McClatchy Management Services, Inc. v.
KPYR c/o Svetlana Zubovich
Claim
Number: FA0505000474358
Complainant is McClatchy Management Services, Inc. (“Complainant”),
represented by Tsan Abrahamson, of Abrahamson Group PC,
821 Bancroft Way, Berkeley, CA 94708.
Respondent is KPYR c/o Svetlana
Zubovich (“Respondent”), Do Vosstrebovnia, 2114, Moscow K9, Russia 103009.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <star-tribune.com>, registered with Enom,
Inc.
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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
10, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 16, 2005.
On
May 10, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum
that the domain name <star-tribune.com> is registered with Enom,
Inc. and that Respondent is the current registrant of the name. Enom, Inc. has
verified that Respondent is bound by the Enom, Inc. 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 23, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 13, 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@star-tribune.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
June 16, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed John J.
Upchurch 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 <star-tribune.com>
domain name is identical to Complainant’s STARTRIBUNE COM and STAR TRIBUNE
marks.
2. Respondent does not have any rights or
legitimate interests in the <star-tribune.com> domain name.
3. Respondent registered and used the <star-tribune.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
As background,
The Star Tribune newspaper has roots dating back to 1867. At that time, the newspaper was named the
Minneapolis Tribune. The paper changed
its name to The Star Tribune in 1987.
In 1996, Complainant began operating a website, located at the
<startribune.com> domain name, for online news content.
The Star Tribune
is the 14th largest newspaper in the United States and is a member
of the McClatchy family of newspapers.
It currently has a Sunday circulation of over 700,000 papers.
On July 5, 1988,
Cowles Media Company successfully registered the STAR TRIBUNE mark with the
U.S. Patent and Trademark Office (Reg. No. 1,495,070). The mark was registered in connection with
“daily newspapers.” Complainant has
advanced the Trademark Assignment Abstract of Title for the STAR TRIBUNE mark. The abstract contains four total assignments
for the STAR TRIBUNE mark. The second
assignment indicates that Cowles Media Company changed the business name
associated with the STAR TRIBUNE mark to The Star Tribune Company (exec. Mar.
24, 1998). The fourth assignment
involves The Star Tribune Company conveying the entire interest in the STAR
TRIBUNE mark to McClatchy Management Services, Inc. (exec. Dec. 31, 2001).
On June 1, 1999,
The Star Tribune Company successfully registered the STARTRIBUNE COM mark with
the U.S. Patent and Trademark Office (Reg. No. 2,249,689). The mark was registered in connection with
“providing multiple-user access to a global computer information network for
the transfer and dissemination of a wide range of new information.” Complainant has advanced the Trademark
Assignment Abstract of Title for the STARTRIBUNE COM mark. The abstract contains one assignment in
which The Star Tribune Company assigned the entire interest in the STARTRIBUNE
COM mark to McClatchy Management Services, Inc. (exec. Dec. 31, 2001).
On July 24,
2001, Respondent registered the disputed domain name, <star-tribune.com>. The domain name currently resolves to
<pravda.ru>, which is an online Russian news magazine.
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.
The registration
of a trademark establishes a presumption of valid trademark rights under the
Policy. In the absence of a response, a
trademark registration establishes Policy ¶ 4(a)(i). In this case, therefore, Complainant’s federal registrations of
the STAR TRIBUNE and STARTRIBUNE COM marks establish Complainant’s trademark
rights under Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption); see also 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).
Furthermore, a domain name
that contains a third-party mark in its entirety, but which merely adds a
hyphen, is identical to the mark under Policy ¶ 4(a)(i). In this case, the domain name, <star-tribune.com>,
contains Complainant’s entire STAR TRIBUNE mark. The only difference between the second-level domain name and
Complainant’s mark is the addition of a hyphen separating the words “star” and
“tribune.” Consistent with prior
decisions under the Policy, the Panel finds that the disputed domain name is
identical to Complainant’s mark because the addition of a hyphen is
insignificant under Policy ¶ 4(a)(i). See
Chernow Commc’ns Inc. v. Kimball,
D2000-0119 (WIPO May 18, 2000) (“[T]he use or absence of punctuation marks,
such as hyphens, does not alter the fact that a name is identical to a
mark."); see also Toyota Motor Sales U.S.A. Inc. v. Clelland, FA
198018 (Nat. Arb. Forum Nov. 10, 2003) (“Hyphens fail to alleviate the identical nature of a combination of
words existing in a domain name from that of a registered mark.”).
