DECISION
Dow Jones & Company, Inc. v. IT UNIT / REOTECH LLC / Javier Zelaya / MB Daily LLC / Karla Merida / [Name Redacted] / One West Realty Group LLC
Claim Number: FA2501002137536
PARTIES
Complainant is Dow Jones & Company, Inc. ("Complainant"), represented by AJ Schumacher of Kelly IP, LLP, District of Columbia, USA. Respondent is IT UNIT / REOTECH LLC / Javier Zelaya / MB Daily LLC / Karla Merida / [Name Redacted] / One West Realty Group LLC ("Respondent"), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wsjdigitalsubscription.net>, <wsjrenewal.net>, <wsjnewspaper.net>, <wsjprintedition.net>, <wallstjnl.com>, <wsjprintdelivery.com>, <wsjline.com>, <wsjprintsubscription.com>, <wsjprintversion.com>, <wsjsubscriptiondeals.com>, <wsjdistribute.com>, and <barronsnews.net> ("the Domain Names"), registered with Wild West Domains, LLC, GoDaddy.com, LLC, IONOS SE, and FastDomain Inc.
PANEL
Alan L. Limbury, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on January 29, 2025. Forum received payment on January 29, 2025.
On January 29, 2025, January 30, 2025 and February 3, 2025, Wild West Domains, LLC, GoDaddy.com, LLC, IONOS SE and FastDomain Inc. confirmed by e-mail to Forum that the Domain Names are registered with Wild West Domains, LLC, GoDaddy.com, LLC, IONOS SE and FastDomain Inc. and that Respondent is the current registrant of the names. Wild West Domains, LLC, GoDaddy.com, LLC, IONOS SE and FastDomain Inc. have verified that Respondent is bound by the Wild West Domains, LLC, GoDaddy.com, LLC, IONOS SE and FastDomain Inc. registration agreements 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 February 6, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 26, 2025 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@wsjdigitalsubscription.net, postmaster@wsjrenewal.net, postmaster@wsjnewspaper.net, postmaster@wsjprintedition.net, postmaster@wallstjnl.com, postmaster@wsjprintdelivery.com, postmaster@wsjline.com, postmaster@wsjprintsubscription.com, postmaster@wsjprintversion.com, postmaster@wsjsubscriptiondeals.com, postmaster@wsjdistribute.com, and postmaster@barronsnews.net. Also on February 6, 2025, 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, Forum transmitted to the parties a Notification of Respondent Default.
On February 27, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 Names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Paragraph 3(c) of the Rules provides that a "complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder". Paragraph 1(d) of the Forum's Supplemental Rules defines "The Holder of a Domain Name Registration" as "the single person or entity listed in the registration information, as verified by the Registrar, at the time of commencement" and sub-paragraph 1(d)(i) provides that a Complainant wishing to make an argument for a single Respondent having multiple aliases must comply with Supplemental Rules 4(c) and 17(a)(i).
Complainant has shown that the Domain Names are effectively controlled by the same person and/or entity, which is operating under several aliases.
Hence this decision refers to IT UNIT / REOTECH LLC / Javier Zelaya / MB Daily LLC / Karla Merida / [Name Redacted] / One West Realty Group LLC as "Respondent".
PRELIMINARY ISSUE: IDENTITY THEFT
According to Policy paragraph 4(j), "[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision." In Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Forum May 19, 2005) the panels omitted the respondents' personal information from the decisions, pursuant to Policy paragraph 4(j), in an attempt to protect the respondents who claimed to be victims of identity theft.
On February 12, 2025, [Name Redacted] emailed Forum regarding the domain name <wsjline.com>, stating:
"I received a notice in the mail from Forum about some dispute concerning domain names. My name is listed as one of the people it is against.
I do not understand as I have never registered a domain name, would not know how to do it and besides the written letter have never received any notice about this.
I looked at the email addresses given #3 of the letter and have never seen or have no knowledge of such addresses. If anyone has opened those email addresses with my name, it is fraudulent."
On February 12, 2025, Forum forwarded Respondent's email to Complainant.
On February 14, 2025, Complainant emailed Forum and [Name Redacted], saying it was OK for the Panelist to redact the name in which the <wsjline.com> domain name was registered from the published decision.
Based on these communications, the Panel is satisfied that [Name Redacted] had nothing to do with the registration of the <wsjline.com> domain name and that Respondent registered that domain name in the name of [Name Redacted] without the knowledge or authorization of [Name Redacted]. This constitutes identity theft.
Accordingly, pursuant to Policy paragraph 4(j), the Panel determines it appropriate in the circumstances of this case that the name of the person listed in the WHOIS registration information in relation to the <wsjline.com> domain name at the time of commencement of this proceeding be redacted.
PARTIES' CONTENTIONS
A. Complainant
Founded in 1882, Complainant is a world-renowned global provider of news and business information, including through its newspaper published under the famous and federally registered marks THE WALL STREET JOURNAL and WSJ ("the WSJ marks"), first published in 1889.
Complainant's digital products include an online edition of the newspaper located at the website accessible via the domain names <wsj.com> and <thewallstreetjournal.com>, which Complainant registered in 1994 and 1998, respectively.
Another of Complainant's premier properties is the BARRON'S publication, first published in 1921. Complainant owns the famous and federally registered mark BARRON'S. The BARRON'S publication and the publications offered in connection with the WSJ marks are highly associated with each other.
The ten WSJ-formative domain names are confusingly similar to Complainant's WSJ mark; the <wallstjnl.com> domain name is confusingly similar to Complainant's THE WALL STREET JOURNAL mark; and the <barronsnews.net> domain name is confusingly similar to Complainant's BARRON'S mark.
Respondent has no rights or legitimate interests in the Domain Names. Respondent is not commonly known as any of the Domain Names. Complainant has not authorized Respondent to use or register any of Complainant's marks in any manner, nor is Respondent a current or former licensee of Complainant and Complainant's marks. Respondent uses or has used all the Domain Names other than <wsjprintversion.com> to pass itself off as Complainant while purporting to provide identical, competing, similar, or related subscription services to Complainant's publications and, in most instances, to third-party publications. This does not amount to a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The <wsjprintversion.com> domain name currently resolves to a website that prominently displays Complainant's WSJ mark and "Lorem ipsum" placeholder text, which suggests that the website is incomplete or is a sham.
Respondent registered and has used the Domain Names in bad faith. Respondent had actual knowledge of Complainant and its marks prior to registering and using the Domain Names, eleven of which currently resolve, or previously revolved, to websites that display and reproduce—without authorization—Complainant's marks and purport to provide subscriptions to Complainant's publications. The evidence shows that Respondent intentionally attempted to attract, for commercial gain, Internet users to the websites located at all of the Domain Names by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Domain Names, the associated websites, and/or Respondent's activities.
The <wsjprintversion.com> domain name currently resolves to a website that prominently displays Complainant's WSJ mark as part of the wording "WSJ PRINT VERSION" in the website's upper-left-hand corner but otherwise displays various "Lorem ipsum" placeholder text, which suggests that the website is incomplete or is a sham. The domain names <wsjdistribute.com>, <wsjsubscriptiondeals.com> and <barronsnews.net> currently resolve to pages displaying a "default" message or indicating that the page "does not exist or is not available." The current use of these 4 domain names to resolve to incomplete, sham, or inactive websites supports a finding of bad faith registration and use.
Respondent's registration of these 12 Domain Names, as well as the domain names from three prior cases, Dow Jones v. Reotech, FA2309002061489 (Forum Oct. 12, 2023), Dow Jones v. Lin, FA2211002018619 (Forum Jan. 16, 2023), and Dow Jones v. Lin, FA2304002042463 (Forum June 28, 2023), constitutes a bad-faith pattern under UDRP ¶ 4(b)(ii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant has established all the elements entitling it to relief.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").
Identical and/or Confusingly Similar
Complainant has shown that it has rights in the THE WALL STREET JOURNAL, WSJ and BARRON'S marks through registrations with the USPTO (e.g., THE WALL STREET JOURNAL, Reg. No. 0,408,379 registered on August 8, 1944; WSJ, Reg. No. 3,568,522 registered on January 27, 2009; and BARRON'S, Reg. No. 1,118,216 registered on May 15, 1979).
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0 "), section 1.7.
The inconsequential "net" and ".com" generic top-level domains ("gTLDs") may be ignored under this element. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
The Panel finds each of Respondent's <wsjdigitalsubscription.net>, <wsjrenewal.net>, <wsjnewspaper.net>, <wsjprintedition.net>, <wsjprintdelivery.com>, <wsjline.com>, <wsjprintsubscription.com>, <wsjprintversion.com>, <wsjsubscriptiondeals.com> and <wsjdistribute.com> domain names to be confusingly similar to Complainant's WSJ mark, only differing by the addition of one or more of the words "digital", "subscription", renewal", "newspaper", "print", "edition", "delivery", "line", "version", "deals" and "distribute", none of which, alone or together, are sufficient to distinguish the domain names from Complainant's mark and instead evoke Complainant's business.
The Panel finds Respondent's <wallstjnl.com> domain name to be confusingly similar to Complainant's THE WALL STREET JOURNAL mark, merely omitting the spaces and the word "the" and substituting the abbreviations "st" and "jnl" for "STREET" and "JOURNAL".
The Panel finds Respondent's <barronsnews.net> domain name to be confusingly similar to Complainant's BARRON'S mark, merely omitting the apostrophe and adding the word "news", which evokes Complainant's business.
Complainant has established this element.
Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the Domain Names for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the Domain Names or names corresponding to the Domain Names in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the Domain Names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Domain Names were registered between July 22, 2022 and January 3, 2024, in each case many years after Complainant has shown that its THE WALL STREET JOURNAL, WSJ and BARRON'S marks had become famous worldwide.
The <wsjdigitalsubscription.net>, <wsjrenewal.net>, <wsjnewspaper.net>, <wsjprintedition.net>, <wsjprintdelivery.com>, <wsjline.com>, <wsjprintsubscription.com> and <wallstjnl.com> domain names resolve to websites that prominently display Complainant's WSJ marks and purport to provide subscriptions to Complainant's publications and to competing publications, such as THE NEW YORK TIMES and THE ECONOMIST.
The <wsjdistribute.com>, <wsjsubscriptiondeals.com> and <barronsnews.net> domain names do not currently resolve to active websites but previously resolved to websites similar to those mentioned above.
The <wsjprintversion.com> domain name resolves to a website which prominently displays Complainant's WSJ mark together with "Lorem ipsum" placeholder text.
These circumstances, together with Complainant's assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Domain Names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the Domain Names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Names.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the Domain Names in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the, Domain Names Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant's famous THE WALL STREET JOURNAL, WSJ and BARRON'S marks when Respondent registered the Domain Names and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's websites, by creating a likelihood of confusion with Complainant's marks as to the source of Respondent's websites and of the services promoted on those websites. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wsjdigitalsubscription.net>, <wsjrenewal.net>, <wsjnewspaper.net>, <wsjprintedition.net>, <wallstjnl.com>, <wsjprintdelivery.com>, <wsjline.com>, <wsjprintsubscription.com>, <wsjprintversion.com>, <wsjsubscriptiondeals.com>, <wsjdistribute.com>, and <barronsnews.net> Domain Names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: March 1, 2025
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