The New York Times Company v. Name Administration Inc. (BVI)
Claim Number: FA1009001349045
Complainant is The New York Times Company ("Complainant"), represented by Alexis Arena, Pennsylvania, USA. Respondent is Name Administration Inc. (BVI) ("Respondent"), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dealbook.com>, registered with Iregistry Corp.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflicts in serving as Panelists in this proceeding.
Honorable Ralph Yachnin (Ret.), James A. Carmody, Esq., Prof. Darryl C. Wilson Chair, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 28, 2010; the National Arbitration Forum received payment on September 28, 2010.
On September 29, 2010, Iregistry Corp. confirmed by e-mail to the National Arbitration Forum that the <dealbook.com> domain name is registered with Iregistry Corp. and that Respondent is the current registrant of the name. Iregistry Corp. has verified that Respondent is bound by the Iregistry Corp. 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 October 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 27, 2010 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 firstname.lastname@example.org. Also on October 7, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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.
A timely Response was received and determined to be complete on October 28, 2010.
Complainant’s Additional Submission was received on November 1, 2010 and deemed to be in compliance with Supplemental Rule 7.
Respondent’s Additional Submission was timely received on November 8, 2010 and also deemed to be in compliance with Supplemental Rule 7
On November 3, 2010, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable Ralph Yachnin (Ret.), James A. Carmody, Esq., and Prof. Darryl C. Wilson, Chair, as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant asserts that it is one of the leading media companies in the world and that it offers numerous products and services under a number of world-famous trademarks. It further asserts that one of its most successful content portals is its “DealBook” website and news service which can be accessed at <nytimes.com/dealbook> or <dealbook.blogs.nytimes.com>. The author of the “DealBook” column and editor of the website is alleged to have coined the term “DealBook” in 2001 and the NYTCo. is set forth as the owner of U.S. trademark registrations for the DEALBOOK trademark. Complainant argues that Respondent’s <dealbook.com> domain name is identical to Complainant’s DEALBOOK trademark and that Respondent has no rights or legitimate interests in the disputed domain name. Complainant also asserts that “Respondent uses the DealBook.com domain in bad faith, pursuant to ICANN Policy ¶ 4(a)(iii).”
Respondent asserts that “this dispute concerns a domain name which the Respondent has registered and used since March 2004…” in connection with advertising online gaming and with travel booking. Respondent further asserts that its registration and use of the disputed domain pre-dates “the bulk of” the Complainant’s “first use” claims in connection with financial publications and that Complainant’s mark is used by many others in connection with financial services. Respondent also asserts that it has consistently used the domain name in connection with advertising material relating to the terms “deal” and “book” since it acquired the domain name in 2004. Respondent argues that its use of the domain name was prior to its notice of a dispute concerning the name and that its use is indicative of legitimate rights or interests in the domain name. Respondent also argues that Complainant has failed to show that Respondent registered or used the disputed domain in bad faith. Additionally Respondent stresses the fact that Complainant took no action against Respondent for the six years Respondent has openly and continually used the disputed domain albeit never regarding the same goods or services that Complainant asserts that its mark covers.
C. Additional Submissions
Complainant’s additional submission asserts that Respondent’s website displays advertisements for competitive products and services along with links for goods related to those offered by NYTCo. Complainant further asserts that Respondent made changes to the website since the filing of its complaint but such changes should be disregarded since the UDRP policy requires that rights to and legitimate interests in the domain name be demonstrated prior to notice of the dispute. Complainant also states that Respondent’s broker indicated that Complainant “could purchase the disputed domain from Respondent for around $50,000, further indicating bad faith.” Complainant alleges that Respondent owns “about 300,000” domain names and has a pattern of engaging in the conduct of registering domain names to profit from click-through fees as well as purchasing and selling domain names. Complainant assails Respondent’s asserted lack of knowledge of Complainant’s existence and established rights to its mark as false and reiterates that Respondent’s use of the disputed domain is not in connection with a bona fide offering of goods or services. Complainant asserts that DealBook is not a generic term nor has Respondent only used it in a generic fashion and repeats its claim that its rights to the mark date back to its first use in 2001 prior to Respondent’s registration.
Respondent’s additional submission contends that no evidence of record supports a claim to the mark prior to Respondent’s registration of the disputed domain name. Respondent also contests Complainant’s allegations regarding changes in the website to which the disputed domain resolves and generally asserts that Complainant makes numerous false statements concerning individual officers of Respondent’s company. Respondent states that any attempts to broker a sale of the disputed domain name were made by unknown, unauthorized parties and reiterates that it registered and used the disputed domain in 2004 for purposes relating to the terms “deal” and “book”. Respondent alludes to prior owners of the disputed domain who used the domain in a manner that may have overlapped with Complainant’s goods and services quite distinct from its own use of the domain name. However Respondent asserts that its knowledge of the disputed domain names prior history does not equate to any registration or use of the domain name in bad faith since Respondent has used the domain name for unrelated purposes for more than six years.
