Lee Procurement Solutions, Inc and Lee Enterprises, Incorporated v. Forum LLC
Claim Number: FA0611000840670
Complainants are Lee Procurement Solutions, Inc and Lee
Enterprises, Incorporated (collectively “Complainant”), represented by Dana
M. Craig, of Lane & Waterman, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <democrathearld.com>, registered with Moniker Online Services, 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 Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On December 14, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 3, 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@democrathearld.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." 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. Respondent’s <democrathearld.com> domain name is confusingly similar to Complainant’s ALBANY DEMOCRAT-HERALD mark.
2. Respondent does not have any rights or legitimate interests in the <democrathearld.com> domain name.
3. Respondent registered and used the <democrathearld.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is comprised of Lee Procurement Solutions, Inc.
and Lee Enterprises, Inc., the owner and publisher of newspapers throughout the
Respondent registered the <democrathearld.com>
domain name on
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 draw such inferences it 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 the 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 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.
Complainant has provided evidence of its trademark
registration for the ALBANY DEMOCRAT-HERALD mark with the USPTO. While Respondent’s registration of the <democrathearld.com> domain name
predates Complainant’s registration of its mark with the USPTO, the Panel finds
that the effective date of Complainant’s rights in the ALBANY DEMOCRAT-HERALD
mark date back to the filing date of Complainant’s federal trademark
application. Therefore, the Panel finds
that Complainant has established rights in the ALBANY DEMOCRAT-HERALD mark
pursuant to Policy ¶ 4(a)(i) that predate Respondent’s registration of the
disputed domain name. See Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Furthermore, the Panel finds that Respondent’s <democrathearld.com> domain name is
confusingly similar to Complainant’s ALBANY DEMOCRAT-HERALD mark for purposes
of Policy ¶ 4(a)(i). Respondent’s
disputed domain name consists of Complainant’s registered mark with the
omission of a hyphen and the geographic term “
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
In accord with Policy ¶ 4(a)(ii), Complainant initially
bears the burden of demonstrating that Respondent lacks rights or legitimate
interests with respect to the disputed domain name. Nevertheless, once Complainant establishes a prima
facie case, the burden then shifts to Respondent to demonstrate that it has
rights or legitimate interests in connection with the disputed domain name
pursuant to Policy ¶ 4(a)(ii). See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
The evidence on record indicates that Respondent’s disputed domain name resolves to a website offering various links to commercial third-party websites unrelated to Complainant. Consequently, the Panel finds that such use by Respondent does not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006), (finding that the respondent’s use of a domain name that was confusingly similar to the complainant’s mark to display links to third-party websites did not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Furthermore, the Panel finds that the evidence on record does not demonstrate that Respondent is commonly known by the <democrathearld.com> domain name pursuant to Policy ¶ 4(c)(ii). Complainant contends that Respondent is not affiliated with or licensed by Complainant to use its registered mark, and the record is devoid of any indication that such a relationship exists between Respondent and Complainant. Moreover, Respondent’s WHOIS information fails to suggest that Respondent conducts business under the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <democrathearld.com> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent is using the confusingly
similar domain name to operate a website containing links to various unrelated
third-party websites. Thus, the Panel
finds that Respondent registered and is using the <democrathearld.com> domain name with the intent to
divert Internet users to its website for Respondent’s commercial gain. Therefore, the Panel finds that Respondent
registered and used the <democrathearld.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Corp. v.
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <democrathearld.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: January 23, 2007
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