Respondent failed to prove that he has at least a right or legitimate interest in the disputed domain name. Accordingly, the second requirement of the Policy is met.
In the Panel`s view, Respondent`s assertion that he was not aware of Complainant`s trademark at the time of registering the disputed domain name does not deserve much credit.
First, Complainant`s registration for the THE NEW YORK WORLD service mark predates Respondent`s registration of the disputed domain name by over five years. See section on “Findings” above. A basic search on the freely available USPTO trademark database would have revealed the previous existence of Complainant`s live mark THE NEW YORK WORLD, to which the disputed domain name is identical - except for the suppression of the spaces and the addition of the gTLD. Respondent describes himself as a web developer / blogger with a portfolio of websites across different verticals. Because this self-description implies at least an average degree of knowledge in respect of domain name registrations, he should have been particularly careful in not registering domain names that reflect third party trademarks by conducting a reasonable search on the corresponding database. See Knowles Cazenovia, Inc. v. Bindal, Prakhar, FA 1774773 (Forum Apr. 16, 2018) (“Given Respondent claims he is in the business of “brand consulting and aiding startup companies,” presumably, a simple use investigation would have been conducted. Failure to conduct even a rudimentary online search (which would have revealed Knowles and its NOVACAP brand) demonstrates an intentional willful blindness and/or calls into question the claim that Respondent is a brand consultant and aids start-up companies. Here, Respondent either knew the disputed domain name was identical to a registered trademark, or neglected to perform a simple Internet search. Either way, Respondent failed to discharge his duty to select, register, and use a domain name that does not infringe the rights of a third party. Traction Corp. v. Ken Zi Wang, FA 1750913 (Forum Oct. 23, 2017) (finding even if there was no actual knowledge of the registered trademark, the respondent had a duty to investigate prior to registering the domain name). The Panel largely agrees with Complainant’s submission on this point. Respondent’s intentional willful blindness to Complainant’s mark is evidence of bad faith.”)
Second, Respondent admitted he posted on the website at the disputed domain name, without any authorization from Complainant, articles with copyright previously published on Complainant`s original website. Respondent`s very use of the “Wayback Machine” at “www.archive.org” to fetch Complainant`s copyright material reveals that Respondent was able to discover who the owner of the “dropped” domain name was, and whether any live mark existed identical to the disputed domain name.
From these facts, the Panel infers that Respondent, more likely than not, was aware of, and targeted Complainant and its mark at the time of registering the disputed domain name.
In the view of the Panel, Respondent`s registration of the disputed domain name and his use of Complainant`s copyright materials allowed Respondent to request the visitors of the website –presumably looking for Complainant`s online newspaper - personal data such as name and email address, allegedly for marketing purposes, i.e., for profit. Whether or not this request of data was the preparation for a phishing maneuver, which Complainant alleges and Respondent denies, the Panel finds that by using the disputed domain name as shown, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his website or location or of a product or service on his website or location. This is a circumstance of registration and use of the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thenewyorkworld.com> domain name be TRANSFERRED from Respondent to Complainant.
Roberto A. Bianchi, Panelist
Dated: June 14, 2018
[1] The Wikipedia (visited on June 13, 2018) contains the following information: “A domain name drop list is a list containing the expired domain names that will be deleted from the domain name registry in the near future. These lists are typically used by domainers to locate expiring domain names with value.” “Drop list contents. There is no defined date range for data contained with a drop list, as they can contain anywhere between 1 day's worth of expiring domain names, to 30 or more days worth. Some drop lists contain only domain names that follow the domain name deletion process (where the domain name enters the REGISTRAR-HOLD status, followed by REDEMPTIONPERIOD, and PENDINGDELETE), some contain only pre-release domain names, and some contain both pre-release and regular domain names. The data contained within a drop list can also vary, with some lists providing only basic information, such as the domain name and its expiry date. Other drop lists provide more detailed statistics, including, among others, PageRank, Link popularity and Alexa rank.”
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