Pulitzer Newspapers, Inc. v. T 8 Marketing
Claim Number: FA0606000740285
Complainant is Pulitzer Newspapers, Inc. (“Complainant”), represented by Dana M. Craig, of Lane & Waterman, LLP, 224 18th Street, Suite 500, Rock Island, IL 61201. Respondent is T 8 Marketing (“Respondent”), 599 20 3/4 Rd., Grand Junction, CO 81503.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <flagstafflivemusic.com>, registered with Go Daddy Software, Inc.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 27, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 29, 2006.
On June 28, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <flagstafflivemusic.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 June 30, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 20, 2006 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@flagstafflivemusic.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 25, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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 <flagstafflivemusic.com> domain name is confusingly similar to Complainant’s FLAGSTAFF LIVE! mark.
2. Respondent does not have any rights or legitimate interests in the <flagstafflivemusic.com> domain name.
3. Respondent registered and used the <flagstafflivemusic.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Pulitzer Newspapers, Inc., is a wholly owned
subsidiary of Lee Enterprises, Incorporated, that owns and publishes various
newspapers throughout the United States.
One of these newspapers is the Arizona
Daily Sun, which is published in Flagstaff, Arizona, and which publishes a
weekly arts and entertainment newspaper that is distributed on the FLAGSTAFF
LIVE! mark. Complainant has used the
FLAGSTAFF LIVE! mark since 1995, and the paper is well-known throughout
Northern Arizona for being a source of information concerning the lively
arts. Complainant holds a registration
with the United States Patent and Trademark Office (“USPTO”) for the FLAGSTAFF
LIVE! mark (Reg. No. 2,639,764 issued October 22, 2002).
Respondent registered the <flagstafflivemusic.com> domain name on May 29, 2004. Respondent’s disputed domain name resolves to a website that displays unrelated links for commercial personal advertisements and services.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); 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.”).
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 Panel finds that Complainant’s trademark registration with the USPTO sufficiently establishes Complainant’s rights in the FLAGSTAFF LIVE! mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Respondent’s <flagstafflivemusic.com> domain name is confusingly similar to Complainant’s FLAGSTAFF LIVE! mark as the disputed domain name uses Complainant’s mark with the omission of the exclamation point and addition of the descriptive term “music.” As music acts in the Flagstaff area is one of the topic areas of the paper distributed under Complainant’s mark, this term has a descriptive meaning that does not negate the confusing similarity between Complainant’s mark and Respondent’s disputed domain name. The Panel further finds that the omission of the exclamation point also does not negate the confusing similarity between the disputed domain name and Complainant’s mark. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark).
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant has alleged that Respondent lacks rights or legitimate interests in the <flagstafflivemusic.com> domain name. Complainant must first make a prima facie case in support of its allegations, and the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding 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 “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <flagstafflivemusic.com> domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the 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 the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts that Respondent is not authorized to use Complainant’s FLAGSTAFF LIVE! mark and that Respondent is not associated with Complainant in any way. Furthermore, Respondent’s WHOIS information does not suggest that Respondent is commonly known by the disputed domain name, and there is no evidence in the record to suggest that Respondent is or has ever been known by the disputed domain name. In Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003), the panel found that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name). The Panel thus finds that absent evidence of Respondent being known by the disputed domain name prior to the filing of the instant Complaint, Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent is using the <flagstafflivemusic.com>
domain name to redirect Internet users to a website that displays links
unrelated to Complainant for commercial personal advertisements and services,
presumably for the commercial benefit of Respondent. In U.S. Franchise Sys.,
Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003), the panel held
that the respondent’s use of the 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. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).”).
Accordingly, the Panel finds that Respondent’s use of the <flagstafflivemusic.com> domain
name is neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has alleged that Respondent acted in bad faith by registering and using the disputed domain name that contains Complainant’s mark. Respondent is using the <flagstafflivemusic.com> domain name to redirect Internet users to a website that features links to personal advertisements and services, which have no relation to Complainant’s use of the FLAGSTAFF LIVE! mark. The Panel finds that based on the undisputed evidence on record, Respondent is using Complainant’s mark in such a way for its own commercial benefit. Furthermore, Respondent’s disputed domain name is capable of creating confusion as to the source and affiliation of the <flagstafflivemusic.com> domain name. Combined, these factors constitute bad faith registration and use under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also 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 the complainant’s well-known marks, thus creating a likelihood of confusion strictly 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 <flagstafflivemusic.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: August 4, 2006
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