Dow Jones & Company, Inc. v. Chenjia Weng / PSU Subscription Agency / ZONGYI LIN
Claim Number: FA2211002018619
Complainant is Dow Jones & Company, Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia. Respondent is Chenjia Weng / PSU Subscription Agency / ZONGYI LIN (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wsjsubscriptions.com>, <wsjpros.com>, <wsjoffer.com>, <wsjsale.com>, and <wsjdiscount.com> (the “Disputed Domain Names”), registered with GoDaddy.com, LLC.
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.
Douglas M. Isenberg as Panelist.
Complainant submitted a Complaint to Forum electronically on November 1, 2022; Forum received payment on November 1, 2022.
On November 4, 2022, GoDaddy.com, LLC, confirmed by e-mail to Forum that the <wsjsubscriptions.com>, <wsjpros.com>, <wsjoffer.com>, <wsjsale.com>, and <wsjdiscount.com> domain names are registered with GoDaddy.com, LLC, and that Respondent is the current registrant of the names. GoDaddy.com, LLC, has verified that Respondent is bound by the GoDaddy.com, LLC, 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 November 9, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 2022, 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 postmaster@wsjsubscriptions.com, postmaster@wsjpros.com, postmaster@wsjoffer.com, postmaster@wsjsale.com, postmaster@wsjdiscount.com. Also on November 9, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
On December 4, 2022, Respondent requested an extension of time to respond to the Complaint, which Forum granted on December 5, 2022, giving Respondent until December 27, 2022, to submit its response.
A timely Response was received and determined to be complete on December 27, 2022.
On December 30, 2022, Complainant submitted “Complainant’s Reply,” responding to certain allegations set forth in the Response.
On January 3, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Douglas M. Isenberg as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
As set forth in section 4.11.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”):
Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.
Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).
Here, Complainant has alleged that “the registration and use of the [five] Domain Names indicate that they are owned by the same entity and/or under common control.” Specifically, Complainant states:
Initially, the registration records disclosed by the registrar show that the registrants Chenjia Weng and Zongyi Lin share the same email address and telephone number, Chenjia Weng’s additional email address contains an abbreviation of Zongyi Lin’s name, and PSU Subscription Agency is the registrant organization name used by Chenjia Weng as described above. Moreover, the Domain Names are (a) constructed in the same manner, namely, including Complainant’s WSJ mark in its entirety, (b) privately registered through the same registrar, including three Domain Names registered on the same date, and (c) used in connection with two websites that are essentially identical in appearance and content. Specifically, the domain names WSJSUBSCRIPTIONS.COM and WSJPROS.COM are used for essentially identical websites; the domain name WSJSALE.COM is used for the email address fulfillment@wsjsale.com which is listed on and used in connection with the WSJSUBSCRIPTIONS.COM and WSJPROS.COM websites; the domain name WSJOFFER.COM is used for the email address help@wsjoffer.com which is listed on and used in connection with the WSJSUBSCRIPTIONS.COM website; and the domain names WSJOFFER.COM and WSJDISCOUNT.COM redirect to the WSJPROS.COM website.
In consideration of the above, and without any objection from Respondent, the Panel concludes that consolidation is appropriate in this case.
A. Complainant
Complainant states that it was founded in 1882 and “has become a world-renowned global provider of news and business information, which distributes its content and data through a wide array of media channels including newspapers, newswires, websites, apps for mobile devices, newsletters, magazines, proprietary databases, live journalism, video, and podcasts.” Complainant further states that one of its “premier properties” is The Wall Street Journal newspaper, “which was first published in 1889 and has long been one of the best-known and most widely acclaimed newspapers in the world”; has won 38 Pulitzer Prizes; “is one of the largest daily newspapers in the U.S.” with “a monthly average of 3,749,000 subscribers globally, including 3,095,000 digital subscribers and monthly average page views of 433,000,000 on the WSJ digital platform.” Complainant further states that it uses the domain names <wsj.com> and <thewallstreetjournal.com>, which were registered in 1994 and 1998, respectively.
Complainant further states, and provides evidence in support thereof, that it is the owner of “many registrations” for trademarks that consist of or include WSJ or THE WALL STREET JOURNAL (the “WSJ Trademark”), including U.S. Reg. No. 3,568,522 (registered January 27, 2009) for WSJ.
