John Fairfax Publications Pty Limited v.
Pro-Life Domains Not for Sale
Claim Number: FA0311000213460
Complainant is John Fairfax Publications Pty Limited, 201 Sussex St., Sydney NSW 2000, Australia (“Complainant”). Respondent is Pro-Life Domains Not for Sale, 5444 Arlington Avenue, #g14, Bronx, NY
10471 (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <thesydneymorningherald.com> registered
with Intercosmos Media Group, Inc. d/b/a Directnic.com.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on November 20, 2003; the Forum received a hard copy of the
Complaint on November 21, 2003.
On
November 21, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed
by e-mail to the Forum that the domain name <thesydneymorningherald.com>
is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that
Respondent is the current registrant of the name. Intercosmos Media Group, Inc.
d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos
Media Group, Inc. d/b/a 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
November 25, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of December 15, 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@thesydneymorningherald.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
December 23, 2003, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed Sandra Franklin 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <thesydneymorningherald.com>
domain name is confusingly similar to Complainant’s SIDNEY MORNING HERALD mark.
2. Respondent does not have any rights or
legitimate interests in the <thesydneymorningherald.com> domain
name.
3. Respondent registered and used the <thesydneymorningherald.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant publishes
the newspaper The Sydney Morning Herald and also produces its affiliate daily
news service at the <smh.com.au> domain name. Complainant owns an
Australian trademark registration for the SYDNEY MORNING HERALD mark (Reg. No.
243,640 registered on November 3, 1970) in relation to printed matter,
newspapers and periodicals, books, photographs, instructional and teaching
material.
Respondent
registered the <thesydneymorningherald.com> domain name on
November 12, 2003. Respondent is using the disputed domain name to redirect
Internet traffic to an anti-abortion website at the
<abortionismurder.org> domain name. Complainant has detailed Respondent’s
modus operandi of registering domain names confusingly similar to
registered marks and using the domain names to redirect Internet traffic to an
anti-abortion website at the <abortionismurder.org> domain name.
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
demonstrated its rights in the SYDNEY MORNING HERALD mark through its
Australian trademark registration. See
Koninklijke KPN N.V. v. Telepathy Inc.,
D2001-0217 (WIPO May 7, 2001) finding that the Policy does not require that the
mark be registered in the country in which Respondent operates. It is
sufficient that Complainant can demonstrate a mark in some jurisdiction; see also Smart Design LLC v. Hughes,
D2000-0993 (WIPO Oct. 18, 2000) holding that ICANN Policy ¶ 4(a)(i) does not
require Complainant to demonstrate “exclusive rights”, but only that
Complainant has a bona fide basis for making the Complaint in the first place.
Complainant
contends that Respondent’s <thesydneymorningherald.com> domain
name is confusingly similar to Complainant’s SYDNEY MORNING HERALD mark because
the disputed domain name incorporates Complainant’s entire mark and simply adds
the generic term “the” to the beginning of the mark. The addition of the
article “the” does not significantly distinguish the domain name from the mark
for purposes of Policy ¶ 4(a)(i). See
Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) finding confusing
similarity where the domain name in dispute contains the identical mark of
Complainant combined with a generic word or term; see also Sony Kabushiki
Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) finding that “[n]either
the addition of an ordinary descriptive word . . . nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied.
The Panel finds
that Complainant has established Policy ¶ 4(a)(i).
Respondent has
not responded to the Complaint in this proceeding. Therefore, the Panel accepts
as true all of Complainant’s reasonable allegations and inferences. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27,
2000) finding it appropriate for the Panel to draw adverse inferences from
Respondent’s failure to reply to the Complaint; see also Desotec N.V. v.
Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) finding that failing to
respond allows a presumption that Complainant’s allegations are true unless
clearly contradicted by the evidence.
Furthermore,
Respondent has failed to invoke any circumstances that could demonstrate rights
to and legitimate interests in the <thesydneymorningherald.com>
domain name. Once Complainant asserts a prima facie case, the burden
shifts to Respondent to show that it has rights to and legitimate interests in
the disputed domain name under Policy ¶ 4(a)(ii). See Parfums Christian Dior
v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) finding that by not submitting
a Response, Respondent has failed to invoke any circumstance which could
demonstrate any rights or legitimate interests in the domain name; see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000)
finding no rights or legitimate interests where Respondent fails to respond.
Respondent is
using the <thesydneymorningherald.com> domain name to redirect
Internet traffic to an anti-abortion website at the
<abortionismurder.org> domain name. This use constitutes neither a bona
fide offering of goods or services with regard to Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use of the domain name with regard to ¶
4(c)(iii). See eBay Inc. v. Sunho Hong,
D2000-1633 (WIPO Jan. 18, 2001) stating that the "use of complainant’s
entire mark in infringing domain names makes it difficult to infer a legitimate
use"; see also 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”.
Moreover,
Respondent has proffered no proof and no evidence in the record suggests that
Respondent is commonly known by THE SYDNEY MORNING HERALD or <thesydneymorningherald.com>. Accordingly, the Panel finds that
Respondent has failed to demonstrate any rights to or legitimate interests in
the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) finding that
Respondent does not have rights in a domain name when Respondent is not known
by the mark; 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".
The Panel finds
that Policy ¶ 4(a)(ii) has been established.
Respondent’s
registration and use of the <thesydneymorningherald.com> domain
name to redirect Internet traffic to an anti-abortion website at the
<abortionismurder.org> domain name evidence Respondent’s bad faith
registration and use of the disputed domain name under Policy ¶ 4(a)(iii) because
Respondent is capitalizing on the goodwill associated with Complainant’s mark
to further Respondent’s political beliefs regarding a highly contentious issue.
See Journal Gazette Co. v. Domain
For Sale Inc. a/k/a Domain World, FA 12202 (Nat. Arb. Forum Oct. 9,
2002) finding “Respondent chose the domain name to increase the traffic flowing
to the <abortionismurder.org> and <thetruthpage.com> websites”; see also McClatchy Mgmt. Servs., Inc. v.
Please DON'T Kill Your Baby a/k/a William and Mark Purdy II, William S. Purdy,
FA 153541 (Nat. Arb. Forum May 28, 2003) finding “[b]y 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”.
Furthermore,
Complainant has detailed Respondent’s modus operandi of registering
domain names confusingly similar to registered marks and using the domain names
to redirect Internet traffic to an anti-abortion website at the
<abortionismurder.org> domain name. The pattern of registering domain
names confusingly similar to a trademark to prevent the owner of the trademark
from reflecting its name in a domain name constitutes registration and use in
bad faith pursuant to Policy ¶ 4(b)(ii). See
Armstrong Holdings, Inc. v. JAZ Assoc.,
FA 95234 (Nat. Arb. Forum Aug. 17, 2000) finding that Respondent violated
Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon
others’ famous and registered trademarks; see also Australian Stock
Exch. v. Cmty. Internet (Australia), D2000-1384
(WIPO Nov. 30, 2000) finding bad faith under Policy ¶ 4(b)(ii) where Respondent
registered multiple infringing domain names containing the trademarks or
service marks of other widely known Australian businesses.
Accordingly, the
Panel finds that Complainant has established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <thesydneymorningherald.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
January 6, 2004
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page