Complainant is the New York Times Company (NYTCo) which has used its “The New York Times” trademark since at least as early as 1851 and whose trademark is at least well known, if not famous, throughout the world. Complainant publishes an online version of its newspaper along with various blogs and electronic media products. At some point the NYTCo established the “DealBook” website and news service and began making it accessible through its <nytimes.com> website. The DealBook website is described as a comprehensive source of constantly updated information for the financial and business fields and is said to have more than 160,000 subscribers to its comparably labeled daily newsletter. Complainant secured U.S. federal trademark registrations for DEALBOOK on the Principal Register in 2008 and 2010 and asserts the exclusive right to use the mark in connection with the goods and services identified in its registrations. Those registrations indicate multiple dates of first use with the oldest going back to 2001 for use of the mark in relation to providing newsletters in the fields of business and finance via e-mail and providing online newspapers in the business and financial fields. Complainant generally implies that it established enforceable common law rights through its supposed “coining” of the term in 2001 and consistent use of the terms since that time. Complainant’s initial pleadings failed to include any express claim of, or support for, the establishment of recognizable common law rights in the DEALBOOK mark other than the assertion of coining and use alluded to above. Complainant did supply some limited documentation regarding its rights in its additional submissions.
Respondent is Name Administration Inc. (BVI), an online media network that owns and operates hundreds of thousands of generic domain names for paid search and development purposes. Respondent’s activities include monitoring the internet for available domain names and registering generic domains when available for use in connection with goods and services that the domain names describe. Respondent submitted records illustrating its initial use of the <dealbook.com> domain name in connection with and relation to the terms “deal” and “book” for website displays of “Gambling Categories” asserting that the words were used as gambling terms, as in bookmaking. Archival data was also provided to illustrate Respondent’s usage in connection with advertising for those wishing to “book” lodging and transportation through airfare, cruise, and other travel “deals”. Respondent alleged that any exhibits to the contrary indicating uses related to Complainant were the results of manipulated searches by the Complainant and/or the result of uses made by the domain name holders prior to Respondent’s ownership in 2004.
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.
Complainant’s evidence indicates that it holds two federal trademark registrations on the Principal Register with the United States Patent and Trademark Office ("USPTO") for its DEALBOOK mark (Reg. No. 3,378,767 filed April 25, 2006; issued February 5, 2008 and Reg. No. 3,821,847 filed January 12, 2010; issued July 20, 2010). Complainant also holds a federal trademark registration on the Supplemental Register for its DEALBOOK mark (Reg. No. 3,322,023 filed April 25, 2006; issued October 23, 2007). The Panel finds that Complainant’s evidence establishes its rights in the DEALBOOK mark under Policy ¶ 4(a)(i) dating back to Complainant’s earliest filing date of April 25, 2006. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
However, since Respondent’s disputed domain name registration date of March 6, 2004 predates Complainant’s trademark applications, Complainant further argues that it has established common law rights in the DEALBOOK mark under Policy ¶ 4(a)(i). The Panel finds that a trademark registration is not necessary for Complainant to establish rights in its mark under Policy ¶ 4(a)(i) so long as Complainant presents sufficient evidence that it possesses common law rights in its mark. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant argues that it has continuously used the DEALBOOK mark since as early as October 8, 2001 and had thereby developed sufficient common law rights in the mark.
In addition to the length of time a common law mark has been in existence, other relevant evidence normally supporting such a claim includes the amount of sales under the mark, the nature and extent of advertising, the level of media recognition, and survey data on consumer awareness. Time of use alone is insufficient to indicate that a common law mark has achieved secondary meaning giving it protectable rights against other users of the same or similar mark. See Occidental Hoteles Mgmt., S.A., & Corictal II, S.A. v. Hargrave Arts, LLC, FA 959645 (Nat. Arb. Forum May 21, 2007) (finding that the complainant did not submit sufficient evidence showing that its OCCIDENTAL mark had acquired the necessary secondary meaning for it to establish common law rights pursuant to Policy ¶ 4(a)(i)); see also Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions.”).
In its Additional Submission Complainant alleges that from 2001-2002 it launched an aggressive advertising campaign about the DEALBOOK offerings which cost an estimated $120,000. Further, Complainant argues that it has since spent over $300,000 more on advertising and marketing its DEALBOOK mark. Complainant notes that in 2007 it won a “Webby Award” for “best business blog” and a “SABEW” award for overall excellence, and an “Eppy” award in 2008 for “best business blog.” Further, Complainant submits that more than 160,000 people currently subscribe to the “DealBook” daily newsletter and that the DealBook newsletter now has more than 2.5 million unique monthly users. While the information and data is indeed impressive it fails to address the core issue which is the state of the DealBook newsletter and website from 2001 when it alleges to have established its first use and 2004 when Respondent purchased and registered the disputed domain name. DealBook is undoubtedly well known now as part of the NYTCo. data available on Complainant’s website(s) but unless sufficient proof exists regarding the status of the mark in the past then Complainant has no basis for supporting its requested relief.
The Panel is unpersuaded that such evidence has been provided. In its most favorable light Complainant’s evidence supports that it began using DealBook in 2001 on a limited basis through its own newspaper and website to address deals in the financial industry. Complainant published advertising regarding its venture, as well as purchased ads, in various media progressively expanding the level of audience exposure to its newsletter, website and associated goods and services. While Complainant has provided some information on the nature and extent of advertising, no other factors have been shown to indicate that the general public, including the Respondent, knew or should have known of Complainant’s alleged rights in the DEALBOOK mark from 2001-2004. As Complainant was computer savvy regarding internet usage and domain names as well as knowledgeable concerning trademark law, Complainant’s failure to secure and register the disputed domain name or to seek governmental registration of its mark until 2006 supports a conclusion that Complainant did not deem that it had any exclusive rights to enforce until that time. Thus Respondent’s registration and use in 2004 predate Complainant’s rights in the mark. While registration of a domain name before a Complainant acquires trademark rights is not specifically identified in the UDRP Policy as an automatic defense to a complaint, the Panel does not believe that the intent of the Policy requires a Panel to move forward on a complaint when the Complainant’s rights in the disputed domain name are at best junior to the rights of the Respondent.
Complainant and Respondent raise several issues that the Panel need not decide in light of Complainant’s failure to indicate that it had enforceable rights in existence prior to Respondent’s procurement of the domain name in dispute. Specifically the Panel is inclined to decline Respondent’s specific request that we opine on the alleged manipulation of search results by Complainant. While Respondent indicates that other Panels have taken up that issue the circumstances in this matter do not warrant addressing the parties debate regarding whose alleged search results of the term DealBook are more persuasive or defensible. Nor need the Panel at this stage comment on others using the terms “deal” and “book” separately or in conjunction or whether the mark DEALBOOK is itself generic.
The Panel does believe that the circumstances of this case are the type that support a decision for the Respondent based on laches. Laches is an equitable doctrine that may provide a defense when an adverse party has unreasonably delayed in asserting his rights to the detriment of the accused. The doctrine does not set any bright line in regards to the amount of time that must pass prior to the effectiveness of the doctrine’s implementation but instead bases the application of the doctrine on the particular circumstances in each case. Thus it is said that a party who “sleeps on his rights” may sometimes be barred by his own inactivity from asserting those rights. While laches is not expressly recognized in the UDRP Policy as a defense to a domain name complaint, some Panel decisions have recognized its availability when a particularly compelling set of facts have been present. The Panel believes that the doctrine of laches should be expressly recognized as a valid defense in any domain dispute where the facts so warrant. Prior decisions rejecting the applicability of the doctrine due to the failure of its express recognition in the UDRP Policies appear to be an unsound basis for ignoring the potential defense. While the Panel recognizes that the UDRP is administrative in nature, the practical effect of the proceeding is to provide equitable relief to the successful party. Thus, if equitable relief is the outer extent of the remedy available equitable defenses should also be considered in evaluating the whether any relief should be forthcoming. In the instant proceeding the Respondent emphasizes on numerous occasions that it has held the domain name and used it in connection with its website offerings for in excess of six years and rightfully posits the question of what should be made of the fact that the Complainant has done nothing during that time despite claiming that its development of the identical trademark and subsequent use predates that of the Respondent. This is not a case of passive holding by the Respondent or an instance of an unsophisticated Complainant. Complainant notes that it has been in business for more than a century and half and has developed worldwide fame in both real space and cyberspace through use of numerous trademarks. Where such a Complainant fails to police its claimed mark and does nothing for a substantial time while a Respondent develops an identical domain name for its own legitimate purposes, laches should bar that Complainant from turning a Respondent’s detrimental reliance to its own unjust benefit.
This element has not been analyzed as Respondent’s rights are senior to Complainant’s.
This element has not been analyzed as Respondent’s rights are senior to Complainant’s.
Since the Complainant has failed to establish the elements required under the ICANN Policy, the Panel concludes that the relief requested shall be DENIED.
Honorable Ralph Yachnin (Ret.), James A. Carmody Esq., Prof. Darryl C. Wilson, Chair, Panelists
Dated: November 17, 2010
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