Post-Newsweek Stations, Inc.,
Claim Number: FA0702000924537
PARTIES
Complainant is Post-Newsweek
Stations, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clickondetriot.com>, registered with Lead Networks Domains Pvt. Ltd.
PANEL
The undersigned certifies that she has acted
independently and impartially, and to the
best of her knowledge, has no known conflict in
serving as Panelist in this proceeding.
Carol M. Stoner, Esq. as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National
Arbitration Forum electronically on February 23,
2007; the National Arbitration Forum received a hard copy of the
Complaint on February 26, 2007.
On March 5, 2007,
Lead Networks Domains Pvt. Ltd. confirmed
by e-mail to the National Arbitration Forum that the <clickondetriot.com> domain name is registered with Lead Networks Domains Pvt. Ltd. and that
Respondent is the current registrant of the name. Lead Networks
Domains Pvt. Ltd. has verified that Respondent is bound by the Lead Networks Domains Pvt. Ltd. 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 March 8, 2007, the National Arbitration Forum
received Complainant’s amended Complaint, which document conformed Respondent’s
name and contact information to that currently found in the Registrar’s Whois
database.
On March 9, 2007,
a Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of March 29, 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@clickondetriot.com by e-mail.
A timely Response was received and determined to be
complete on March 29, 2007.
On April 5, 2007, pursuant to Complainant’s request to
have the dispute decided by a single-member Panel, the National Arbitration
Forum appointed Carol M. Stoner, Esq., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name <clickondetriot.com>
be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
The registrant of the domain name <clickondetroit.com> is
Post-Newsweek Stations, Michigan, Inc., d/b/a/ WDIV-TV (“WDIV”) according to
Whois database search report.
WDIV registered said domain name on April 3, 2000, and
first used it shortly thereafter.
Complainant WDIV provides online information in the
fields of news, politics, weather, sports, business, health, real estate,
entertainment, travel and classified advertising at its website, located at <clickondetroit.com>.
WDIV declares that <clickondetroit.com> is
the number one local news website in metro
WDIV bases the instant Complaint upon its common law
rights in its service mark CLICKONDETROIT.
Claimant has a pending United States Patent and Trademark Office
(“USPTO”) service mark application for CLICKONDETROIT (serial number
77/035,928).
Complainant avers that Respondent, Dayanand Kamble,
has registered and has utilized, without authority, the domain name <clickondetriot.com>, which infringes upon WDIV’s
distinctive and famous CLICKONDETROIT service mark, as well as WDIV’s domain
name <clickondetroit.com>.
B. Respondent makes the following assertions:
Respondent Dayanand Kamble denies each and every
allegation in the Complaint, and puts Complainant to strict proof, thereof.
Respondent claims that he wanted to start a social
website on the ill effects of riots and
that he purchased and registered the domain name <clickondetriot.com>
in 2004 for this purpose. He says
that this purchase itself is a demonstration of making preparations to use the
domain name, as provided in UDRP ¶ 4(c)(i).
Respondent states that he is not aware of
Complainant’s common law use of the mark.
Respondent states that Complainant has not approached
the Forum with clean hands,
and furthermore, Complainant is “hand in glove” with the
previous owner of the domain name.
FINDINGS
1. Respondent’s
<clickondetriot.com> domain name is confusingly similar to Complainant’s
common-law-based service mark of CLICKONDETROIT.
2. Respondent
does not have any rights or legitimate interests in the
<clickondetriot.com> domain name.
3. Respondent
registered and used the <clickondetriot.com> domain name in bad
faith.
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 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;
(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.
Complainant asserts common law rights in the
CLICKONDETROIT service mark. Complainant submitted a service mark application
with the United States Patent and Trademark Office (“USPTO”) for the
CLICKONDETROIT mark (Serial No. 77/035,
928, submitted November 3, 2006), but the application
is still pending. Nevertheless, the
Panel finds that a service mark or trademark registration is not required for
Complainant to establish rights in the CLICKONDETROIT mark. See
Complainant has proffered substantial and credible
evidence of extensive, continuous and ongoing commercial use of <clickondetroit.com> and
CLICKONDETROIT.
