WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Chicago Tribune Company v. Jose P. Varkey
Case No. D2000-0133
1. The Parties
1.1 The Complainant is The Chicago Tribune Company, a corporation organized under the laws of the State of Illinois, United States of America, having its principal place of business in Chicago, Illinois, United States of America.
1.2 The Respondent is Jose P. Varkey, an individual resident of Hollywood, California, United States of America.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is <chicago-tribune.net>, which domain name is registered with Network Solutions, Inc., based in Herndon, Virginia.
3. Procedural History
3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on March 6, 2000, and the signed original together with four copies was received on March 9, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated March 9, 2000.
3.2 On March 9, 2000, a Request for Registrar Verification was transmitted to the registrar, Network Solutions, Inc. ("NSI") requesting it to: (1) confirm that the domain name at in issue is registered with NSI; (2) confirm that the person identified as the Respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrarís Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain name.
3.3 On March 10, 2000, NSI confirmed by reply e-mail that the domain name <chicago-tribune.net> is registered with NSI, is currently in active status, and that the Respondent, Jose P. Varkey, is the current registrant of the name. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.4 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a three-member Panel were paid on time and in the required amount by the Complainant.
3.5 No formal deficiencies having been recorded, on March 13, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of April 1, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in NSIís confirmation. In addition, the complaint was sent by express courier to the postal address given. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." In any event, evidence of proper notice is provided by the evidence in the record of the Respondentís participation in these proceedings.
3.6 On April 2, 2000, the Center transmitted a Notification of Respondent Default, not having received any communication from Respondent.
3.7 On April 13, 2000, the Center received a communication by email from the Respondent in the above case requesting an extension of the deadline for the filing of the hard copy of the response until April 20, 2000, and enclosing a copy of the response and exhibits by email.
3.8 On April 24, 2000, in view of the Complainantís designation of a three-person panel, the WIPO Center invited Sally Abel and Andrew Bridges and M. Scott Donahey to serve as panelists in Case No. D2000-0133.
3.9 Having received Statements of Acceptance and Declarations of Impartiality and Independence from the three panelists, on April 24, 2000, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which the three panelists were formally appointed. The Projected Decision Date was May 7, 2000. The Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules.
3.10 While the Response was untimely within the Rules, the Panel believes that the Complainant was not prejudiced by the slight delay and the Panel accepts and considers the late-filed Response.
4. Factual Background
4.1 Complainant applied for a registration of the trademark Chicago Tribune in 1963, and the registration issued June 9, 1964, for a twenty year term, which was renewed for another twenty year term from June 9, 1984. Complaint, Annex C.
4.2 The Chicago Tribune is the name of a well-known daily newspaper and is instantly recognizable across the United States.
4.3 Complainant also maintains a presence on the Internet through use of its "Chicago Tribune" trademark as a part of its registered domain name <chicagotribune.com>.
4.4 Respondent registered the domain name at issue <chicago-tribune.net> on December 8, 1998.
4.5 On April 23, 1999, counsel for Complainant wrote to Respondent calling attention to Respondent's use of Complainant's registered trade mark and demanding that Respondent cease all use of the trademark, including the use of the Second Level Domain [SLD] name "chicago-tribune."
4.6 Respondent thereafter sought to register the trademark "www.chicago-tribune.net (and design)." Complaint, Annex F.
4.7 Respondent offered to relinquish the domain name <chicago-tribune.net> on two conditions. First, Complainant would agree to provide a "tree link" to Respondent's website at "www.godjesus;" and second, Complainant would agree to link its existing website at "www.chicagotribune.com" to Respondent's website at "www.godjesus.org."
4.8 On October 11, 1999, Respondent sent an email to Complainant in which Respondent offered to cease using the domain name at issue in exchange for a payment of $10,000. Complaint, Annex I.
5. Partiesí Contentions
Complainant contends that Respondent has registered as a domain name a mark which is identical to the trademark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect to the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
It is beyond reasonable dispute that the Second Level Domain ("SLD") name at issue is identical to Complainant's trademark. However, Respondent contends that Complainant could have, but did not, register the domain name at issue, and that at least seven other entities or persons registered trademarks or service marks including the word, "chicago."
6. Discussion and Findings
6.1 Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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." Since both the Complainant and Respondent are domiciled in the United States, and since United Statesí courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
6.2 Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no legitimate interests in respect of the domain name; and,
3) the domain name has been registered and used in bad faith.
6.3 Respondent has effectively admitted that the domain name at issue is identical to the trademark or service mark in which the Complainant has rights. Accordingly, Complainant has established the first of the three required elements.
6.4 Complainant has alleged that Respondent has no rights to or legitimate interests in respect of the domain name at issue. Respondent has failed entirely to counter this allegation. Accordingly, the Panel finds that the Respondent has no rights to or legitimate interests in respect of the domain name at issue.
6.5 Respondent has attempted to use the disputed domain name to lead to his <www.godjesus.org <http://www.godjesus.org>> site, which engages in religious proselytizing and solicits memberships in Respondentís organization. "[W]e invite you to join LOVE-OF-GOD-JESUS and send us a SELF-ADDRESSED & STAMPED ENVELOPE to the address below." Complaint, Annex H. Respondent does not attempt to controvert Complainantís allegations of bad faith. Instead, Respondent levels his own accusations of bad faith at Complainant, alleging "Chicago Tribuneís conspiracy against others not to register the domain name." Respondentís Answer at paragraph 2. Respondent bases his defense primarily upon the existence of seven U.S. trademark registrations of the mark CHICAGO by persons other than Complainant, and upon the additional allegations that Complainant is violating Respondentís civil rights and is discriminating against him on the basis of national origin.
6.6 Taking the allegations of the Complaint (which are uncontroverted) and Respondentís Answer into account, the Panel concludes that the domain name was indeed registered and used in bad faith. Although the examples of "bad faith" furnished in paragraph 4(b) of the Uniform Dispute Resolution Policy are not exclusive or exhaustive, we find that Respondentís use of <www.chicago-tribune.net <http://www.chicago-tribune.net>> as a domain name to attract attention to <www.godjesus.org <http://www.godjesus.org>> for the purposes of solicitation of membership constituted a use of the domain name "for commercial gain" within that paragraph. The "commercial gain" of attracting viewers for the purpose of soliciting them to "join LOVE-OF-GOD-JESUS" is consistent with the concept of "commerce" is expansively interpreted under United States law, which applies to charitable and political activities as well as traditional mercantile activities. In reaching this conclusion, we note that the solicitation is entirely unrelated to any reference to, or comment upon, the activities of the Chicago Tribune and that the Respondent has not put forward any principled rationale for selection of the domain name.
For all of the foregoing reasons, the Panel finds that the domain name at issue is identical to the trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name at issue, and that the domain name has been registered and is being used in bad faith, and that the domain name <chicago-tribune.net> should be, and is ordered to be, transferred to the Complainant.
M. Scott Donahey
Sally M. Abel
and Andrew P. Bridges
Dated: May 9, 2000