National Arbitration Forum

 

DECISION

 

U.S. News & World Report, Inc. v. Lai Zhongqi

Claim Number: FA0702000917070

 

PARTIES

Complainant is U.S. News & World Report, Inc. (“Complainant”), represented by Mark Lerner, of Satterlee Stephens Burke & Burke LLP, 230 Park Avenue, New York, NY 10169.  Respondent is Lai Zhongqi (“Respondent”), represented by Sun Ying Room 801, Yunhai Mansion, 1329 Central Huaihai Road, Shanghai 200031, P.R.China.

 

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <usnews.mobi>, registered with Invisibledomains.com Inc.

 

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.

 

David P. Miranda, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 14, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 16, 2007.

 

On February 20, 2007, Invisibledomains.com Inc. confirmed by e-mail to the National Arbitration Forum that the <usnews.mobi> domain name is registered with Invisibledomains.com Inc. and that the Respondent is the current registrant of the name.  Invisibledomains.com Inc. has verified that Respondent is bound by the Invisibledomains.com 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 February 23, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 15, 2007 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@usnews.mobi by e-mail.

 

A timely Response was received and determined to be complete on March 15, 2007.

 

Additional Submissions were received on March 20, 2007, and March 26, 2007, in compliance with Supplemental Rule 7.

 

On March 19, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David P. Miranda, Esq., as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant U.S. News & World Report (“Complainant”) bases its Complaint on the following U.S. trademark registrations: the registered trademark U.S. NEWS (U.S. Reg. No. 1,550,917) used in connection with the title of a magazine and a section of the same magazine; the registered trademark USNEWS.COM (U.S. Reg. No. 2,078,722) used in connection with on-line electronic general interest magazine services accessible via global computer network; and the registered trademark U.S. NEWS & WORLD REPORT (U.S. Reg. No. 847,644) used in connection with periodical magazines.

 

Complainant contends that the marks are used for its famous magazines that are widely distributed throughout the United States and globally.  Founded in 1933 as United States News, the print version of the magazine merged with World Report in 1948 and has been in wide and continuous circulation since that year as U.S. News & World Report.  U.S. News has gained global recognition for the outstanding news coverage in its magazines, as well as its periodic surveys and rankings, including those of institutions of higher learning.  Complainant operates the website <usnews.com>, which provides access to online editions of its magazine, as well as archives of past articles, surveys and special issues, among other information and services.  Respondent’s domain name, <usnews.mobi>, is identical to the Complainant’s registered trademark U.S. NEWS, except for the punctuation in the disputed domain name and its inclusion of a top-level domain, in this case .mobi.  Respondent’s Domain’s name, <usnews.mobi>, is also identical to Complainant’s registered trademark USNEWS.COM, except that the .mobi top-level domain is substituted for the .com top-level domain.  Respondent is the owner and operator of <usnews.mobi>, a website consisting in one page only, which indicates “This site is under construction ….  It is a pure non-profit and individual site, and has no connection with any other party,” and “This domain is NOT for sale or cooperation, please do NOT waste our time by sending such inquiries or offers.”  The domain has no apparent connection to the United States, to news or to news about the United States.  Respondent has no rights to any of the U.S. NEWS Trademarks.  Complainant further contends Respondent is attempting to exploit the substantial good will that the U.S. NEWS Trademarks have continuously accumulated over more than fifty years.

 

 

B. Respondent

 

Respondent Lai Zhongqui (“Respondent”) registered the disputed domain name September 26, 2006.  Respondent contends that the trademarks the Complainant held in U.S. are not well-known in P.R. China. The Respondent does not know the complainant and the trademarks in which the Complainant has rights.  The disputed domain name is not identical to the trademarks “U.S. NEWS”, “USNEWS.COM”, “U.S. NEWS & WORLD REPORT” in which the Complainant has rights.  The word “usnews” does not have the sole connection with the Complainant, its related products or services.  Additionally, “usnews” has many meanings. The Respondent uses “usnews” as the domain name because the blog group consisting of Respondent and his friends is called “Us”, and the website is used as a space for the blog group to share their latest news.  The Respondent’s personal website <usnews.mobi> has nothing related to the Complainant.