Complainant registered the <clickondetroit.com> domain name on April 3, 2000, and since
that time has used this domain name to provide online news information on a
variety of topics. Complainant contends
that the website which resolves from the <clickondetroit.com> domain name is the top online provider
of local news in the Detroit area, and Complainant spends nearly $5 million
annually to promote this website on its WDIV television station; and that, on
average, more than 14 million people per month visit Complainant’s website at
the <clickondetroit.com>
domain name for an average of nine minutes spent per visit.
Thus, secondary meaning in the CLICKONDETROIT mark is
established, in that through this extensive, continuous and ongoing use, the
mark functions as a specific identifier of Complainant’s online news services
provided in the
extensive use of that mark to identify the complainant
as the source of broadcast services over the Internet, and evidence that there
is wide recognition with the
BROADCASTAMERICA.COM mark among Internet users as to
the source of broadcast services); see also S.A. Bendheim Co., Inc. v.
Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that
the complainant established rights in the descriptive RESTORATION GLASS mark
through proof of secondary meaning associated with the mark).
Complainant alleges that Respondent’s <clickondetriot.com>
domain name is confusingly similar to Complainant’s CLICKONDETROIT service
mark. The disputed domain name
transposes the letters “i” and “o” in the “
The transposition of the letters “i” and “o” in the
Suffice it to say here, that the resultant slight
spelling variation is not sufficient to distinguish the disputed name from
Complainant’s mark. See Pier 1 Imps., Inc. v. Success Work, D2001-0419
(WIPO May 16, 2001) (finding that the
domain name <peir1.com> is confusingly similar to the complainant's PIER1
mark).
The Panel also finds that the mere addition of a gTLD,
i.e., “.com,” should be disregarded when comparing a domain name to a mark. So the Panel concludes that Policy ¶ 4(a)(i), wherein the domain name is not sufficiently
distinguished from the mark, has been satisfied. See Pomellato S.p.A. v. Tonetti, D2000-0493
(WIPO July 07, 2000) (finding <pomellato.com> identical to the
complainant’s mark because the generic top-level domain (gTLD) “.com” after the
name POMELLATO is not relevant); see also Snow Fun, Inc. v. O’Connor, FA 96578 (Nat. Arb. Forum
Mar. 8, 2001) (finding that the domain name <termquote.com> is identical
to the complainant’s TERMQUOTE mark).
Complainant has also proffered credible evidence that,
not only is the disputed domain name confusingly similar on its face, but also
that the counterfeit domain name has caused actual confusion on the part
of an important advertising customer. In
accordance with Complainant’s Exhibit 10, Affidavit of Ted Pearse, VP/Director
of Sales for WDIV, a client advertiser was misled by the layout of the
counterfeit site into believing that he was at WDIV’s website.
The Panel therefore finds that Policy ¶ 4(a)(i) has been
satisfied.
Rights or Legitimate Interests
Where Complainant has made a prima facie case
that Respondent lacks rights and
legitimate interests in the disputed domain name, the
burden of production shifts to Respondent to show that it does have rights or
legitimate interests under Policy ¶ 4(a)(ii).
See WIPO Overview of WIPO Panel Views on Selected UDRP Issues §2.1;
see also
Document Techs., Inc. v. Int’l Elec. Commc’ns, Inc., D2000-0270 (WIPO June 06, 2000).
In the case at bar, Complainant has made a prima
facie showing that Respondent
lacks a legitimate interest in the disputed domain
name, in that Respondent is not commonly known by the <clickondetriot.com>
domain name. The Whois information
identifies respondent as “Dayanand
Kamble,” and there is no other
evidence in the record indicating that Respondent is commonly
known by the <clickondetriot.com> domain name. See Instron Corp. v. Kaner, FA 768859
(Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly
known by the <shoredurometer.com> and <shoredurometers.com> domain
names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a
Electromatic Equip’t as the registrant of the disputed domain name and there
was no other evidence in the record to suggest that the respondent was commonly
known by the domain names in dispute); see also St. Lawrence Univ. v.
Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a
respondent has no rights or legitimate interests in a disputed domain name
where there is no evidence in the record indicating that the respondent is
commonly known by the disputed domain name).
Respondent does not then meet its burden of production
to show that it does have rights or legitimate interests under Policy ¶ 4(a)(ii). The filed Response consists largely of a
broad denial of all claims, and assertions of Claimant’s inequitable
conduct. The lone substantive responses
are in ¶ 5 wherein he states that “[R]espondent is preparing to use the domains
for bona fide offerings of information to the society” and ¶ 7 wherein he
states that “[R]espondent has full legitimate interest in the domain name as he
has proved demonstration for use of the domain name. Respondent wants to start a social site on
Riots which is of great importance in a country like
Respondent is using the <clickondetriot.com>
domain name to display hyperlinks advertising competing news services. Respondent’s use of the disputed domain name
to operate a website advertising competing news services for Respondent’s own
commercial benefit does not constitute a bona fide offering of goods and
services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii). See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2004) (“Respondent’s appropriation of the SAFLOK mark to market products that
compete with Complainant’s goods does not constitute a bona fide offering of
goods and services”); see also Glaxo Group Ltd. v. WWW Zban, FA
203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not
using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii)
because the respondent used the domain name to take advantage of the
complainant's mark by diverting Internet users to a competing commercial site).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent has registered and has continued to use the
domain name <clickondetriot.com> since 2004. However, there is no reasonable explanation
for the selection of <clickondetriot.com> as a domain name for the
disputed site. Respondent’s answer that
he selected the site name to house a discussion of the social impact of riots, lacks credibility, as there is no accounting for the
“
Respondent is using a confusingly similar domain name,
that is, <clickondetriot.com>,
to display hyperlinks that advertise
news services that compete with Complainant WDIV. The Panel's analysis of the screen prints of Complainant and
Respondent (see Complainant's Exhibits Nos. 5 and 9) is that both sites share
not only the same “look and feel” in graphics and typographics, but also that
both sites share similar content, such as in their listings of hyperlinks for
news outlets and commercial products and services such as travel and mortgages. The Panel rules that Respondent’s registration
and use of the <clickondetriot.com> domain name, in a manner
calculated to divert customers to a competitior’s website, constitute bad faith
pursuant to Policy ¶ 4(b)(iii). See
Tesco Pers. Fin. Ltd. v. Domain Mgmt.
Svcs., FA 877982 (Nat. Arb. Forum
Feb. 13, 2007) (finding that the respondent registered and used the disputed
domain name in bad faith pursuant to Policy ¶ 4(b)(iii) when the disputed
domain name resolved to a website that displayed commercial links to the
websites of the complainant’s competitors); see also Puckett, Individually
v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has
diverted business from the complainant to a competitor’s website in violation
of Policy ¶ 4(b)(iii).
The copycat use of a look-a-like website, clothed in a
confusingly similar name, would likely confuse customers as to the affiliation,
endorsement or sponsorship of the news services advertised on Respondent’s <clickondetriot.com>
domain name. Moreover, WDIV has
proffered credible evidence of actual customer confusion, as discussed in the Identical
and/or Confusingly Similar Section of this Decision. As a result of this trading- off of the name
and reputation of Complainant WDIV, it is a fair inference that Respondent will
gain commercial advantage thereby, both through sponsor advertising and
pay-per-click revenue. The Panel therefore finds, that Respondent has
registered and is using the <clickondetriot.com> domain name in
bad faith pursuant to Policy ¶ 4(b)(iv). See Metro. Life
Ins. Co. v. Bonds, FA 873143 (Nat. Arb.
Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith
registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is
taking advantage of the confusing similarity between the
<metropolitanlife.us> domain name and Complainant’s METLIFE mark in order
to profit from the goodwill associated with the mark.”); 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 also finds that Respondent has engaged in
“typosquatting” through the transposition of the letters “i” and “o” in the “
The Panel therefore finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements under the ICANN
Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <clickondetriot.com>
domain name
be TRANSFERRED from Respondent to Complainant.
Carol M.
Stoner, Esq., Panelist
Dated: April 19, 2007
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