The Buffalo News, a Division of OBH, Inc. and Columbia Insurance Company v. John Barry d/b/a Bronx Consumer, Inc. f/k/a Domains or Best Domains
Claim Number: FA0302000146919
Complainant is The Buffalo News, a Division of OBH, Inc. et. al., Buffalo, NY (“Complainant”) represented by Joseph M. Finnerty, of Stenger & Finnerty. Respondent is John Barry d/b/a Bronx Consumer, Inc. f/k/a Domains or Best Domains, Bronx, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bufalonews.com>, registered with Enom, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 25, 2003; the Forum received a hard copy of the Complaint on February 26, 2003.
On March 4, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <bufalonews.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 March 5, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 25, 2003 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.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On March 28, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 <bufalonews.com> domain name is confusingly similar to Complainant’s THE BUFFALO NEWS mark.
2. Respondent does not have any rights or legitimate interests in the <bufalonews.com> domain name.
3. Respondent registered and used the <bufalonews.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Buffalo News, a Division of OBH, Inc. and Columbia Insurance Company, holds rights in the THE BUFFALO NEWS mark, registered on the Principal Register of the U.S. Patent and Trademark Office (“USPTO”) on December 23, 1980 (U.S. Reg. No. 1,144,143). Complainant operates a daily newspaper under the THE BUFFALO NEWS mark, with a circulation area including the Buffalo Metropolitan Statistical Area and portions of Ontario, Canada. Almost 750,000 people read Complainant’s daily newspaper and nearly 900,000 people read its Sunday edition.
In addition to its printed publication, Complainant has operated a website at <buffalonews.com> since October of 1999. At this website, the general public has access to an electronic version of Complainant’s newspaper.
Respondent, John Barry d/b/a Bronx Consumer, Inc. f/k/a Domains or Best Domains, registered the <bufalonews.com> domain name on October 29, 2002, and is not licensed or authorized to use Complainant’s THE BUFFALO NEWS mark for any purpose. Respondent uses the domain name to divert Internet traffic to an anti-abortion website at <abortionismurder.com>, which includes graphic pictures of an aborted fetus.
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.
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 rights in the THE BUFFALO NEWS mark through registration on the Principal Register of the USPTO and through use of the mark in commerce.
Respondent’s <bufalonews.com> domain name is confusingly similar to Complainant’s THE BUFFALO NEWS mark. Respondent deleted both the word “the” from Complainant’s mark and the spaces between the words of the mark, but neither of these deletions change the fact that the dominant feature of the domain name remains the significant portion of Complainant’s mark, the phrase “Buffalo News.” See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to Complainant’s “Wellness International Network”).
Respondent also deleted one “f” from the word BUFFALO. This cosmetic deletion also fails to create a distinct mark capable of overcoming Policy ¶ 4(a)(i) analysis. See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the Complainant’s STATE FARM mark); see also Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to Complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark).
Accordingly, the Panel finds that the <bufalonews.com> domain name is confusingly similar to Complainant’s THE BUFFALO NEWS mark under Policy ¶ 4(a)(i).
Complainant carries the initial burden of demonstrating that Respondent has no rights or legitimate interests in the <bufalonews.com> domain name. Complainant can satisfy this burden with a showing that Respondent is not capable of relying upon any of the three enumerated safe harbors for domain name Registrants in Policy ¶¶ 4(c)(i)-(iii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Respondent uses the <bufalonews.com> domain name to redirect Internet users seeking Complainant’s <buffalonews.com> domain name to an anti-abortion website at <abortionismurder.com>. Internet users seeking Complainant’s unbiased, neutral news-gathering service are instead directed to a graphic website hosting highly politicized content. Using the goodwill surrounding Complainant’s mark for such a purpose is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also Encyclopaedia Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of Complainant's mark).
Respondent has not named itself BUFALO NEWS or <bufalonews.com> in its WHOIS contact information. Considering that Respondent’s domain name is a simple misspelling of Complainant’s mark, the Panel finds that Respondent is not “commonly known by” the domain name pursuant to 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 MRA Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003) (noting that “the disputed domain name does not even correctly spell a cognizable phrase” in finding that Respondent was not “commonly known by” the name GIRLS GON WILD or <girlsgonwild.com>).
Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <bufalonews.com> domain name under Policy ¶ 4(a)(ii).
In determining whether a domain name was registered and used in bad faith, the Panel may look to Policy paragraph 4(b) for guidance. However, that list is not exhaustive, but rather is meant to illustrate possible situations evidencing bad faith use and registration of a domain name. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
In the current dispute, Respondent registered a confusingly similar misspelling of Complainant’s THE BUFFALO NEWS mark. In registering a misspelling of a famous mark, the Panel infers that Respondent had actual knowledge of the mark it misspelled prior to registration of the <bufalonews.com> domain name. Moreover, as Complainant’s mark is registered on the Principal Register of the USPTO, and both parties are domiciled in the U.S., the Panel finds that Respondent had actual and constructive knowledge of Complainant’s rights in the THE BUFFALO NEWS mark prior to its infringing registration, which amounts to bad faith registration. See Orange Glo Int’l v. Jeff Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”); see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith”).
Respondent’s use of the disputed domain name to redirect Internet users to an anti-abortion website at <abortionismurder.com> evidences bad faith. Respondent’s unauthorized use of Complainant’s mark to host such highly politicized and graphic content tarnishes the goodwill Complainant has developed for its mark. See Rittenhouse Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8, 2002) (finding that “when a party registers and uses a domain name that incorporates a well-known mark and connects the domain name with a website that depicts offensive images,” the party has registered and used the disputed domain name in bad faith); see also Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (“Just as the employment of a well-known business name for no particularly good reason undermines any claim to legitimate interest, so it may also support an inference of a bad-faith attempt to use the name to harass or exploit its legitimate owner . . . Respondent, if he ever was serious in the registration of this domain name, must have relied on the good chance he would attract [Complainant’s] customers”).
The Panel thus finds that Respondent registered and used the <bufalonews.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bufalonews.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: March 31, 2003
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