national arbitration forum

 

DECISION

 

Pulitzer Newspapers, Inc. v. Rocky Production

Claim Number:  FA0606000740348

 

PARTIES

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 Rocky Production (“Respondent”), 23852 Pacific Coast Highway, Unit 720, Malibu, CA 90265.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <flagstafflive.com>, registered with Dotster.

 

PANEL

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.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

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, Dotster confirmed by e-mail to the National Arbitration Forum that the <flagstafflive.com> domain name is registered with Dotster and that Respondent is the current registrant of the name.  Dotster has verified that Respondent is bound by the Dotster 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 July 11, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 31, 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@flagstafflive.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On August 4, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant Pulitzer Newspapers, Inc. is a Delaware corporation and is the owner of    Registration No. 2,639,764 on the Principal Trademark Register of the United States, for the mark FLAGSTAFF LIVE! used on or in connection with newspapers of general circulation.  The application to register this mark was filed on October 20, 2001 and the registration was issued on October 22, 2002. 

 

Pulitzer Newspapers, Inc. is a wholly owned subsidiary of Lee Enterprises, Incorporated, also a Delaware Corporation, having its principal place of business in Davenport, Iowa.  Pulitzer owns and publishes various newspapers throughout the United States (id.) including a weekly arts and entertainment newspaper known as Flagstaff Live! published in Flagstaff, Arizona by the Pulitzer daily newspaper in Flagstaff, the Arizona Daily Sun.  The newspaper features articles and advertisements connected with events involving music, theater, film, and other performing arts.  Flagstaff Live! has been published since 1995, has a circulation of  over 7,500 readers and is well-known throughout Northern Arizona as the definitive source for information concerning the lively arts.  The trademark FLAGSTAFF LIVE! has become associated in the minds of the consuming public with the newspaper and with the services that the newspaper offers.

 

            FACTUAL AND LEGAL GROUNDS

 

This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).  The analysis in this section may require more space than provided, but the entire Complaint shall not exceed ten (10) pages.  NAF Supp. Rule 4(a).

 

[a.]       [Specify in the space below the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.] ICANN Rule 3(b)(ix)(1); ICANN Policy ¶4(a)(i).

 

The only difference between the Complainant's trademark and Respondent's domain name is that Respondent's domain name drops the exclamation point and adds the top-level domain ".com."  The addition of the top-level domain is insufficient to avoid confusion. See, e.g., The Royal Bank Of Scotland Group Plc And National Westminster Bank PLC v.  Pritpal Jittla, FA 0603000660550 (Nat. Arb. Forum May 2, 2006); Draw Tite, Inc. v. Plattsburgh Spring Inc., No. D2000 0017 (WIPO March 14, 2000). Likewise, the deletion of the exclamation point from Complainant's mark does not sufficiently distinguish the Respondent's domain name from Complainant's mark.  See, e.g., Blackwood Assets, Inc. v. Daniel Bat, No. FA 0601000626775 (Nat. Arb. Forum Feb. 28, 2006) (holding that neither the removal of punctuation marks nor the deletion of a letter from a registered mark is sufficient to properly distinguish a domain name for purposes of Policy 4(a)(i)); Geoffrey, Inc. v. Lucy Enterprises, No. FA 0406000287009 (Nat. Arb. Forum July 30, 2004) ("…the mere addition of a generic or descriptive word to Complainant's mark and the deletion of punctuation marks such as quotation marks do not negate the confusing similarity of Respondent's domain name pursuant to Policy 4(a)(i)"); U Haul International, Inc. v. eHost Master AKA Network Commerce A/K/A Allwright Moving Systems, Inc.,  No. FA 0301000140625 (Nat. Arb. Forum Feb. 17, 2003) ("The deletion of a punctuation mark and the addition of a top level domain provide no distinct characteristics from Complainant's mark"); Daddy's Junky Music Stores, Inc. v. Kausar, FA 140598 (Nat. Arb. Forum Feb. 11, 2003) ("The lack of an apostrophe in the domain name is not a distinguishing difference because punctuation is not significant in determining the similarity of a domain name and a mark.").

 

 

[b.]       [Specify in the space below why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint.] ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).

