WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Media West Ė GSI, Inc. and Gannett Satellite Information Network, Inc. v. Cupcake City and Null John Zuccarini aka John Zuccarini

Case No. D2000-1205

 

1. The Parties

The Complainants are Media West-GSI, Inc. ("Media West"), a corporation whose state of organization is unspecified, having its principle place of business in Reno, Nevada, United States of America and Gannett Satellite Information Network, Inc. ("Gannett Satellite"), a corporation whose state of organization is likewise not specified, having its principal place of business at Arlington, Virginia, United States of America. It is alleged that Media West is a wholly owned subsidiary of Gannett Satellite. The Respondent is Cupcake City, an entity of form unknown, with an address in Andalusia, Pennsylvania, United States of America, apparently affiliated in some matter with Respondent Null John Zuccarini aka John Zuccarini, an individual with an address in Andalusia, Pennsylvania, United States of America.

 

2. The Domain Names and Registrars

The domain names at issue are <usatodaysports.com>, which domain name is registered with Network Systems, Inc. ("NSI"), a registrar based in the State of Virginia, United States of America, and <usatodayweather.com>, which domain name is registered with Internet Council of Registrars, Inc. ("CORE"), a registrar based in Geneva, Switzerland

 

3. Procedural History

A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on September 13, 2000, and the signed original together with four copies forwarded by express courier was received on September 14, 2000. An Amendment to the Complaint was received by email on October 5, 2000, and a hard copy on October 9, 2000.

On September 21, 2000, Requests for Registrar Verification were transmitted to NSI and CORE requesting each of them to: (1) confirm that a copy of the Complaint was sent to the registrar by the Complainants; (2) confirm that the domain name at in issue is registered with the registrar; (3) confirm that the person identified as the Respondent is the current registrant of the domain name; (4) 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; (5) confirm that the Uniform Domain Name Dispute Resolution Policy ("Policy") applies to the domain name at issue; and (6) indicate the current status of the domain name at issue.

Under cover of a letter dated September 21, 2000, CORE confirmed that the domain name <usatodayweather.com> is registered with CORE and that the Respondent was the current registrant of the name. CORE forwarded the requested Whois details, as well confirming that: (1) it had received a copy of the Complaint from the Complainant; (2) that the Policy was applicable to the domain name.

In an email dated September 28, 2000, NSI confirmed that the domain name <usatodaysports.com> is registered with NSI and that the Respondent was the current registrant of the name. NSI forwarded the requested Whois details, as well confirming that: (1) it had received a copy of the Complaint from the Complainant; (2) that the NSIís Rev. 4.0 Service Agreement was applicable to the domain name.

On September 29, 2000, the assigned WIPO Center Case Administrator communicated to Complainants the need for Complainants to expressly consent to jurisdiction in the location of domain-holder's address in respect of the disputed domain name <usatodaysports.com> and advised that the Center could not commence the Proceeding absent such consent. The requested Amendment was received by the WIPO Center on October 9, 2000.

A Formal Requirements Compliance Checklist was initiated by the assigned WIPO Center Case Administrator and completed on October 18, 2000. The Panelist has independently reviewed the Requirements and agrees with the assessment of the WIPO Center Case Administrator that the Complaint is in formal compliance with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the Complainants.

No formal deficiencies having been recorded, on October 18, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, Registrars and ICANN), setting a deadline of November 6, 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 Registrarís Whois confirmation, by post/courier to the indicated postal address, and by facsimile to the indicated facsimile number. Having reviewed the communications records in the case file, the Panelist finds that the WIPO Center has discharged its responsibility under Paragraph 2(a), Rules, "to employ reasonably available means calculated to achieve actual notice to Respondent."

On November 8, 2000, having received no Response from the designated Respondent, the WIPO Center transmitted to the parties a Notification of Respondent Default using the same contact details and email method as was used for the Commencement Notification.

On November 16, 2000, the WIPO Center invited Richard Allan Horning to serve as the Sole Panelist in Case No. D2000-1205, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence. Richard Allan Horningís Statement of Acceptance and Declaration of Impartiality and Independence was received on November 17, 2000. On November 23, 2000, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Richard Allan Horning was formally appointed as the Sole Panelist. The Projected Decision Date was December 6, 2000.

The Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Policy, Rules and WIPO Supplemental Rules.

The Panelist shall issue his Decision based on the Complaint, the Policy, the Rules, the WIPO Supplemental Rules, and without the benefit of any Response from Respondent.

 

4. Factual Background

Complainants allege that they are authorized to use and has used USA TODAY trade and service marks in connection with, inter alia, the publication of the newspaper USA Today (Complaint, Para.14). Complainants have provided evidence of the registration of the following marks (Complaint, Para. 15 and Exhibits D and E).