Complainant states, and provides evidence to support, that the Disputed Domain Names are being used in connection with the offer of subscriptions for The Wall Street Journal. Specifically, the Disputed Domain Names <wsjsubscriptions.com> and <wsjpros.com> are used in connection with websites that prominently include the WSJ Trademark and “give[] the highly misleading and false impression that Complainant owns, operates, or is otherwise affiliated with Complainant and advertises and/or offers directly competing services”; the Disputed Domain Names <wsjsale.com> and <wsjoffer.com> are used in connection with email addresses listed on the websites associated with the Disputed Domain Names <wsjsubscriptions.com> and <wsjpros.com>; and the Disputed Domain Name <wsjdiscount.com> redirects to the website associated with the Disputed Domain Name <wsjpros.com>.
Complainant asserts that the Disputed Domain Names are confusingly similar to the WSJ Trademark because they each contain the WSJ Trademark in its entirety, and the additional words are generic or descriptive and do nothing to distinguish the Disputed Domain Names from the WSJ Trademark.
Complainant asserts that Respondent has no rights or legitimate interests in the Disputed Domain Names because, inter alia, “Respondent’s registration and use of the [Disputed] Domain Names in connection with websites that Respondent attempts to pass off as owned, operated, and/or affiliated with Complainant and that unfairly compete with Complainant does not constitute a bona fide offering of goods or services or noncommercial fair use”; and “[n]othing in Respondent’s WHOIS information or the record demonstrates that Respondent is commonly known by the [Disputed] Domain Names, and Complainant has not authorized Respondent to use any of its marks including the WSJ [Trade]mark.”
Complainant asserts that the Disputed Domain Names were registered and are being used in bad faith because, inter alia, “Respondent uses the [Disputed] Domain Names to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant and its WSJ [Trade]mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s websites and email addresses associated with the [Disputed] Domain Names”; “Respondent disrupts Complainant’s business by… using the [Disputed] Domain Names for passing off and directly competing activities”; and “Respondent’s registration of the five [Disputed] Domain Names containing Complainant’s WSJ [Trade]mark constitutes a bad-faith pattern.”
B. Respondent
Respondent states that “when the founder of our website was still in college, he found that many other people besides students could not afford your expensive subscription fee, which was several hundred dollars a year. After he made money, he set up a foundation for newspaper publications to subsidize the expensive subscription fee of newspaper publications. We don't make any money from it. We just want everyone who likes reading to have access to the newspaper.”
Respondent asserts that it has rights or legitimate interests in the Disputed Domain Names because it purchases subscriptions for The Wall Street Journal “from the official website of the Wall Street Journal” and resells them for a lower price because they are “subsidized by the foundation.” In support thereof, Respondent provided what it described as “[d]etailed order information” and a “transaction receipt” for “3 transaction records in 3 different time periods.”
Respondent asserts that the Disputed Domain Names were not registered and used in bad faith because, inter alia, “[w]e registered the domain name for our own use only and have never sold, leased or transferred the domain name, or have ever had any intention of selling, leasing or transferring the domain name registration to the complainant”; “the publications we sell are purchased from the Wall Street Journal official website and, with the foundation's subsidies, sold at a lower price to readers who cannot afford Wall Street Journal but are hungry for knowledge and current events,” which “broaden[s]” instead of “undermin[es]” Complainant’s audience; and “there is no confusion” that the “[n]ewspaper that we sell is 100% The Wall Street Journal.”
C. Additional Submissions
In its additional submission, Complainant states that, inter alia, “Respondent is not an authorized distributor of Dow Jones, and has never been authorized to use Dow Jones’ marks including its WSJ mark”; “Respondent’s description of sales conducted through its websites associated with the [Disputed] Domain Names is highly misleading and unsupported by Respondent’s own evidence”; and records reviewed by Complainant and a declaration provided by a paralegal employed by Complainant show that “it appears that Respondent uses its websites to accept payment from consumers for WSJ subscription orders, then uses stolen and/or invalid credit cards to purchase subscriptions from Dow Jones in the consumers’ names.”
Complainant is the owner of multiple registrations for the WSJ Trademark, including the registration described above. The Disputed Domain Names were created on July 1, 2016 (<wsjsale.com>, <wsjdiscount.com>, and <wsjoffer.com>), March 16, 2022 (<wsjsubscriptions.com>), and April 19, 2022 (<wsjpros.com>), and are being used in connection with websites and email addresses offering subscriptions to The Wall Street Journal.
