WP Company LLC v. Webseed Publishing
Claim Number: FA1803001775738
Complainant is WP Company LLC (“Complainant”), represented by Tracy-Gene G. Durkin of Sterne, Kessler, Goldstein & Fox P.L.L.C., District of Columbia, United States of America (“USA”). Respondent is Webseed Publishing (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wapo.news> (“Domain Name”), registered with GoDaddy.com, LLC (“Registrar”).
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Clive Elliott QC as Chair
The Honourable Neil Anthony Brown QC; and
The Honourable John J. Upchurch (ret.) as Panelists.
Complainant submitted a Complaint to the Forum electronically on March 13, 2018; the Forum received payment on March 13, 2018.
On March 15, 2018, the Registrar confirmed by e-mail to the Forum that the Domain Name is registered with the Registrar and that Respondent is the current registrant of the name. The Registrar has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 19, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 9, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@wapo.news. Also on March 19, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 19, 2018, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Clive Elliott QC as Chair, the Honourable Neil Anthony Brown QC and the Honourable John J. Upchurch (ret.) as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
Complainant states that it is a limited liability company with its principal place of business in Washington D.C, USA. It also contends that in the media industry and among the public at large, it is also known as “WaPo,” which is a short-form of “The Washington Post.”
Complainant states that it publishes “The Washington Post” newspaper (“Complainant’s newspaper”), an American daily newspaper, which was first published in 1877, and has been continuously published ever since. Complainant’s newspaper is one of a few USA newspapers with foreign bureaus, having 25 correspondents in 18 bureaus located around the world.
Complainant asserts that Complainant’s newspaper is regarded as a leading daily newspaper in the USA and abroad. It has distinguished itself through its political reporting on the workings of the White House, Congress, and other governments around the world, and has won over 47 Pulitzer Prizes.
Complainant contends that Complainant’s newspaper, in both its print and digital versions, is a credible and highly-respected publication of great reach and readership across the USA and the world.
Complainant asserts that in May 1996 it launched its website at <washingtonpost.com> (Complainant’s website”), establishing an online presence for the digital version of Complainant’s newspaper and other media products. It also contends it is the owner of two other domain names <washingtonpostnews.com> and <wapo.com>, both of which redirect to Complainant’s website.
|
1. |
THE WASHINGTON POST |
U.S. Registration No.: 1665832 |
Registered: November 26. 1991 |
|
2. |
|
U.S. Registration No.: 1665831 |
Registration: November 26, 1991 |
|
3. |
THE WASHINGTON POST NEWS MEDIA SERVICES |
U.S. Registration No.: 4326925 |
Registration: April 30, 2013 |
|
4. |
THE WASHINGTON POST |
EUIPO Registration No. 000658682 |
Registration: August 1, 2000
|
|
5. |
WASHINGTONPOST.COM |
U.S. Registration No.: 2346367 |
Registration: May 2, 2000 |
(“Complainant’s Marks”)
Complainant asserts that it has long used “WaPo” or “wapo” with at least social media accounts, URLs for use in social networking, SMS, and email, as well as in promotional campaigns for its print and digital newspaper subscriptions.
Complainant submits that these long-established uses are strong evidence that the general public and consumers readily identify “WaPo” and Complainant’s mark THE WASHINGTON POST as one in the same. Complainant also states that it has common law rights in the synonymous and interchangeable term WAPO for its news and information products and services.
Complainant further submits that the Domain Name is confusingly similar to Complainant’s mark WAPO and to the marks that WAPO is interchangeable or synonymous with -- THE WASHINGTON POST and WASHINGTONPOST.COM, as the Domain Name consists solely of the term WAPO, with no other source-distinguishing, non-URL element.
Complainant states that Respondent can demonstrate no legitimate purpose for registering the Domain Name, nor has it been commonly known by the Domain Name.
Complainant claims that Respondent is not making legitimate noncommercial or fair use of the Domain Name, without intending to mislead and divert consumers, or to tarnish Complainant's WAPO mark or the marks THE WASHINGTON POST and WASHINGTONPOST.COM for commercial gain.
Complainant also claims that Respondent primarily uses the Domain Name to usurp Internet traffic rightly intended for Complainant to (a) advance Respondent’s own commercial activities, which include publishing articles specific to Respondent’s agenda and not all specifically related to Complainant or to Complainant’s journalism and (b) advertise products for Respondent’s affiliate, Mike Adams, the “Health Ranger”.
Respondent’s website contains articles and posts by journalists affiliated with Respondent on a variety of topics, including current events, politics, culture, and society, many of which are unrelated to Complainant per se (and contrary to any possible, non-commercial fair use claim). As such, Respondent uses the Domain Name to divert Internet users looking for Complainant’s website to Respondent’s for Respondent’s own commercial publishing activities, which are in direct competition with Complainant for readers of news and other online content.
Respondent additionally uses the Domain Name to divert readers to Respondent’s website to advertise a variety of “Health Ranger” products, all for Respondent’s commercial gain or for the commercial gain of Respondent’s affiliate.
Complainant argues that as Complainant’s mark is famous, Respondent cannot credibly assert that it was not aware of Complainant’s mark at the time that Respondent registered the Domain Name and that Respondent registered the Domain Name with an explicit intent to trade off the recognition, overwhelming fame, and goodwill associated with Complainant’s mark.
Respondent is also the Registrant of the domain name washingtonpost.news (subject of a separate UDRP complaint) for a website having the same content as wapo.news, further demonstrating Respondent’s bad faith registration and use of the domain name.
Respondent uses the Domain Name for a website that is similar in appearance and layout to Complainant’s website at washingtonpost.com/wapo.com.