 

Respondent is using the disputed domain name to operate a website that displays links to terms featuring links to unrelated commercial sites but that are in some cases related to the subject matter of Complainant's newspaper.  The Respondent's website also features pop-up ads for unrelated sites and services and search engines. This misleading use of the disputed domain name is not 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, Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) ("[d]iverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy 4(c)(i), nor does it represent a noncommercial or fair use under Policy 4(c)(iii)"). See also, Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate interests in the disputed domain name where the respondent was using the complainant's mark to redirect Internet users to a website offering credit card services unrelated to those services legitimately offered under the complainant's mark); Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) ("[r]espondent'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)"); Bailiwick Data Systems, Inc. v. Rainforest Consulting Inc. C/O Domain Administrator, FA 0509000567037 (Nat. Arb. Forum Nov. 9, 2005) ("[t]he use of another's mark to create a directory service of various goods and services is not a bona fide offering of goods and services pursuant to Policy  4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy 4(c)(iii)"); Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the respondent's use of the disputed domain name to host a series of hyperlinks and a banner advertisements was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name); Pioneer Hi Bred Int'l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that the respondent did not have rights or legitimate interests in a domain name that used the 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).

 

The Whois information lists Respondent as "Rocky Production."  Complainant is unable to locate any business listings for Respondent in the California Secretary of State's office [unsurprisingly, as discussed in more detail below].  The Web Page located at www.RockyProduction.com is identical to the one found at the URL www.flagstafflive.com.  As mentioned above, this web site appears to be nothing more than a typical ad-and-search site used by persons who are collecting click-through fees. There is no indication that Rocky Production is a legitimate business, nor is there any legitimate offering of goods or services at either site. A search for web pages with "Flagstaff” and "Live" in the title reveals only pages referencing Complainant's paper.  "Rocky Production" is not affiliated with or licensed by Complainant.

 

 

[c.]       [Specify in the space below why the domain name(s) should be considered as having been registered and being used in bad faith.]  ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(a)(iii).

 

Respondent's domain name resolves to a website that features links to various commercial websites through which Respondent presumably receives click through fees. Because Respondent's domain name is confusingly similar to Complainant's mark, consumers accessing Respondent's website may become confused as to Complainant's affiliation or sponsorship of the goods and services advertised thereon. This competing use is evidence of bad faith pursuant to Policy   4(b)(iv). See, Kohler Co. v. Whois Privacy Protection Service, Inc. C/O Whois Agent, FA 0510000571955 (Nat. Arb. Forum Nov. 18, 2005); Disney Enterprises, Inc. v.  Whois Privacy Protection Service, Inc. A/K/A Whois Agent,  FA 0506000506742 (Nat. Arb Forum Aug. 17,2005); H. D. Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003). 

 

More importantly, there is compelling evidence that the person or persons behind "Rocky Production" are notorious for engaging in a pattern and practice of registering domain names, under various pseudonyms, that infringe third-party marks. The lengths to which these people have persistently gone in the past few years to conceal their activities is really rather amazing.

 

Commencing in the late 1990's a person going by the name of Saied Yomtobian began registering, under his own name, domain names that were confusingly similar to trademarks owned by others, for the purpose of selling them or redirecting traffic from their websites.  E.g., Fox Group Legal v. Saeid Yomtobian, No. FA 0010000095839 (Nat. Arb. Forum Dec. 18, 2000) (registration of marks owned by Fox as domain names under Yomtobian’s own name held in bad faith); Lauren Thibodeau v. Saeid Yomtobian, No. FA 94868 (Nat. Arb. Forum June 28, 2000) (registration of Drlauren in Yomtobian’s own name held, in bad faith.); Bank of America Corporation v. Saeid Yomtobian, No. FA 0005000094889 (Nat. Arb. Forum June 27, 2000) (registration of BankforAmerica.com in Yomtobian’s name held in bad faith);

 

No doubt because of his losses in the preceding line of cases, Yomtobian began registering famous marks or close approximations thereof using the name "Movie Name Company" based in Encino, California. Again, Mr. Yomtobian lost a series of arbitration decisions under the UDRP.   E.g., Laure Pester (Lorie) And Sony Music Entertainment France SA v. Movie Name, No. D2003 0312 (WIPO June 5, 2003); Yahoo! Inc. And Hotjobs.Com, Ltd. v. Saeid Yomtobian D/B/A Movie Name Inc., $$$ Buy This Domain $$$ Buy This Domain $$$ and ***Desperate***$250 Buy It Today, It Won't Last, No. FA 0304000154591 (Nat. Arb. Forum May 30, 2003) (multiple variants of Complainants’ registered marks held in bad faith); Playboy Enterprises, Complainant v. Movie Name Company, No. D2001 1201 (WIPO Feb. 26, 2002); (several domain names, each featuring "playboy").