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 Supplemental Filing
Complainant has submitted an unsolicited supplemental filing. As set forth in section 4.6 of WIPO Overview 3.0, “panels have repeatedly affirmed that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response (e.g., owing to some ‘exceptional’ circumstance).” Complainant has not done so here. Nevertheless, it is apparent that Complainant’s unsolicited supplemental filing narrowly addresses issues raised in the Response that may not have been previously known to the Complainant, namely, that Respondent would argue it resells subscriptions to The Wall Street Journal at a loss via a foundation that subsidizes the subscription price. Given the importance of this allegation to this proceeding, as well as Complainant’s contradictory evidence set forth in its supplemental filing, the Panel exercises its discretion under paragraph 10 of the Rules to accept Complainant’s unsolicited supplemental filing.
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the WSJ Trademark.
As to whether the Disputed Domain Names are identical or confusingly similar to the WSJ Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Names only (i.e., “wsjsubscriptions”, “wsjpros”, “wsjoffer”, “wsjsale”, and “wsjdiscount”) because “[t]he applicable Top-Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. WIPO Overview 3.0, section 1.11.1.
As set forth in section 1.7 of WIPO Overview 3.0: “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” Here, each of the Disputed Domain Names incorporates the entirety of the WSJ Trademark. In addition, as set forth in section 1.8 of WIPO Overview 3.0: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” Therefore, the additional words that appear in the each of the Disputed Domain Names do nothing to prevent a finding of confusing similarity.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
As set forth above, although Respondent states that its unidentified “foundation” purchases subscriptions for The Wall Street Journal from Complainant’s website and resells them at a loss, the Panel does not find this credible, Complainant has provided evidence undermining this description, and Respondent has not countered Complainant’s assertion that Respondent “uses stolen and/or invalid credit cards to purchase subscriptions from Dow Jones in the consumers’ names.” As set forth in section 2.13.1 of WIPO Overview 3.0: “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.” Here, by using the Disputed Domain Names as described above, Respondent has apparently used the Disputed Domain Names for illegal activity, including impersonation. Accordingly, the Panel finds that Respondent’s use of the Disputed Domain Names in this manner does not constitute a “bona fide offering of goods or services” or “a legitimate noncommercial or fair use” under paragraphs 4(c)(i) or 4(c)(iii) of the Policy.
Further, it is apparent, and Respondent has not argued otherwise, that Respondent is not commonly known by any of the Disputed Domain Names under paragraph 4(c)(ii) of the Policy.
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy.
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
Evidence provided by Complainant makes clear that the Disputed Domain Names are being used by Respondent in connection with websites and email addresses that appear to be for, or authorized by, Complainant. For example, screenshots of websites associated with the Disputed Domain Names include the WSJ Trademark in a style that is similar or identical to the style used by Complainant, and the websites include text that says, “Official Affiliate.” Therefore, the Panel finds that it is likely that consumers would be confused that the Disputed Domain Names are somehow associated with Complainant.
As numerous decisions under the Policy have made clear, creating a website that falsely appears to be a website for a complainant, as Respondent has done in the instant case, is “likely fraudulent” and “indicates an intent to deceive or, at a minimum, act in bad faith with the intent for commercial gain.” DocuSign, Inc. v. Traffic CPMiPV, Maria Carter, WIPO Case No. D2010-0344. See also, e.g., Emu (Aus) Pty Ltd. and Emu Ridge Holdings Pty Ltd. v. Antonia Deinert, WIPO Case No. D2010-1390 (“a reasonable person who visited the Respondent’s website was likely to be misled in relation to the source, sponsorship, affiliation, or endorsement of the website and the products purportedly made available for online sale on the website”).
Further, the websites associated with the Disputed Domain Names use a stylized version of Complainant’s WSJ Trademark, despite the absence of any license or permission from Complainant to do so. This only increases the likelihood of confusion between the websites and Complainant. See, e.g., Clearwire Communications LLC v. Yvan Edwards, WIPO Case No. D2010-1440 (“Respondent is using the mark at issue to resolve to a web site at which… Complainant’s logo and marks are prominently displayed such that a user would believe that he was on a web site sanctioned by Complainant”); Houghton Mifflin Co. v. The Weathermen, Inc., WIPO Case No. D2001-0211 (“a visitor to Respondent’s site would be likely to believe that it was Complainant’s official site” where Respondent’s site contained the complainant’s mark and character); and Construction Skills Certification Scheme Limited v. Mara Figueira, WIPO Case No. D2010-0947 (finding bad faith where Complainant submitted that “[t]he Respondent’s web site… shows the Complainant’s logo on each page”).
Accordingly, the Panel finds that Complainant has proven the third element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wsjsubscriptions.com>, <wsjpros.com>, <wsjoffer.com>, <wsjsale.com>, and <wsjdiscount.com> domain names be TRANSFERRED from Respondent to Complainant.
Douglas M. Isenberg, Panelist
Dated: January 16, 2023
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