Complainant has established
Policy ¶ 4(a)(i).
Complainant
asserts that Respondent lacks rights and legitimate interests in the <star-tribune.com>
domain name. Respondent has the
burden to advance concrete evidence, pursuant to Policy ¶ 4(a)(ii), that
demonstrates to the Panel any rights or legitimate interests it may have in the
domain name. Respondent carries this
burden because this information is “uniquely within the knowledge and control
of the respondent.” G.D. Searle v.
Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002). Since Respondent has defaulted, it has
failed to provide evidence of rights or legitimate interests it may have in the
disputed domain name. Therefore, the
Panel finds that Respondent lacks rights and legitimate interests in the domain
name. See Pavillion Agency, Inc.
v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that
Respondents’ failure to respond can be construed as
an admission that they have no legitimate interests in the domain names); 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).
In general, and in the absence of a response, it is not a bona
fide offering of goods or services to use a domain name, which is identical
or confusingly similar to a third-party mark, to divert Internet users to an
unrelated business. In this case, the
evidence shows that Complainant has developed goodwill in the STAR TRIBUNE
mark. Respondent simply registered an
identical domain name to divert Internet users to its own online news
publication. In the absence of a
response, the Panel finds these facts sufficient to conclude Respondent is not
using the domain name in connection with a bona fide offering of goods
or services pursuant to Policy ¶ 4(a)(i).
See eBay
Inc. v. Hong, D2000-1633
(WIPO Jan. 18, 2001) ("[using] Complainant’s entire mark in infringing
domain names makes it difficult to infer a legitimate use"); see also
U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6,
2003) (holding that Respondent’s use
of Complainant’s mark and the goodwill surrounding that mark as a means of
attracting Internet users to an unrelated business was not a bona fide offering
of goods or services).
Furthermore, there is nothing in the record that indicates Respondent
is commonly known by the disputed domain name, pursuant to Policy ¶ 4(c)(ii),
including the WHOIS registration information.
See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interest where Respondent was not commonly
known by the mark and never applied for a license or permission from
Complainant to use the trademarked name).
Due to
Respondent’s commercial use of the domain name, and lack of evidence pertaining
to fair use, Policy ¶ 4(c)(iii) is inapplicable. See Schering Corp. v. NGS
Enters., LTD,
FA 198013 (Nat. Arb.
Forum Nov. 7, 2003) (“[T]he Panel
concludes that Respondent's use is plainly commercial in nature, such that
Policy ¶ 4(c)(iii) is in fact inapplicable to this dispute.”); see also Avery Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan. 10,
2003) (“Evidence indicates that Respondent is profiting
from the use of Complainant's mark, therefore Policy ¶ 4(c)(iii)’s
'noncommercial or fair use' criteria are inapplicable.”).
Complainant has
established Policy ¶ 4(a)(ii).
The Panel finds
that Respondent used the disputed domain name to intentionally attract Internet
users to its website for commercial gain by creating a likelihood of confusion
with Complainant’s mark pursuant to Policy ¶ 4(b)(iv). As evidence, Respondent is using a domain
name, which is identical to Complainant’s mark, to divert Internet users to its
own online news publication. In the
absence of a response, the Panel relies on the evidence that has been advanced. This evidence leads to the conclusion that Respondent
is simply taking advantage of the goodwill Complainant has developed in its
STAR TRIBUNE mark for commercial gain. See
Perot Sys. Corp. v. Perot.net, FA
95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name
in question is obviously connected with Complainant’s well-known marks, thus
creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet
users to his website for commercial gain by creating a likelihood of confusion
with Complainant’s mark and offering the same services as Complainant via his
website).
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 <star-tribune.com> domain name be TRANSFERRED
from Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: June 29, 2005
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