 

Yomtobian’s strategy shifted again in 2002.  The case of Airport Authority v. Hong KongAirport Inc., No. D2001-1417 (WIPO March 27, 2002) involved the domain name “Hong KongAirport.com” which was registered by Mr. Yomtobian in his own name in 1998, shortly before the Complainant’s airport opened.  Thereafter he played his own version of a shell game with the domain name, which the panelist was able to set out in detail in an opinion granting the Complainant’s request for transfer:

 

“As of March 19, 2001, the registrant of the disputed domain name was Yomtobian Enterprises Inc. of PO Box 260920 Encino, California. On March 29, 2001 the Complainant wrote to Yomtobian Enterprises Inc. asking it to cancel the registration but received no reply. By June 12, 2001, the registrant had changed from Yomtobian Enterprises Inc. to Movie Name Company, also of PO Box 260920 Encino, California, with Yomtobian Enterprise [sic] Inc. of PO Box 260920 Encino, California as Administrative Contact and Yomtobian Enterprises Inc. of PO Box 260920 Encino, California as Billing Contact.”

 

“On August 1, 2001, the Complainant's representative wrote to Movie Name Company asking it to transfer the disputed domain name to the Complainant. This was refused.  The registration details for the disputed domain name have changed constantly since Movie Name Company first became aware of the Complainant's complaint on August 1, 2001. By October 8, 2001, the address for the registrant, Movie Name Company, had changed to the Malibu street address shown in paragraph 1 above for the Respondent. The Administrative and Billing contacts had changed to Hong KongAirport Inc. at that same street address. By November 28, 2001 the registrant had changed from Movie Name Company to the Respondent while all other registration details remained the same as those of October 8, 2001. The web pages of the disputed domain name also have remained unchanged.”

 

The street address referred to in the foregoing decision is none other than the address of “Rocky Production,” the registrant in the instant case: 23852 Pacific Coast Highway, Unit 720, in Malibu, CA.   The relationship between the business operating at this street address and the “Respondent” in the case under consideration was further elucidated in Bayerische Motoren Werke AG v. bmwcar.com, No. D2002-0615 (WIPO Aug. 27, 2002) in which the panelist made the following observation:

 

“In February 2002, the Domain Name was connected to a website featuring a search engine relating to a number of activities, including notably gambling, finance, computers, and travel. The website also contained the following statement: "This domain name is for sale". At the time, the Domain Name was registered in the name of “(This Domain is For Sale)", 23852, Pacific Coast Highway Suite 720 Malibu, CA 90265, USA. The administrative contact was a company named Success Incorporated. By letter of February 13, 2002, to Success Incorporated, the Complainant requested the latter to cease the use of the "BMW" trademarks and to transfer the Domain Name to the Complainant. On February 27, 2002, the Complainant received an e-mail from a person named Karim [Yomtobian][1],  who stated that he had owned the Domain Name since 1998 and had spent USD 750.- for it (including registration fees until 2004). Karim offered to transfer the Domain Name against payment of the amount of USD 750." [Emphasis supplied.]

"The Sole Panelist is aware of the fact that, when the offer was made, the Domain Name was registered in the name of (This Domain is for Sale), and not in the name of the Respondent. At the time the Complaint was filed with the Center, the owner of the Domain Name was <bmwcar.com>. However, the Sole Panelist notes that the address of the owner of the Domain Name remained the same [i.e., 23852 Pacific Coast Highway, Unit 720, Malibu, CA]. The address was modified after the Complaint was filed. The Sole Panelist agrees with the Complainant's statement that the modification of the contact details was likely made with the purpose of avoiding liability under the UDRP."

The domain names, RockyProduction.com and RockyProductions.com are registered, at the Malibu address, to "Success", which in turn was listed as the administrative contact in the Bayerische Motoren Werke case, supra. There simply isn’t any question here that Yomtobian is still up to his old tricks. He registers domain names that infringe others’ trademarks under the names of non-existent companies, and while he no longer is dumb enough to try to sell those domain names to the owners of the marks, he still manages to profit by collecting click-through fees from persons enter the domain names he registers into their browsers in the course of  looking for the trademark owners’ websites.

