MediaNews Group Interactive, Inc. v.
Domains For Life
Claim
Number: FA0501000409813
Complainant is MediaNews Group Interactive, Inc. (“Complainant”),
represented by Miriam Trudell, of Sheridan Ross P.C.,
1560 Broadway, Ste. 1200, Denver, CO 80202.
Respondent is Domains For Life (“Respondent”),
235 W. 102 St., New York, NY 10025.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <presstelagram.com> and <thepresstelegram.com>,
and are registered with Intercosmos Media Group, Inc. d/b/a
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
26, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 31, 2005.
On
January 26, 2005, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed
by e-mail to the National Arbitration Forum that the domain names <presstelagram.com>
and <thepresstelegram.com> are registered with Intercosmos Media
Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant
of the names. 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
February 3, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 23, 2005 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@presstelagram.com and
postmaster@thepresstelegram.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 National Arbitration
Forum transmitted to the parties a Notification of Respondent Default.
On
March 1, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed James A.
Carmody, Esq., as Panelist.
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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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 <presstelagram.com>
and <thepresstelegram.com> domain names are confusingly similar to
Complainant’s PRESS-TELEGRAM mark.
2. Respondent does not have any rights or
legitimate interests in the <presstelagram.com> and <thepresstelegram.com>
domain names.
3. Respondent registered and used the <presstelagram.com>
and <thepresstelegram.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is
the owner and operator of the Press Telegram newspaper that has been in
circulation in Long Beach, California since 1924. The newspaper includes typical content of a daily newspaper,
including articles, editorials and current news. Complainant has developed a significant Internet presence through
its website located at the <presstelegram.com> domain name.
Complainant has
registered the PRESS-TELEGRAM mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. Nos. 2,052,796 issued April 15 1997; 2,836,096 issued
April 27, 2004).
Respondent
registered the <thepresstelegram.com> domain name on February 9,
2002 and the <presstelagram.com> domain name on October 21,
2002. Previously, Respondent’s domain
names resolved to a website featuring anti-Democrat and anti-homosexual
content. Currently, the domain names
resolve to a search engine website featuring links to various commercial
entities.
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 rights in the PRESS-TELEGRAM mark through registration with the
USPTO. See Am. Online, Inc. v. Thomas P.
Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the United States Patent and Trademark Office creates
a presumption of rights in a mark); see also Men’s
Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”).
Respondent’s <thepresstelegram.com>
domain name is confusingly similar to Complainant’s PRESS-TELEGRAM mark
because the domain name merely adds the definite article “the” before
Complainant’s mark. Such addition is
not enough to overcome a finding of confusing similarity pursuant to 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 Antoun v. Truth Squad, FA 114766 (Nat. Arb. Forum Aug. 21, 2002) (stating that
the article "the" is "often added only for grammatical
purposes, and may be superfluous to the name itself").
Furthermore, Respondent’s
<presstelagram.com> domain name is confusingly similar to
Complainant’s mark because the domain name simply misspells the term
“telegram.” Such minor misspelling
renders the domain name confusingly similar to Complainant’s mark pursuant to
Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by
only one letter from a trademark has a greater tendency to be confusingly
similar to the trademark where the trademark is highly distinctive); 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).
Moreover, the
omission of the hyphen in Complainant’s PRESS-TELEGRAM mark and the addition of
the generic top-level domain “.com” are not sufficient to negate the confusing
similarity between the domain names and Complainant’s mark pursuant to Policy ¶
4(a)(i). See Nat’l
Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name
<cspan.net>, which omitted the hyphen from the trademark spelling,
C-SPAN, is confusingly similar to Complainant's mark); see also Ritz-Carlton Hotel Co. v. Club Car Executive
Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a
hyphen in the domain names is not sufficient to differentiate the domain names
from the mark); see also Isleworth Land Co. v. Lost in Space, SA, FA
117330 (Nat. Arb. Forum Sept. 27, 2002) (finding it is a “well established principle
that generic top-level domains are irrelevant when conducting a Policy ¶
4(a)(i) analysis”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd.,
FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain
is irrelevant when establishing whether or not a mark is identical or
confusingly similar, because top-level domains are a required element of every
domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel may accept all reasonable allegations and
assertions set forth by Complainant as being true and accurate. See 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.”); 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).
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed
domain names, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may
interpret Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <presstelagram.com> and <thepresstelegram.com>
domain names pursuant to 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 Bank of Am. Corp. v.
McCall,
FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not
only results in its failure to meet its burden, but also will be viewed as
evidence itself that Respondent lacks rights and legitimate interests in the
disputed domain name.”).
Respondent
currently uses the disputed domain names, which contain confusingly similar
versions of Complainant’s PRESS-TELEGRAM mark, to operate to a website
featuring a search engine and links to various commercial entities. The Panel infers that Respondent receives
click-though fees for directing Internet users to these websites. Such use is not a use in connection with a
bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Pioneer Hi-Bred Int’l Inc. v. Chan,
FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that Respondent did not have
rights or legitimate interests in a domain name that used Complainant’s mark
and redirected Internet users to website that pays domain name registrants for
referring those users to its search engine and pop-up advertisements); see
also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 5, 2003)
(holding that Respondent’s use of the disputed domain name, a simple
misspelling of Complainant’s mark, to divert Internet users to a website that
featured pop-up advertisements and an Internet directory, was neither a bona
fide offering of goods or services nor a legitimate noncommercial or fair use
of the domain name).
Moreover,
nothing in the record indicates that Respondent is either commonly known by the
disputed domain names or is authorized to register domain names featuring
Complainant’s PRESS-TELEGRAM mark.
Thus, the Panel finds that Respondent lacks rights and legitimate
interests in the domain names pursuant to Policy ¶ 4(c)(ii). See 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"); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where Respondent was not commonly known by the mark and never applied for a
license or permission from Complainant to use the trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
currently using the <presstelagram.com> and <thepresstelegram.com>
domain names, which contain confusingly similar versions of Complainant’s
PRESS-TELEGRAM mark, to operate a search engine website featuring links to
various commercial entities. The Panel
infers that Respondent receives click-through fees for diverting Internet users
to these commercial websites. Consumers
accessing Respondent’s domain names may become confused as to Complainant’s
affiliation with the resulting website.
Thus, the Panel finds that Respondent’s commercial use of the disputed
domain names constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Kmart v. Khan, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from
its diversionary use of Complainant's mark when the domain name resolves to
commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)); see also State
Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000)
(finding bad faith where Respondent registered the domain name
<bigtex.net> to infringe on Complainant’s goodwill and attract Internet
users to Respondent’s website).
Furthermore,
Respondent previously used the disputed domain names, which are confusingly
similar to Complainant’s PRESS-TELEGRAM mark, to operate a website displaying
politically charged anti-Democrat and anti-homosexual content. The Panel finds that such use is evidence
that Respondent took advantage of the goodwill associated with Complainant’s
mark as a media outlet to promote Respondent’s own political agenda, and that
Respondent registered and used the domain names in bad faith pursuant to Policy
¶ 4(a)(iii). See McClatchy Mgmt.
Servs., Inc. v. Please DON'T Kill Your Baby, FA 153541 (Nat. Arb. Forum May
28, 2003) (“By 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.”); see also The Journal Gazette Co. v.
Domain For Sale Inc., FA 12202 (Nat. Arb. Forum Oct. 9, 2002) (“Respondent
chose the domain name to increase the traffic flowing to the
<abortionismurder.org> and <thetruthpage.com> websites.”).
Moreover, the
Panel finds that Respondent had actual or constructive knowledge of
Complainant’s rights in the PRESS-TELEGRAM mark due to Complainant’s
registration of the mark with the USPTO.
See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24,
2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably
should have been aware of Complainant’s trademarks, actually or
constructively.”); see also 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.”).
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 <presstelagram.com> and <thepresstelegram.com>
domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
March 15, 2005
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