WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
McClatchy Newspapers, Inc. v. Moldava S.A.
Case No. D2001-0304
1. The Parties
1.1 The Complainant is McClatchy Newspapers, Inc., a Delaware corporation with its principal place of business in Sacramento, California, USA.
1.2 The Respondent is Moldava S.A. According to the eNom, Inc. Whois database, as of March 22, 2001, the Respondent in this administrative proceeding is Moldava S.A., an entity of undisclosed form, that is a resident of the country Moldova. Vladislav Berdenuic is identified as a contact person for Moldava S.A. Complainant takes the position that Moldava S.A. is a fictitious name for, or is associated with, Dennis Tison, an individual who resides in Sacramento, California, who until at least August 17, 2000, was registered as the owner of the <sacramentobee.com> domain name.
2. The Domain Name and Registrar
2.1 The Domain Name is <sacramentobee.com>
2.2 The registrar with which the domain name is registered is: eNom, Inc., 16771 Northeast 80th Street, Suite 100, Redmond, WA, 98052, USA
3. Procedural History
3.1 Amended Complaint filed on March 23, 2001, (original, naming Lizardca-Holding as Respondent, filed on March 2, 2001).
3.2 The Complainant elected to have the dispute decided by a single-member Administrative Panel.
3.3 In accordance with Paragraph 3(b)(xiii), Complainant agrees to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the domain names that are the subject of this Amended Complaint, to the jurisdiction of the courts in the United States District Court for the Western District of Washington, which is the court for the location of the principal office of the concerned registrar, eNom, Inc.
3.4 There are no other legal proceedings that have been commenced or terminated in connection with or relating to the domain name that is the subject of the Complaint. (Rules, paragraph 3(b)(xi))
3.5 As required by the Rules and the WIPO Supplemental Rules, payment in the amount of USD 1,500 has been sent with the initial Complaint on March 6, 2001.
3.6 The Complainant agreed that its claim and remedies concerning the registration of the domain name, the dispute, or the disputeís resolution shall be solely against the domain name holder and waives all such claims and remedies against (a) the WIPO Arbitration and Mediation Center and Panelists, except in the case of deliberate wrongdoing, (b) the concerned registrar, (c) the registry administrator, (d) the Internet Corporation for Assigned Names and Numbers, as well as their directors, officers, employees, and agents.
3.7 A copy of this Amended Complaint, together with the cover sheet as prescribed by the WIPO Supplemental Rules, has been sent or transmitted to Respondent on March 22, 2001, by postal service, postage pre-paid and return receipt requested pursuant to the Rules, paragraph 2(b).
3.8 A copy of this Amended Complaint, together with the cover sheet as prescribed by the Supplemental Rules, has been sent or transmitted to the concerned registrar on March 22, 2001, by e-mail to email@example.com and by postal service, postage pre-paid and return receipt requested, to eNom, Inc., 16771 Northeast 80th Street, Suite 100, Redmond, WA, 98052, USA.
3.9 Although no response has been received from the Respondent, this Panel concludes that proper notification has been conducted in accordance with paragraph 2(a) of the Rules.
3.10 The single panel member, Cecil O.D. Branson, Q.C. submitted a Statement of Acceptance and Declaration of Impartiality and Independence on April 24, 2001, and was duly appointed in accordance with paragraph 15 of the Rules. The Panel was required to forward its decision to the Center by May 8, 2001.
4. Factual Background
4.1 The following facts were asserted by the Complainant, were uncontested, and this Panel finds them to be proven in this case.
4.2 Complainant is a national newspaper publishing company with newspapers in California, Alaska, Minnesota, and North Carolina. Complainantís first newspaper, The Sacramento Bee, was published in 1857 in the Sacramento, California area and has been published under that name continuously. This newspaper has had, and continues to have, large circulation in Northern California in addition to maintaining a healthy national and international readership and reputation. Its daily circulation is approximately 290,000 copies, rising to approximately 350,000 for the Sunday edition.
4.3 Complainant owns a registered trademark THE SACRAMENTO BEE mark for "newspapers for general circulation", in Class 16 (U.S. Cls. 2,, 5, 22, 23, 29, 37, 38, and 50; first use 2/3/1857; in Commerce 2/3/1857). It was registered October 19, 1999.
4.4 The Sacramento Bee maintains a Web site at <sacbee.com>, which is accessed by domestic and international users. The Web site also provides free Web based e-mail services at <sacbeemail.com>.
4.5 On June 12, 2000, Dennis Tison registered as the owner of the <sacramentobee.com> domain name with the registrar maintained by Network Solutions, Inc. He listed a contact address in Sacramento, California and an e-mail address as firstname.lastname@example.org. The nameservers identified were NS0.PORTLAND.CO.UK and NS1.PORTLAND.CO.UK, and the page was served through the Portland Communications Web hosting service, located at the IP address 220.127.116.11. This IP address also resolved to orinoco.portland.co.uk.