The unassailable fact that Respondent (or perhaps more accurately, the persons behind the façade of the Respondent’s name) is engaged in a pattern of cybersquatting activities supports the finding that Respondent registered the disputed name in order to divert users to Respondent’s website, pursuant to Policy 4(b)(ii). Lee Enterprises, Inc. v. Yong Li, FA 0401000226439 (March 1, 2004). See also, Lee Enterprises, Inc. v. John Barry And Domain For Sale, Inc., FA0301000142045 (Nat. Arb. Forum Feb 24, 2003) (engaging habitually in typosquatting is evidence of bad faith registration); YAHOO! Inc. v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy 4(b)(ii) in Respondent's registration of two domain names incorporating Complainant's YAHOO! mark); Australian Stock Exch. v. Cmty. Internet, 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 businesses); Pep Boys Manny, Moe, & Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that, where Respondent registered many domain names, held them hostage, and prevented the owners from using them, the behavior constituted bad faith).  While Yomtobian's methods have changed over the years, his ultimate goal has not: to trade on the goodwill generated at considerable effort and expense by others’ branding efforts in order to line his own pockets. 

 

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

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 continuously and extensively since August 31, 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 <flagstafflive.com> domain name on September 14, 2000.  Respondent’s disputed domain name resolves to a website that displays related and unrelated third-party website links.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant is not required to own a trademark registration to establish rights in the FLAGSTAFF LIVE! mark under Policy ¶4(a)(i).  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); 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”). 

 

Complainant established common law rights in the FLAGSTAFF LIVE! mark prior to its October 22, 2002 federal trademark registration with the USPTO through continuous and extensive use of the mark since August 31, 1995.  The Panel finds Complainant’s continuous use of the mark and the popularity of the corresponding publication in Northern Arizona is sufficient to find Complainant’s mark has acquired secondary meaning and Complainant has established common law rights in the mark.  See 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); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”). 

 

Respondent’s <flagstafflive.com> domain name is confusingly similar to Complainant’s FLAGSTAFF LIVE! mark under Policy ¶4(a)(i) as it uses Complainant’s mark with the omission of the exclamation point in the disputed domain name.  The Panel finds such an omission is not enough to negate the confusing similarity between Complainant’s mark and Respondent’s disputed domain name.  See 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); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark").

 

The Panel finds Policy ¶4(a)(i) satisfied.

 

Rights or Legitimate Interests

 

Complainant has alleged Respondent lacks rights or legitimate interests in the <flagstafflive.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 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”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). 

 

Respondent’s failure to answer the Complaint raises a presumption Respondent has no rights or legitimate interests in the <flagstafflive.com> domain name.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”).  However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶4(c).

 

Complainant asserts Respondent is not authorized to use Complainant’s FLAGSTAFF LIVE! mark and Respondent is not associated with Complainant in any way.  Respondent’s WHOIS information does not suggest 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), the panel found no rights or legitimate interests where the respondent was not commonly known by the mark and had never applied for a license or permission from the complainant to use the trademarked name.  See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).  Accordingly, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii). 

 

Respondent is using the <flagstafflive.com> domain name to redirect Internet users to a website that displays links that are both related and unrelated to Complainant, presumably for the commercial benefit of Respondent through click-through fees.  In WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003), the panel found that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably received a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy.  See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”).  The Panel finds Respondent’s use of the <flagstafflive.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 Policy ¶4(a)(ii) satisfied.

 

Registration and Use in Bad Faith

 

Complainant has alleged Respondent acted in bad faith by registering and using the disputed domain name that contains Complainant’s mark.  Respondent is using the <flagstafflive.com> domain name to redirect Internet users to a website featuring links to related and unrelated third-party websites.  The Panel finds, based on the uncontested evidence in the record, Respondent is using Complainant’s mark in such a way for its own commercial benefit through receiving click-through fees.  Moreover, Respondent’s disputed domain name is capable of creating confusion as to the source and affiliation of Complainant to the <flagstafflive.com> domain name.  Collectively, these factors constitute bad faith registration and use under Policy ¶4(b)(iv).  See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the 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)). 

 

The Panel finds Policy ¶4(a)(iii) satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <flagstafflive.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated:  August 18, 2006

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum