Cass Street Publishers, Inc. v. Whois ID Theft Protection
Claim Number: FA0609000803254
Complainant is Cass Street Publishers, Inc. (“Complainant”), represented by Mary
Reardon of Cass Street Publishers, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <newsgame.com>, registered with Dotster.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 21, 2006; the National Arbitration Forum received a hard copy of the Complaint September 29, 2006.
On September 22, 2006, Dotster confirmed by e-mail to the National Arbitration Forum that the <newsgame.com> domain name is registered with Dotster and that Respondent is the current registrant of the name. Dotster verified that Respondent is bound by the Dotster registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 10, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 30, 2006, 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@newsgame.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 7, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. The domain name that Respondent registered, <newsgame.com>, is identical to Complainant’s NEWS GAME mark.
2. Respondent has no rights to or legitimate interests in the <newsgame.com> domain name.
3. Respondent registered and used the <newsgame.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Cass Street
Publishers, Inc., is a provider of goods and services to teachers, students and
school administrators. Under its NEWS
GAME mark, Complainant and its predecessors in interest have been providing
questions based on current events to schools since at least 1979. Complainant holds a registration with the
United States Patent and Trademark Office (“USPTO”) for the NEWS GAME mark
(Reg. No. 1,206,128 issued August 24, 1982).
Respondent registered the <newsgame.com> domain name April 14, 2003. The disputed domain name resolves to a website that displays hyperlinks to third-party websites.
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."
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(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
The Panel finds that Complainant’s registration with the USPTO sufficiently establishes Complainant’s rights in the NEWS GAME mark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The disputed domain name that Respondent registered, <newsgame.com>, is identical to Complainant’s NEWS GAME mark since the domain name consists of Complainant’s mark in its entirety with the addition of a generic top-level domain (“gTLD”). The addition of a gTLD does not sufficiently distinguish Respondent’s disputed domain name from Complainant’s mark. See Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established with extrinsic proof in this proceeding that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name. Complainant alleged that Respondent lacks such rights to or legitimate interests in the <newsgame.com> domain name. Complainant must first make a prima facie case in support of its allegations, and the burden then shifts to Respondent to show it does have rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Complainant asserts that Respondent is not authorized to use
Complainant’s NEWS GAME mark and that Respondent is not associated with
Complainant in any way. Furthermore,
Respondent’s WHOIS information does not suggest that Respondent is commonly
known by the disputed domain name, and no evidence in the record suggests that
Respondent is or has ever been known by the disputed domain name. In RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb.
Forum May 16, 2001), the panel found that Policy ¶ 4(c)(ii) required a showing
that a respondent has been commonly known by the domain name prior to
registration of the domain name in order to prevail. See Ian Schrager
Hotels, L.L.C. v. Taylor, FA 173369 (Nat.
Arb. Forum Sept. 25, 2003) (finding
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected). The Panel thus finds that Respondent is not
commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent is using the disputed domain name to operate a website that displays links to third-party websites, presumably for the commercial benefit of Respondent through the earning of click-through fees. The Panel finds that such diversion is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names).
The Panel further finds that Respondent’s lack of rights or
legitimate interests in the disputed domain name is evidence by Respondent’s
offer to sell the disputed domain name to Complainant for the amount of
$2,000. See Mothers Against Drunk
Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding
that under the circumstances, the respondent’s apparent willingness to dispose
of its rights in the disputed domain name suggested that it lacked
rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to
sell the domain name suggests it has no legitimate use).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
The Panel finds that Respondent’s offer to sell the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(i). In Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003), the panel found that the respondent’s offer to sell the disputed domain name for $2,000 was sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”). The Panel accordingly finds bad faith under Policy ¶ 4(b)(i).
Based on the uncontested evidence presented by Complainant,
the Panel infers that Respondent receives click-through fees for the hyperlinks
displayed on the website that resolves from the <newsgame.com> domain name. Such commercial benefit constitutes bad faith
registration and use under Policy ¶ 4(b)(iv). The Panel additionally finds that
Respondent’s disputed domain name is capable of creating confusion as to
Complainant’s sponsorship and affiliation with the disputed domain name, which
is further evidence of bad faith registration and use. See Kmart v. Khan, FA 127708 (Nat.
Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its
diversionary use of the complainant's mark when the domain name resolves to
commercial websites and the respondent fails to contest the complaint, it may
be concluded that the respondent is using the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv)); see also Drs.
Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where the respondent directed Internet users seeking the
complainant’s site to its own website for commercial gain).
The Panel finds that
Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <newsgame.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 21, 2006.
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