LA PRESSE, LTÉE v. WhoisGuard, Inc.
Claim Number: FA1703001720989
Complainant: LA PRESSE, LTÉE of Montréal, Quebec, Canada.
Complainant Representative:
Complainant Representative: ROBIC, LLP of Montréal, Quebec, Canada.
Respondent: WhoisGuard, Inc. of Panama, Panama, International, PA.
Respondent Representative: none
REGISTRIES and REGISTRARS
Registries: .CLUB DOMAINS, LLC
Registrars: NameCheap, 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 Examiner in this proceeding.
Honorable Charles K. McCotter, Jr. (Ret.), as Examiner.
Complainant submitted: March 9, 2017
Commencement: March 13, 2017
Default Date: March 28, 2017
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the
URS complaint is filed.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad
faith.
a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
IDENTICAL OR CONFUSINGLY SIMILAR
Complainant publishes LA PRESSE, a French-language daily newspaper in Montreal since 1884 and operates the largest newsroom in the Canadian province of Quebec. The Complainant’s content is distributed on several platforms, including a digital edition for tablets, mobile applications, the web and paper. The trademark “LA PRESSE .CA (&DESSIN)” is the Complainant’s mark
used in association with its website accessible via the domain name <lapresse.ca>, which comprises a general news section accessible at a URL comprising the string “lapresse.ca/actualites”.
The Complainant contends that the WHOIS record is for the second level domain “caactualites” within the “.club” generic top level domain (gTLD), and that the Registrant has registered and is using the third level domain “lapresse”, within the second level domain “caactualites” of the gTLD “.club”. (“actualités” is a French synonym for “news”.) The Complainant argues that <lapresse.caactualites.club> as a whole is confusingly similar to the Complainant’s trademark. Complainant cites three UDRP decisions where confusing similarity was found between the third-level portion of the domain name and the the trademark. See PHE, Inc. v. Namesecure Inc. / eOnLineBuyer / James King, Case No. D2012-0109 (WIPO April 2, 2012) (“The third-level portion of the Domain name, ‘adamandeve,’ which provides the sole basis for comparison with Complainant’s trademarks, is confusingly similar to Complainant’s ADAM & EVE trademark.”); The Coca-Cola Company v. David Vass and British Independent Party, Case No. 2009-1741 (WIPO February 16, 2010) (“The registration is of the third-level domain <coca-cola> within the second-level domain <.eu> of the gTLD <.com>.”); Neways, Inc. v. Miguel Jimenez, Case No. D2012-1426 (WIPO August 29, 2012) (As to the domain name <neways.us.com>,“ the panel found “the relevant portion of the Domain Name, ie., the third-level domain, is identical to the NEWAYS mark.”). In each of these cases, the third level domain was part of the registered domain name. Here, the registered domain name at issue is <ca-actualites.club>, not <lapresse.caactualites.club>. Therefore, the domain name <ca-actualites.club> is not confusingly similar or identical to Complainant’s “LA PRESSE .CA (&DESSIN)” mark under URS Procedure 1.2.6.1(i).
RIGHTS OR LEGITIMATE INTERESTS
REGISTRATION AND USE IN BAD FAITH
As Complainant has failed to prove the first element, it is unnecessary to address the second and third elements.
After reviewing the Complainant’s submissions, the Examiner determines that the Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name be RETURNED to the control of Respondent.
Honorable Charles K. McCotter Jr., (Ret.), Examiner
Dated: March 30, 2017
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