 

MARK

rEGISTRATION NUMBER

INTíL CLASS

DESCRIPTION

 

 

USA TODAY®

1,332,045

16

daily newspapers containing news of general interest

USA TODAY® and Design

1,415,846

16

daily newspapers containing news of general interest

USA TODAY® and Design

1,330,859

16

daily newspapers containing news of general interest

USA TODAY® and Design

1,337,847

16

daily newspapers containing news of general interest

USA TODAY® and Design

1,415,845

16

daily newspapers containing news of general interest

USA TODAY® and Design

1,334,239

16

daily newspapers containing news of general interest

USA TODAY® and Design

1,334,239

16

daily newspapers containing news of general interest

USA TODAY®

1,388,617

41

radio entertainment services, namely, daily news of general interest

USA TODAY®

1,517,220

21

ceramic mugs

USA TODAY®

1,509,332

25

clothing, namely, t-shirts, sport shirts, sweatshirts, shorts, jackets, sweaters, sun visors, caps, hats, and aprons

USA TODAY BASEBALL WEEKLY®

1,738,275

16

newspaper for general circulation

USA TODAY GOLF ATLAS®

1,800,104

16

golf reference manuals published annually comprised of state and city maps, directories, tourist information, and spectator and participant golf activities, events, and locations

USA TODAY INFORMATION NETWORK®

2,053,903

42

computer services, namely leasing accessing time to a computer database containing news and information

USA TODAY UPDATE® and Design

1,417,863

42

on-line news services, containing news of general and special interests

 

MARK

REGISTRATION NUMBER

INTíL

CLASS

DESCRIPTION

Country

USA TODAY

TMA 511,482

NA

communications, education, and entertainment services namely newspaper publishing, publication of books and texts, delivery of newspapers, newspaper subscriptions, and news agency services

Canada

USA TODAY

433,448

25

clothing, shoes and headgear for wear

Mexico

USA TODAY

66,727

16

NA

Egypt

Complainants allege that the marks are owned by Complainant Media West (Complaint, Para. 2).

The Complainants allege that they have registered numerous second-level domain names, which include the letters USA TODAY, without specifying which Complainant has registered these domain names (Complainant, Para. 17, and Exhibit F).

The Respondent registered the domain names <usatodaysports.com> on April 24, 1999, and <usatodayweather.com> on October 22, 1999 (Complaint, Exhibit A and B).

 

5. Partiesí Contentions

A. Complainants

Complainants contend that Respondent has registered domain names which are nearly identical to and confusingly similar to the service marks and trademarks registered and used by Complainants, that Respondent has no rights or legitimate interests in respect of the domain names at issue, and that Respondent has registered and is using the domain names at issue in bad faith.

B. Respondent

Respondent has not contested the allegations of the Complaint.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panelist as to the principles the Panelist 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 Complainants and Respondent are domiciled in the United States, and since United Statesí courts have experience with similar disputes, to the extent that it would assist the Panelist in determining whether the Complainants have met their burden as established by Paragraph 4(a) of the Policy, the Panelist shall look to rules and principles of law set out in decisions of the courts of the United States.

Paragraph 4(a) of the Policy directs that the Complainants 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) that the domain name has been registered and used in bad faith.

The record indicates that the trademarks referenced by Complainants are registered in the name of Gannett Co., Inc., a Delaware corporation which is not a party to this Proceeding (Complaint, Exhibit D & E). The cease and desist letters dated April 10, 2000 and May 2, 2000 (Complaint, Exhibits J & K) refer to USA Today and Gannett Co., Inc., in such a way as to suggest that Gannett Co., Inc. was the owner of the trademarks at the time of the transmission of those letters. While it is alleged that these trademarks are used under license (Complaint, Para. 2) by Claimants in connection with the operation of the newspaper business, no proof of the license details is offered. The domain names containing the letters USA TODAY, recited by Complainants in the Complaint (Complaint, Para 17 and Exhibit F), are all registered with USA Today in the registrant column.

The Panelist takes judicial notice of the fact that the December 1, 2000 edition of USA Today lists Gannett Co., Inc., as the publisher, and claims copyright ownership in Gannett Co., Inc.

The Panelist is of the opinion that there is insufficient evidence at the present time to establish that the Complainants have rights in the trademarks claimed. See, Readygo, Inc. v. Michael Lerner Productions, WIPO Case No. D2000-0298; EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036 (as to that part of the opinion, set out in Section 4, Factual Background, in which it was held that as the Complainant had not shown itself to be the successor to the identified owner of the trademarks, those trademarks would not be considered in reaching the decision); E-Builder, Inc. v. Building On-Line, CPR Case No. CPR008.

Complainants thus cannot establish one of the necessary three prongs for which it is their burden to establish. The Panelist dismisses the Complaint for lack of proof, without prejudice to its reinstitution upon proof that Complainant(s) are the owners of the trademark(s) or have rights in respect of such marks.

 

7. Decision

Complainants have failed to establish rights in the trademarks claimed. This matter is hereby dismissed without prejudice to its being recommenced following establishment that Complainant(s) are the owner of the mark(s) or have rights in respect of such marks for which application has been made.

 


 

Richard Allan Horning
Sole Panelist

Dated: December 6, 2000