Denver Newspaper Agency v. Jobing.com LLC
Claim Number: FA0908001282148
Complainant is Denver Newspaper Agency (“Complainant”), represented by Jill J. Chalmers, of Holme Roberts and Owen LLP, Colorado, USA. Respondent is Jobing.com LLC (“Respondent”), represented by K. Danica Ray, of DLA Piper US LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <denverpostjobs.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
David H. Bernstein as Panelist, Honorable Charles Kuechenmeister (Ret.) as Panelist, and Sandra J. Franklin as Panelist and Panel Chairperson.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 28, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 31, 2009.
On August 31, 2009, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <denverpostjobs.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that the Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 3, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 23, 2009 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 email@example.com by e-mail.
An electronic copy of the Response was received on the September 23, 2009 deadline. However, because the hard copy of the Response was sent on that day by overnight courier, it was not received at the Forum’s offices until the next day. Pursuant to the Forum’s interpretation of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), the Forum treated the Response as being incomplete because the hard copy was not received on the due date. The Forum therefore notified the Respondent that the Response was deficient under Rule 5.
Notwithstanding the Forum’s treatment of the Response as late and deficient, a majority of the Panel accepts the Response in part because the deficiency was minor. See Concurring Opinion by Panelist Bernstein on this issue.
A Submission of other Written Statement and Documents, submitted under Rule 7 of the National Arbitration Forum Supplemental Rules (the “Supplemental Rules”), was received from Respondent on September 28, 2009. This document was simply a repeat of everything the Respondent had submitted in the initial Response, as a way of getting this material before the Panel in case the Panel disregarded the Response on account of its being late. See Concurring Opinion by Panelist Bernstein on this issue.
A Supplemental Submission in compliance with Supplemental Rule 7 was received from Complainant on September 29, 2009. In the Supplemental Submission, Complainant (1) argued that the Response should not be accepted because it was late and the Respondent’s Supplemental Submission should not be accepted because it was an end-run around the time deadlines imposed by the Rules for Response, and (2) provided arguments in reply to the Respondent’s Response, including that its trademark registrations also cover “providing information over a global computer network” and that newspapers routinely offer job listings. A majority of the Panel accepts the Complainant’s Additional Submission on the first point, because it is the only mechanism through which the Complainant could make its views known on whether the Panel should accept the Response and/or the Respondent’s Additional Submission. A majority of the Panel does not accept the rest of the Complainant’s Supplemental Submission, though, because the Rules (unlike the Forum’s Supplemental Rules) do not provide for the right to submit a Supplemental Submission; rather, whether to request and or accept a Supplemental Submission is left to the discretion of the Panel. Rule 12. Here, because the second part of Complainant’s Supplemental Submission did not address any new legal principles or facts that could not have been anticipated in the Complaint, a majority of the Panel disregards the responsive portions of Complainant’s Supplemental Submission. See generally Bar Products.com, Inc. v. RegisterFly.com, File No. 829161 (Nat. Arb. Forum Jan. 9, 2007) (declining to consider Complainant's reply because it adds nothing of substance to the record, and does not address any arguments of Respondent that could not have been anticipated by the Complainant); Eskimo, Inc. v. Phillips, File No. 105950 (Nat. Arb. Forum May 13, 2002) (even though the Forum’s "supplemental rules . . . may permit the filing of such [supplemental] pleadings, they cannot mandate that the Panel consider such submissions"); Parfums Christian Dior S.A. v. Jadore, Case No. D2000-0938 (WIPO Nov. 3, 2000) (no right to file a reply absent exceptional circumstances); Electronic Commerce Media, Inc. v. Taos Mountain, File No. 95344 (Nat. Arb. Forum Oct. 11, 2000) (panel refused to accept supplemental submission, as the Forum’s Supplemental Rules cannot trump ICANN's UDRP Rule 12 which vests the discretion to request and accept supplemental materials solely with the Panel; no new information or arguments were supplied within the supplemental filings; and the Panel had no questions for the parties to address in supplemental materials). See Panelist Franklin’s Concurring Opinion on this issue.
On October 2, 2009, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed David H. Bernstein as Panelist, Honorable Charles Kuechenmeister (Ret.) as Panelist, and Sandra J. Franklin as Panelist and Panel Chairperson.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant states:
1. Respondent’s <denverpostjobs.com> domain name is confusingly similar to Complainant’s THE DENVER POST mark.
2. Respondent does not have any rights or legitimate interests in the <denverpostjobs.com> domain name. Respondent cannot claim fair use where it is using a known trademark for commercial gain, in direct competition with Complainant.
3. Respondent registered and used the <denverpostjobs.com> domain name in bad faith. Respondent purposely selected the name of a well-known newspaper as part of its domain name, as it has done in other cases.
B. Respondent states:
1. Respondent’s <denverpostjobs.com> domain name is not confusingly similar to Complainant’s THE DENVER POST mark because it adds the word “jobs”, and the word “post” has a different meaning from the “Post” in Complainant’s mark.
2. Respondent has rights or legitimate interests in the <denverpostjobs.com> domain name because Respondent is making a descriptive use of these words. It is not using “DENVER POST” as a trademark or reference to the newspaper of that name, but rather is simply indicating through the domain name that the website is related to job postings in Denver. Respondent notes that Complainant’s trademark registrations do not cover employment services, and thus Respondent’s usage is not in conflict with Complainant’s trademark rights.
3. Respondent did not register and use the <denverpostjobs.com> domain name in bad faith because it did not have notice of Complainant’s trademark and it is only using descriptive words as part of its domain name.
Complainant owns and operates the major daily newspaper in Denver, Colorado, and has operated under the name THE DENVER POST since 1901. Complainant holds several U.S. Trademark Registrations, issued as early as 1995, showing use of the mark since 1901. Like many major daily newspapers, Complainant’s paper includes job listings, and it also includes job listings on its website at <jobs.denverpost.com>.
Respondent registered the <denverpostjobs.com> domain name in March of 2003. Visitors to <denverpostjobs.com> are redirected to <denver.jobing.com> where jobs in Denver are posted, in direct competition with Complainant’s similar postings.
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 the Complainant 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 has rights in the THE DENVER POST mark pursuant to Policy ¶ 4(a)(i) through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,919,631 issued September 15, 1995). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Respondent’s <denverpostjobs.com> domain name is confusingly similar to THE DENVER POST mark. The domain name incorporates the distinctive portion of Complainant’s website (“Denver Post”) in its entirety. Wal-Mart Stores v. MacLeod, Case No. D2000-0662 (WIPO June 6, 2000). Moreover, the <denverpostjobs.com> domain name differs from Complainant’s mark in four ways: (1) the definite article “the” has been removed from the mark; (2) the spaces have been removed from the mark; (3) the term “jobs,” which is descriptive of the job announcements that Complainant publishes in its newspaper, has been added to the end of the mark; and (4) the generic top-level domain (“gTLD”) “.com” has been added to the end of the mark. The Panel finds that the removal of spaces and articles from a mark does not change the confusing similarity of the domain name. See Down E. Enter. Inc. v. Countywide Commc’ns, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name <downeastmagazine.com> confusingly similar to the complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE); see also Buffalo News v. Barry, FA 146919 (Nat. Arb. Forum Mar. 31, 2003) (finding the respondent's <bufalonews.com> domain name confusingly similar to Complainant's THE BUFFALO NEWS mark). The Panel also finds that adding a term which describes some services offered by the owner of a mark (here, “jobs”) does not distinguish a domain name from that mark in a way that would undermine the finding of confusing similarity. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)). Finally, the Panel finds that adding a gTLD to a mark also fails to sufficiently distinguish a domain name from that mark, because every domain name must include a top-level domain. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, these changes to the THE DENVER POST mark do not minimize or eliminate the confusing similarity between the domain name and this trademark.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of production shifts to Respondent to show it does have rights or legitimate interests. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that, once a prima facie case has been established by the complainant, the burden of production then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The burden of proof, however, always remains on the Complainant. Document Technologies, Inc. v. International Electronic Communications Inc., Case No. D2000-0270 (WIPO June 6, 2000).
Complainant contends that Respondent is not commonly known by the <denverpostjobs.com> domain name nor has it ever been the owner or licensee of the THE DENVER POST mark. The WHOIS record for the disputed domain name lists Respondent as “Jobing.com LLC.” The Panel finds that Respondent is not commonly known by the <denverpostjobs.com> domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”). The Panel finds that Complainant has made a prima facie case.
Respondent is using the <denverpostjobs.com> domain name to redirect Internet users to its website that offers job search services, which compete with Complainant’s published job announcements. Presumably, Respondent charges for its job-posting services. On the limited record presented to the Panel, it appears to the Panel that Internet visitors who enter <denverpostjobs.com> into their browser and are redirected to Respondent’s website would likely be confused into believing that the job listings come from, or are related to or sponsored by, The Denver Post. Because this conduct appears to amount to trademark infringement, the Panel finds that Respondent’s use of the <denverpostjobs.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Respondent’s argument that it is using the words “Denver”, “post” and “jobs” merely in a descriptive way is disingenuous. Even if Respondent were trying to use these words descriptively, the more natural presentation of the words would be “Denver Job Postings” or, as Respondent uses on the page to which the domain name is redirected, <denver.jobing.com>. That Respondent has instead mimicked Complainant’s well-known mark in its domain name not only undermines any claim of legitimate interests, but also, as discussed in the next section, is a strong indication of Respondent’s bad faith. In any event, there are many ways to direct traffic to a Denver jobs site without using the trademark of a competitor. Indeed, the traffic is immediately rerouted to Respondent’s <denver.jobing.com> in an attempt to build its reputation off a well-known newspaper mark.
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Finally, in any event, the bad faith use found by the Panel is alone sufficient to satisfy the Complainant’s obligation to show “registration and use in bad faith.” As explained in the seminal Telstra decision, “registration and use” is used in the policy as a unified concept. Even though the concept mentions both “registration” and “use,” the examples provided in the Policy make clear that some types of registration alone will be sufficient to satisfy this unified concept. Telstra Corp. v. Nuclear Marshmallows, D2000-003 (WIPO Feb. 18, 2000). For example, one type of conduct that the Policy says “shall be evidence of the registration and use of a domain name in bad faith” is “you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct.” Policy ¶ 4(b)(ii). The Policy also says that another type of conduct that “shall be evidence of the registration and use of a domain name in bad faith” is: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” Policy ¶ 4(b)(iv). As the Telstra panel recognized, some of the listed examples only addressed registration; similarly, the example listed in Paragraph 4(b)(iv) only lists a type of use, and states that this use shall itself be evidence of “the registration and use of a domain name in bad faith,” even though the example says nothing about registration. Accordingly, because the Panel finds that the Respondent has in fact used the domain name to intentionally attract Internet users to its web site for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to source, that bad faith use is itself sufficient to establish “registration and use in bad faith,” even in the absence of any allegations about Respondent’s intent at the time of registration and whether Respondent had Complainant’s trademark “in mind” at the time it registered the domain name. City Views Ltd. v. Moniker Privacy Servs / Xander, Jeduyu, ALGEBRALIVE, D2009-0643 (WIPO July 3, 2009); Phillip Securities Pte Ltd v. Leong, DE-0900226 (ADNDRC July 11, 1009); Octogen Pharmacal Co. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, D2009-0786 (WIPO Aug. 19, 2009).
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 <denverpostjobs.com> domain name be TRANSFERRED from Respondent to Complainant.
Panelist Bernstein submits the following on the issue of accepting Respondent’s late submission:
I agree with the decision of the Panel. I write separately for the sole purpose of addressing two of the procedural issues in this case.
I agree with the majority that the Response should be accepted and considered by the Panel, but for different reasons than that reached by the majority. Because the Response was in fact sent on the deadline, including both electronically and by hard copy (via overnight courier), I would consider the Response as having been timely. The Forum’s interpretation of the Rules to require actual receipt by the Forum of the hard copy on the due date is inconsistent with the UDRP Rules themselves, which provide: “Within twenty (20) days of the date of commencement of the administrative proceeding the Respondent shall submit a response to the Provider.” Rule 5(a). The Rules thus require the Respondent to have taken the act of “submitting” the Response within 20 days; it does not require the Respondent to cause the hard copy to be “received” at the ADR provider’s offices within 20 days. Cf. Free Bridge Auto Sales Inc. v. Larry Ross, File No. 1250951 (NAF Apr. 28, 2009).
This interpretation is consistent with the fact that the 20 days provided by the Rules are calendar days, rather than business days. Because the 20 days for submission of a response are calculated without regard to weekends and holidays, it is common for responses to be due on weekends and holidays. The Rules do not provide any extension of time to the next business day; rather, the respondent is required to “submit” the response on the due date. However, NAF’s offices are closed when the due date falls on a Sunday or holiday, thus requiring respondent to “deliver” the response early if it wants to ensure that the response is actually received by the due date.
This interpretation also is consistent with the reality that the other three UDRP providers are located overseas. WIPO is located in Geneva, CAC is located in the Czech Republic, and ADNDRC is located in Hong Kong. It would be a substantial hardship for respondents (including the many US respondents who participate in UDRP proceedings brought before those other providers) to have to ensure actual receipt of their responses in the provider’s foreign offices by the deadline.
Finally, this interpretation is consistent with established litigation practices. Service of motions and opposition papers, for example, and submissions of briefs to federal appellate courts, is typically considered timely if sent on the due date, even if they are received by mail later. Moreover, with electronic filing now in use in many courts, filing with a court is effective upon electronic delivery, even if a hard copy (such as a courtesy copy sent to a judge’s chambers) is received a day or two later, by mail or overnight courier.
Relatedly, I also object to the Forum’s requirement that the Respondent pay a fee of $400 in conjunction with its re-filing of the Response as a Supplemental Submission under Supplemental Rule 7. The Rules allow a respondent to participate in a UDRP proceeding without having to make any payment (unless a respondent wishes to invoke its right to a three-member panel after a Complainant has selected a one-member panel). Requiring a respondent to pay a fee in order to file a Supplemental Submission is inconsistent with the Rules and the general policies underlying the treatment of respondents in the UDRP. Furthermore, because I believe the Response should not have been deemed late or deficient in the first place, and because the Panel has ruled that it will accept the Response, the Supplemental Submission is moot, and the payment of a fee was all the more unnecessary.
If, though, the Response were
deemed late, then I would have disregarded the Respondent’s Supplemental
Submission. The Rules require submission
of a Response in 20 days. That time
period can be extended by the Panel in exceptional circumstances, see Rule 10(c). If, though, respondents were permitted to use
Supplemental Rule 7 as a mechanism for an automatic 5 day extension of time
upon payment of a fee of $400, regardless of a showing of exceptional
circumstances, that would be inconsistent with the deadlines imposed by the
Rules. Mobilcom Communication Service Inc. v. WebReg, RN, D2005-1304 (WIPO
Feb. 24, 2006) (rejecting response that was submitted nine-days late without
any showing of exceptional circumstances).
Because the Supplemental Rules cannot contradict the UDRP Rules, the
UDRP Rules must govern and the Supplemental Rules cannot be used as an end-run
around the time deadlines imposed by the Rules.
Commerce Media v.
I agree with the decision of the Panel, except that I would accept the entirety of Complainant’s Additional Submission because it was submitted in accordance with the Forum’s published Supplemental Rules, which govern this proceeding.
Sandra J. Franklin, Panelist and Panel Chairperson
David H. Bernstein, Panelist
Honorable Charles Kuechenmeister (Ret.), Panelist
Dated: October 16, 2009
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