4.6 On August 1, 2000, the <sacramentobee.com> Web site consisted of one page displaying an enlarged photograph of a bee and stating that "[t]his Domain is available for development!" The site also offered a link to contact email@example.com by e-mail. Other than these features, the Web site was virtually undeveloped.
4.7 On August 8, 2000, Jean Brown, in-house legal counsel for the Complainant, contacted Tison by e-mail to inquire whether he was interested in selling the <sacramentobee.com> domain to The Sacramento Bee and/or allowing The Sacramento Bee to develop the Web site. Tison replied stating that he might be interested in an "offer for the site."
4.8 On or about August 14, 2000, a member of the public and reader of The Sacramento Bee attempted to contact reporter Rick Kushman at The Sacramento Bee by sending an e-mail to firstname.lastname@example.org, erroneously but reasonably believing <sacramentobee.com> to be the domain for The Sacramento Bee. The recipient of the e-mail, who, as the registered owner of the domain name, replied to the reader in vulgar and offensive language. In his response, the recipient intentionally falsified the "from" line of the response e-mail, deliberating misrepresenting himself as Rick Kushman, the The Sacramento Bee reporter the reader believed she was contacting, further adding to the confusion.
4.9 By August 16, 2000, the photograph of the bee was removed from the <sacramentobee.com> Web site and replaced by a banner advertisement for a company called <CyberRebate.com>. The Web site was otherwise similar to the August 1, 2000, version of the Web site.
4.10 On or about August 17, 2000, Complainant sent Dennis Tison by certified mail (which he refused to accept) and by e-mail to email@example.com cease and desist letters which also requested that Respondent relinquish ownership of the domain name.
4.11 By August 17, 2000, the domain had been transferred from the Network Solutions registrar to the Tucows.com, Inc. registrar and purportedly transferred from Mr. Tison to an organization called Exportation D'Ocean, in Algiers, Algeria. Mr. Tison was no longer explicitly named as a contact for the domain name, however, his e-mail address, firstname.lastname@example.org, was listed under the information for the Administrative Contact. Furthermore, the nameservers remained the same: <ns0.portland.co.uk> and <ns1.portland.co.uk>. Likewise, the page remained at 18.104.22.168, or orinoco.portland.co.uk. .
4.12 On August 22, 2000, Complainant received an e-mail from an individual who identified himself as Henri Malroux on behalf of Exportations DíOcean. Mr. Malroux indicated he was in receipt of the cease and desist letter addressed to Dennis Tison regarding the domain name since his company, in Algiers, had purchased the domain name from the Respondent. In this e-mail, Mr. Malroux indicated that his company "would be willing to entertain any offers [for the <sacramentobee.com> domain name] you might put forward."
4.13 By August 22, 2000, the <sacramentobee.com> Web site had changed again. The enlarged photograph of the bee returned and the banner advertisement was removed. The link to the e-mail address was also removed. The Web site now also stated that "[t]his is not The Sacramento Bee Newspaper site."
4.14 On August 24, 2000, Mr. Malroux sent another e-mail message to the Complainant, attaching his August 22, 2000, message and requesting that the Complainant "indicate within seven days if [it is] interested as there is additional interest in this site." In addition, Mr. Malroux stated that the <sacramentobee.com> Web site "has been averaging 11,000 hits/month."
4.15 The header information attached to the August 22 and August 24 e-mails from Henri Malroux reveals that both e-mails were sent through a dial-up connection to softcom.net. Softcom.net is the domain of Softcom Internet Communications, an ISP serving Northern California (including Sacramento) and certain parts of Nevada and Utah -- not Algeria.
4.16 On September 13, 2000, the NSI database revealed that the domain name had been transferred yet again to another registrar, eNom, Inc., and another entity, the Republican Center for Informatics in Moldova. The registrar identified Ruhl Chirev as the contact and listed his e-mail address as RChirev@sacramentobee.com. Once again, although the registrant had apparently changed, the nameservers and Web servers remained the same: <portland.co.uk>. The photograph of the bee was removed once again and the link to the registrantís e-mail was replaced (adding RChirev@sacramentobee.com as the e-mail address that automatically appeared when the link was selected). All other language on the site was removed.
4.17 On September 15, 2000, Complainant sent Ruhl Chirev at the Republican Center for Informatics by e-mail to RChirev@sacramentobee.com, a cease and desist letter which also requested that it relinquish ownership of the domain name.