 

The Respondent registered the disputed domain name for the personal website construction on September 26, 2006. The Respondent also rented a server for that website. After several months of preparation, the personal website “Us news” was launched on March 11, 2007, it works for Respondent and his friends sharing their news.  The Respondent registered and is running the website <usnews.mobi> with no business purpose.

 

Respondent further contends that Complainant is engaging in reverse domain name hijacking, under ICANN Rule 15(e), because Complainant has its own website at <usnews.com>, and did not register the <usnews.mobi> domain during the relevant trademark sunrise registration period, and Complainant does not have trademark rights in P.R. China.

 

 

C. Additional Submissions

 

Complainant in its additional submissions alleges that there is no doubt that the disputed domain name <usnews.mobi> is identical to the U.S. NEWS trademarks.  Further, Complainant contends that there is no indication that Respondent was acting in the community as “US News” prior to registration of the domain, and that the domain was in fact used for commercial purpose, namely, supplying links to networks of advertisers.  Complainant contends that Respondent was acting in bad faith because the domain was “parked” with links to advertisers.  Finally, Complainant contends that Respondent’s claim of reverse domain name hijacking is wholly unsupported.  Respondent in its additional submissions contends that its website was “parked” for several months with <pool.com> that forwarded the website to a page with links, but Respondent was unaware of this practice and did not personally benefit commercially from this conduct.

 

FINDINGS

 

The panel finds that Complainant is the owner of the registered marks U.S. NEWS and USNEWS.COM, and U.S. NEWS & WORLD REPORT, and Respondent’s domain name <usnews.mobi> is identical or confusingly similar to at least one of its registered trademarks.  It also finds that Complainant has established the requisite requirements that Respondent has no legitimate rights in the domain name, and that Respondent acted in bad faith, and the domain name should be transferred to the Complainant.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

 

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the 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 asserts rights in the U.S. NEWS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,550,917 issued August 8, 1989).  Complainant’s timely registration and subsequent use of the U.S. NEWS mark is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i).  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 U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”).

 

Complainant further asserts that Respondent’s <usnews.mobi> domain name is identical or confusingly similar to Complainant’s U.S. NEWS mark.  The disputed domain name contains Complainant’s mark in its entirety, eliminates the periods after the letter “u” and the letter “s,” eliminates the space between “us” and “news” and adds the generic top-level domain (“gTLD”) “.mobi.”  Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).  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 Tech. Props., Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9, 2000) (finding that the domain name <radioshack.net> is identical to the complainant’s mark, RADIO SHACK); 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.”).

 

 

Rights or Legitimate Interests

 

Complainant asserts that Respondent is not using the disputed domain name to resolve to any content.  Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interests can be found when the respondent fails to use disputed domain names in any way).

 

Complainant further alleges that Respondent is not commonly known by the disputed domain name.  A review of Respondent’s WHOIS information reveals that the registrant of the disputed domain name is “Lai Zhongqi.”  Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).

 

Complainant makes a prima facie case in support of its allegations, and the burden shifts to Respondent to show that 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 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).  Respondent has failed to meet this burden.

 

 

Registration and Use in Bad Faith

 

At the time Complainant filed its Complaint, Respondent had not associated any content with its disputed domain name.  Respondent’s failure to provide content with its disputed domain name evinces registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).  See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”).  Furthermore, there is proof that the domain reverted to a site with commercial links for a period of time.

 

Respondent’s claim that it is using the website merely for the purposes of a non-commercial blog with friends, is not persuasive, since Respondent admits that even though the domain was owned for six months the blog did not start until three days before Respondent’s response to the Complaint was due.  Respondent fails to provide any documentary support to dispute the commercial links that Complainant alleges appeared on the site prior to the commencement of these proceedings.

 

 

Reverse Domain Name Hijacking

 

Respondent fails to set forth proof establishing its claim of reverse domain name hijacking, and it is denied.

 

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 <usnews.mobi> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

David P. Miranda, Esq., Panelist
Dated: April 9, 2007

 

 

 

 

 

 

National Arbitration Forum