MediaNews Group Interactive, Inc. v. Mo
Domains
Claim
Number: FA0505000470925
Complainant is MediaNews Group Interactive, Inc. (“Complainant”),
represented by Miriam Trudell, of Sheridan Ross P.C.,
1560 Broadway, Suite 1200, Denver, CO 80202.
Respondent is Mo Domains (“Respondent”),
235 W. 88 Street, New York, NY 10025.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <vacavillereporter.com>, 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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
29, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 2, 2005.
On
May 2, 2005, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by
e-mail to the National Arbitration Forum that the domain name <vacavillereporter.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
May 5, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 25, 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@vacavillereporter.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
May 31, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed he Honorable
Charles K. McCotter, Jr. (Ret.) 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <vacavillereporter.com>
domain name is confusingly similar to Complainant’s REPORTER, THE REPORTER and
VACAVILLE REPORTER marks.
2. Respondent does not have any rights or
legitimate interests in the <vacavillereporter.com> domain name.
3. Respondent registered and used the <vacavillereporter.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
MediaNews Group Interactive, Inc., is the owner and operator of the REPORTER
newspaper, a well-known full-service newspaper circulated in Vacaville,
California and the surrounding areas.
Complainant and its predecessor-in-interest have been using the REPORTER
mark in connection with this newspaper since 1983. Complainant’s predecessor-in-interest used the VACAVILLE REPORTER
mark for a number of years in connection with the newspaper, but exclusively
adopted the REPORTER mark in 1983.
Complainant’s
newspaper under the REPORTER mark includes typical content of a daily newspaper
including articles, editorials, and current news. The current daily circulation of Complainant’s newspaper is
approximately 17,500 and the Sunday circulation is approximately 19,000. In 2004, Complainant’s revenues for the
newspaper under the REPORTER mark were in the millions of dollars.
Complainant has
strong common law rights in the REPORTER and THE REPORTER marks in connection
with a newspaper serving the Vacaville community for over twenty years, and in
the VACAVILLE REPORTER mark though use by various third parties in reference to
Complainant’s newspaper serving the same area.
Complainant’s
main website is operated at the <thereporter.com> domain name.
Respondent
registered the <vacavillereporter.com> domain name on March 14,
2002. Respondent is currently using the
disputed domain name to misdirect Internet users to a search engine site, which
includes links to competing newspapers.
In addition, the domain name includes advertising for a wide variety of
products and services, including services such as job searches and
advertisements, business opportunities, travel and garage sales, all of which
are widely advertised in Complainant’s newspaper.
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.
Under Policy ¶
4(a)(i), a complainant need not hold a registered trademark to establish rights
in a mark. Common law rights are
sufficient when a complainant demonstrates secondary meaning associated with a
mark. See McCarthy on Trademarks
& Unfair Competition, § 25:74.2 (4th ed. 2002) (stating that the
ICANN dispute resolution policy is “broad in scope” in that “the reference to a
trademark or service mark ‘in which the complainant has rights’ means that
ownership of a registered mark is not required–unregistered or common law
trademark or service mark rights will suffice” to support a domain name
Complaint under the Policy); see also British Broad. Corp. v. Renteria,
D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish
between registered and unregistered trademarks and service marks in the context
of abusive registration of domain names” and applying the Policy to
“unregistered trademarks and service marks”); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat.
Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use
was continuous and ongoing, and secondary meaning was established).
The domain name
registered by Respondent, <vacavillereporter.com>, is confusingly
similar to Complainant’s REPORTER and THE REPORTER marks and is identical to
its VACAVILLE REPORTER mark because the only differences are the addition of
the geographic term “vacaville” and/or the generic top-level domain (“gTLD”)
“.com.” These slight changes do not
significantly distinguish the domain name from the marks. See Slep-Tone Entm’t Corp. v. Sound Choice Disc Jockeys, Inc., FA 93636
(Nat. Arb. Forum Mar. 13, 2000) (“[L]ikelihood of confusion is further
increased by the fact that Respondent and [Complainant] operate within the same
industry”); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where a respondent’s domain name combined the complainant’s mark
with a generic term that had an obvious relationship to the complainant’s
business); see also Sunkist
Growers, Inc. v. S G, D2001-0432 (WIPO May 22, 2001) (finding that the
domain names <sunkistgrowers.org>, <sunkistgrowers.net> and
<sunkistasia.com> were confusingly similar to Complainant’s registered
SUNKIST mark and identical to Complainant’s common law SUNKIST GROWERS mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
argued that Respondent has no rights or legitimate interests in the domain name
that incorporates Complainant’s marks.
