K.R. USA, INC. v. SO SO DOMAINS
Claim
Number: FA0308000180624
Complainant is K.R. USA, INC., San Jose, CA
(“Complainant”) represented by Ian C.
Ballon, of Manatt, Phelps & Phillips, LLP. Respondent is So So Domains, Bronx, NY (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <philadelphiaenquirer.com>
and <tallahassedemocrat.com>, registered with Intercosmos
Media Group, Inc. d/b/a Directnic.Com (hereinafter “Directnic.Com”).
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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on August 5, 2003; the Forum received a hard copy of the
Complaint on August 8, 2003.
On
August 6, 2003, Directnic.Com confirmed by e-mail to the Forum that the domain
names <philadelphiaenquirer.com> and <tallahassedemocrat.com>
are registered with Directnic.Com and that Respondent is the current registrant
of the names. Directnic.Com has verified that Respondent is bound by the Directnic.Com
registration agreement 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
August 15, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 4, 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@philadelphiaenquirer.com and
postmaster@tallahassedemocrat.com by e-mail.
Having
received no 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
September 15, 2003, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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. Respondent’s <philadelphiaenquirer.com>
and <tallahassedemocrat.com> domain names are confusingly similar
to Complainant’s THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks.
2. Respondent does not have any rights or
legitimate interests in the <philadelphiaenquirer.com> and <tallahassedemocrat.com>
domain names.
3. Respondent registered and used the <philadelphiaenquirer.com>
and <tallahassedemocrat.com> domain names in bad faith.
B. Respondent did not submit a Response in this
proceeding.
Complainant K.R.
USA is a subsidiary of Knight-Ridder, Inc., a media company primarily engaged
in newspaper and Internet publishing.
Among Knight-Ridder’s publications are The Philadelphia Inquirer
and the Tallahassee Democrat.
The THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks have been
used in association with the newspapers since 1889 and 1949, respectively. Both
of the marks are registered on the Principal Register of the United States
Patent and Trademark Office; THE PHILADELPHIA INQUIRER is registered as Reg.
No. 270,787 and TALLAHASSEE DEMOCRAT is registered as Reg. No. 2,100,946.
Respondent
registered the <philadelphiaenquirer.com> domain name on April 14,
2002 and the <tallahassedemocrat.com> domain name on February 8,
2002. Since that time, the names have
been used to redirect Internet users to an anti-abortion website, an online
pharmacy site, and a web page offering the domain names for sale for $985 each.
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
draw such inferences it 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 its rights in the THE PHILADELPHIA INQUIRER and TALLAHASSEE
DEMOCRAT marks through registration of the marks and continuous use in commerce
for several decades. See Orange Glo
Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s
OXICLEAN mark is listed on the Principal Register of the USPTO, a status that
confers constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof”).
Each of the
domain names is confusingly similar to one of Complainant’s marks, as each
incorporates only a minor misspelling into the mark and one drops the word
“the” from the mark. See Victoria’s Secret v. Zuccarini, FA 95762
(Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding
letters to words, a Respondent does not create a distinct mark but nevertheless
renders the domain name confusingly similar to Complainant’s marks); see
also Hewlett-Packard Co. v. Zuccarini,
FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name
<hewlitpackard.com> to be identical or confusingly similar to
Complainant’s HEWLETT-PACKARD mark); see also Buffalo News v. Barry d/b/a
Bronx Consumer, Inc. f/k/a Domains or Best Domains, FA 146919 (Nat. Arb.
Forum Mar. 21, 2003) (finding Respondent’s <bufalonews.com> domain name
confusingly similar to Complainant’s THE BUFFALO NEWS mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged, without argument from Respondent, that Respondent has no rights or
legitimate interests in the disputed domain names. Given Respondent’s failure to contest this allegation, the Panel
may accept it as true. See Do the
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a
respondent to come forward to [contest complainant’s allegations] is tantamount
to admitting the truth of complainant’s assertion in this regard”); 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 has
provided solid evidence that Respondent is a reseller of domain name
registrations, particularly involving domain names that infringe on the
trademark rights of others. The
attempted sale of a domain name registration that incorporates confusingly
similar variations of another’s mark is not a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i). See
J. Paul Getty Trust v. Domain 4 Sale
& Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or
legitimate interests do not exist when one has made no use of the websites that
are located at the domain names at issue, other than to sell the domain names
for profit); see also Wal-Mart
Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding
Respondent’s conduct purporting to sell the domain name suggests it has no
legitimate use). Furthermore, by the
commercial nature of the attempted sale, Respondent has not demonstrated a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Respondent has
also used the disputed domain names to redirect Internet users seeking
Complainant’s online publications to an anti-abortion website. While the content of Respondent’s website
may be entitled to free-speech protections, the use of misleading domain names
to divert unsuspecting Internet users to Respondent’s site is not. See Journal Gazette Co. v. Domain For
Sale Inc. a/k/a Domain World, FA 12202 (Nat. Arb. Forum Oct. 9, 2002)
(finding no rights or legitimate interests where Respondent redirected users
from the <fortwaynejournalgazette.com> domain name to
<abortionismurder.org> and <thetruthpage.com>).
It appears that
Respondent’s primary purpose in redirecting users seeking Complainant’s
publications to the abortion-related websites has been to extort payment from
Complainant in exchange for the domain names.
Just as this will not establish rights or interests in Respondent,
neither will Respondent’s use of the domain names to redirect users to online
pharmacy websites. Such use
misappropriates Complainant’s goodwill and smacks of improper opportunism. See Am. Nat’l Red Cross v. Domains
a/k/a Best Domains a/k/a John Barry, FA 143684 (Nat. Arb. Forum March 4, 2003) (finding no rights or
legitimate interests where Respondent registered and used the disputed domain
names to redirect users to anti-abortion and online pharmacy websites).
The Panel finds
that Respondent has no rights or legitimate interests in either of the disputed
domain names and, thus, Policy ¶ 4(a)(ii) has been satisfied.
Respondent has
registered two domain names confusingly similar to Complainant’s marks in order
to exact compensation from Complainant, well beyond Respondent’s out-of-pocket
costs related to the registration of the domain names. Such behavior typifies bad faith
registration and use as defined in Policy ¶ 4(b)(i). See Little Six, Inc v.
Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding
Respondent's offer to sell the domain name at issue to Complainant was evidence
of bad faith); see also World
Wrestling Fed’n Entmt., Inc. v. Bosman,
D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in
bad faith because he offered to sell the domain name for valuable consideration
in excess of any out-of-pocket costs).
Furthermore, the
very practice of typosquatting, in which Respondent has engaged, has been
deemed behavior in bad faith. See
Nat’l Ass’n of Prof’l Baseball Leagues
v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the
intentional misspelling of words with intent to intercept and siphon off
traffic from its intended destination, by preying on Internauts who make common
typing errors. Typosquatting is
inherently parasitic and of itself evidence of bad faith”); see also Medline, Inc.
v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“in typosquatting cases, such as this one, it would be difficult for
Respondent to prove to the Panel that it did not have actual knowledge of
Complainant’s distinctive MEDLINE mark when it registered the infringing
<wwwmedline.com> domain name”).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <philadelphiaenquirer.com> and <tallahassedemocrat.com>
domain names be TRANSFERRED from Respondent to Complainant.
Hon.
Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: September 18, 2003
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