This similarity in appearance --through the use of identical domain names, marks, favicons, and listing of stories/content-- creates the impression that the Domain Name website is related to, associated with, or is in fact Complainant’s washingtonpost.com/wapo.com website, and is in bad faith.
This misappropriation of Complainant’s mark or a synonymous/interchangeable mark/term is particularly damaging, as the stories and other content on Respondent’s website do not embody the credibility and high-standards of journalism provided by Complainant and symbolized by WaPo and the mark THE WASHINGTON POST.
Respondent's activities constitute “typosquatting” in bad faith because Respondent registered and uses the Domain Name to take advantage of Internet users who type the short-form of Complainant's mark and domain names, washingtonpost.com and wapo.com, when attempting to reach Complainant's website.
Until very recently, Respondent’s website did not contain anything to indicate that it is not associated with Complainant. It was only after receiving Complainant’s second demand letter that Respondent initiated use of a “distinguishing” tagline and disclaimer. However, Complainant asserts that both the tagline and disclaimer appear in a very small font, and are barely noticeable (to the extent that they are noticed at all) and do little-to-nothing to negate a likelihood of consumer confusion, particularly in the presence of a website having a name and appearance/stylization essentially identical to Complainant’s, and intended to trade on Complainant’s rights and reputation.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set out below the Panel finds that Complainant prevails and concludes that the Domain Name should be transferred from Respondent to Complainant.
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."
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.
In view of Respondent's failure to submit a response, the Panel decides this proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
Complainant claims rights in the THE WASHINGTON POST mark based upon registration of the mark with the USPTO (e.g. Reg. No. 1,665,832, registered Nov. 26, 1991). Registration of a mark with the USPTO is sufficient to establish rights in that mark. The Panel holds that Complainant’s registration of the THE WASHINGTON POST mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant also claims common law rights in the WAPO mark are based in common law for the purposes of Policy ¶ 4(a)(i), dating back to its first use of the mark in commerce in 2009. Common law rights are typically found through a showing that a secondary meaning in the mark has been created in the minds of the public. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”).
Complainant states that it is known as “WaPo” as a short-hand for “The Washington Post” and has long used the WAPO mark with social media accounts, bitly URLs, SMS, and email, as well as in promotional campaigns for its print and digital newspaper subscriptions. Traditionally, a secondary meaning is also established by evidence of a complainant’s sales figures, expenditures, and any other evidence indicating popularity in the mark as related to the complainant. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”).
Complainant claims it owns the <wapo.com> domain name, which it redirects to it’s website at the <washingtonpost.com> domain name. Complainant claims it has won over 47 Pulitzer Prizes. The Panel is satisfied that Complainant’s contentions are more than sufficient, and concludes that Complainant has established common law rights by showing the WAPO mark has taken on a secondary meaning in association with Complainant’s business.
Complainant next argues that the Domain Name is confusingly similar to the WAPO mark, as the name consists entirely of the mark and the “.news” gTLD.
The Panel accepts that the Domain Name is confusingly similar to the WAPO mark per Policy ¶ 4(a)(i).
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
Complainant argues that Respondent has no rights or legitimate interests in the <wapo.news> domain name, as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the WAPO or THE WASHINGTON POST marks in any way. Where a response is lacking, as is the case here, the Panel relies on WHOIS information to support a finding that Respondent is not commonly known by the Domain Name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”).
The WHOIS information of record identifies the registrant of the Domain Name as “Webseed Publishing,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s marks. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <wapo.news> domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the Domain Name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Rather, Complainant claims Respondent uses the Domain Name to divert Internet users looking for Complainant’s website to Respondent’s for Respondent’s own competitive commercial publishing activities. Use of a domain name to confuse Internet users and compete with a mark holder for commercial gain may not be considered a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). The Panel adopts this reasoning.
Complainant claims, without dispute, that the Domain Name resolves to a website promoting commercial news articles specific to Respondent’s agenda and not at all specifically related to Complainant; and advertising products for Respondent’s affiliate, Mike Adams, the “Health Ranger.”
On that basis the Panel finds Respondent lacks rights and legitimate interests in the Domain Name per Policy ¶¶ 4(c)(i) and (iii).
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Complainant claims Respondent’s use of the Domain Name to pass off as Complainant in order to compete with Complainant’s business demonstrates that Respondent registered and used the Domain Name in bad faith. In the absence of any attempt to refute this claim the Panel finds that this is behavior indicative of bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the Domain Name.
Further, Complainant claims the Domain Name resolves to a website that is remarkably similar in appearance and layout to Complainant’s website. Once again this is not disputed, and Complainant’s argument is accepted. In this regard the Panel finds Respondent registered and used the Domain Name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant also contends that in light of the fame and notoriety of Complainant's WAPO and THE WASHINGTON POST marks, it is inconceivable that Respondent could have registered the Domain Name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel accepts that Respondent must have had actual knowledge of Complainant's rights in the mark prior to registering the Domain Name, given the fame and reputation of at least THE WASHINGTON POST marks and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii).
The Panel so finds in conjunction with Complainant’s further assertion that Respondent’s use of the <washingtonpost.news> domain name (subject of a separate complaint) to display the same content as the Domain Name indicates it had actual knowledge of Complainant’s rights. The Panel accepts this submission and finds Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the Domain Name in bad faith.
Accordingly, it is Ordered that the <wapo.news> domain name be TRANSFERRED from Respondent to Complainant.
Clive Elliott QC, Chair
The Honourable Neil Anthony Brown QC
and
The Honourable John J. Upchurch (ret.)
Dated: May 8, 2018
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