The burden shifts to Respondent to show that it does have rights or
legitimate interests once Complainant establishes a prima facie case
pursuant to Policy ¶ 4(a)(ii). Due to
Respondent’s failure to respond to the Complaint, it is assumed that Respondent
lacks rights and legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where the complainant has
asserted that the respondent has no rights or legitimate interests with respect
to the domain name it is incumbent on the respondent to come forward with
concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see also Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that once the complainant asserts that the respondent has no rights or
legitimate interests with respect to the domain, the burden shifts to the
respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name); see also Ziegenfelder Co. v. VMH Enter., Inc.,
D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on the
respondent’s failure to respond: (1) the respondent does not deny the facts
asserted by the complainant, and (2) the respondent does not deny conclusions
which the complainant asserts can be drawn from the facts).
Nothing in the
record, including the WHOIS domain name registration information, for the <vacavillereporter.com>
domain name suggests that Respondent is commonly known by the domain name or by
Complainant’s REPORTER, THE REPORTER or VACAVILLE REPORTER marks pursuant to
Policy ¶ 4(c)(ii). See Tercent Inc.
v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” is one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that a respondent does not have rights in a domain name when the
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”).
Furthermore,
Respondent is using the <vacavillereporter.com> domain name to
direct Internet users to a website that features advertising for a variety of
services and hosts a search engine to link viewers to an array of websites,
including sites that offer the same products that Complainant offers. Respondent’s use of the domain name, which
is confusingly similar or identical to Complainant’s REPORTER, THE REPORTER and
VACAVILLE REPORTER marks, to direct Internet users interested in Complainant’s
product to a commercial website that offers a search engine and links to
competing newspapers 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 of the domain name pursuant to Policy ¶ 4(c)(iii). See Toronto-Dominion
Bank v. Karpachev, 188 F.Supp.2d
110, 114 (D. Mass. 2002) (finding that, because the
respondent’s sole purpose in selecting the domain names was to cause confusion
with the complainant’s website and marks, its use of the names was not in
connection with the offering of goods or services or any other fair use); see
also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat.
Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of
the complainant’s marks to send Internet users to a website which displayed a
series of links, some of which linked to competitors of the complainant, was
not a bona fide offering of goods or services); see also Avery Dennison Corp.
v. Steele, FA 133626 (Nat. Arb. Forum Jan 10, 2003) (finding that a
respondent had no rights or legitimate interests in the disputed domain name
where it used the complainant’s mark, without authorization, to attract
Internet users to its business, which competed with the complainant).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <vacavillereporter.com> domain name to provide links to
competing newspapers as well as offer commercial websites that offer goods and
services similar to those offered by Complainant. The Panel finds that, by creating confusion around Complainant’s
marks, Respondent is attempting to disrupt the business of a competitor. Respondent’s use of a confusingly similar or
identical version of Complainant’s marks to offer goods and services similar to
Complainant’s goods and services is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368
(Dec. 15, 2000) (finding that a respondent registered and used the domain name
<eebay.com> in bad faith where the respondent has used the domain name to
promote competing auction sites); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July
18, 2000) (finding that a respondent registered the domain name in question to
disrupt the business of the complainant, a competitor of the respondent); see
also Lubbock Radio Paging v. Venture
Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that
domain names were registered and used in bad faith where a respondent and the
complainant were in the same line of business in the same market area).
The Panel infers
that Respondent intentionally registered the
<vacavillereporter.com> domain name that incorporates
Complainant’s marks for Respondent’s commercial gain. Respondent’s disputed domain name diverts Internet users who seek
Complainant’s REPORTER, THE REPORTER and/or VACAVILLE REPORTER marks to Respondent’s
search engine and links to newspaper-related products and services through the
use of a domain name that is confusingly similar or identical to Complainant’s
marks. Respondent’s practice of
diversion, motivated by commercial gain, through the use of a confusingly
similar or identical domain name 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 a
respondent profits from its diversionary use of the complainant’s mark when the
domain name resolves to commercial websites and the respondent fails to contest
the complaint, it may be concluded that the 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 a respondent
registered the domain name <bigtex.net> to infringe on the complainant’s
goodwill and attract Internet users to the respondent’s website); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat.
Arb. Forum Sept. 15, 2000) (finding bad faith where the respondent linked the
domain name to another website <iwin.com>, presumably receiving a portion
of the advertising revenue from the site by directing Internet traffic there,
thus using a domain name to attract Internet users for commercial gain).
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 <vacavillereporter.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
June 6, 2005
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