4.18 On September 16, 2000, immediately after Complainant sent the cease and desist letter, the registrantís name was changed again, this time to the Society of All Jardin located in Yemen. On September 19, 2000, according to a Whois database search, the nameservers and Web servers remained the same.
4.19 On October 26, 2000, the registrantís name was changed again, this time to "Lizardca-Holding," another entity in Moldova, which appears from a Whois database search for <sacramentobee.com> printed on November 29, 2000. The nameservers and Web servers remained the same. The Web site remained exactly the same as it had when the domain was registered to the Society of All Jardin; even the contact email address remained email@example.com.
4.20 On February 14, 2001, the Complainant noticed that the <sacramentobee.com> Web site had also changed. The material previously posted on the Web site was replaced by a list of people connected with former President Bill Clinton, "Friends of Bill," describing the apparently mysterious or strange circumstances under which they died. The Web site obliquely accused former President Clinton of being involved in the deaths of these people. The Web site did not disclaim association or sponsorship by The Sacramento Bee. A search of the Whois database on February 14, 2001, indicated that the registrant of the domain name was still "Lizardca-Holding."
4.21 A search of the Whois database on March 1, 2001, confirmed that the registrant of the domain name was still "Lizardca-Holding." On that date, Complainant submitted a Complaint to the Center electronically and by Federal Express, against Lizardca-Holding. On this same date, March 1, 2001, Complainant sent copies of the Complaint to the concerned registrar and the Respondent Lizardca-Holding electronically and by Federal Express and postal service, return receipt requested.
4.22 The domain name was transferred yet again on March 4, 2001, to a new entity in Moldova called Moldava S.A. The <sacramentobee.com> Web site had changed and was now framing the exact content available on The Sacramento Beeís <sacbee.com> Web site, making it impossible to distinguish between the <sacramentobee.com> Web site and the official <sacbee.com> Web site. The person or persons responsible, by now having had an opportunity to read the allegations in the Complaint, implemented further changes as evidenced by a printout of the website on March 5, 2001. For instance, for the first time since Dennis Tison ceased being registered as the owner of the domain name, the location of the servers changed.
4.23 Due to the transfer of the domain name by Lizardca-Holding, it no longer appeared on the concerned registrarís Whois database as the registrant of the domain name. On March 12, 2001, the Center notified Complainant that the Complaint was deficient administratively in that the Respondent, Lizardca-Holding, was not the registrant of the disputed domain name as indicated by the records of the registrar. Complainant was therefore forced to submit an Amended Complaint against the alleged new registrant, Moldava S.A.
4.24 The convoluted transfers of domain name ownership and changes to the Web site in the last few months appear to be attempts, either by Dennis Tison or others associated with him to conceal his identity or otherwise disguise his continuing association with the domain name. This Administrative Panel finds this as a fact.
5. Partiesí Contentions
5.1 The Complainant contends that the domain name <sacramentobee.com> is virtually identical to its registered trademark for THE SACRAMENTO BEE, and that this use of the mark infringes on Complainantís rights by confusing the public as to the origins of the <sacramentobee.com> Web site.
5.2 Thus, the Complainant contends that Respondentís use of Complainantís mark creates the false impression that the <sacramentobee.com> e-mail address and the <sacramentobee.com> Web site, are affiliated with or sponsored by the Complainant, all contrary to the Policy, paragraph 4(a)(i).
5.3 Complainant contends that Respondent has no rights or legitimate interest in the domain names <sacramentobee.com> pursuant to the Policy, paragraph 4(a)(ii).
5.4 Complainant contends that Respondent registered and is using the domain name <sacramentobee.com> in bad faith in violation of the Policy, paragraph 4(a)(iii).
5.5 Respondent did not reply to the Complaint or otherwise participate in the proceedings.
C. No Other Submissions
5.6 The Panel has not received any requests from Complainant or Respondent regarding further submissions, beyond the Amended Complaint, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties (taking note of the Respondentís default in responding to the Complaint).
6. Discussion and Findings
6.1 The Complaint was submitted on the basis of the provisions of the Registration Agreement in effect between the Respondent and eNom, Inc. which incorporates, by reference, the Uniform Domain Name Dispute Resolution Policy (the "Policy") by way of eNom, Inc.ís domain name dispute policy in effect at the time of the dispute. The policy requires that domain name registrants such as Respondent submit to a mandatory administrative proceeding regarding third-party allegations of abuse of domain name registration (Policy, paragraph 4(a)).
6.2 Such administrative proceedings are conducted by ICANN-approved dispute resolution service providers such as WIPO. The Policy provides an administrative means for resolving disputes concerning allegations of abuse of domain name registration, subject to referral of the dispute to a court of competent jurisdiction for independent resolution (Policy, paragraph 4(a)).
6.3 The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (See e.g. paragraph 2(a), Rules).
6.4 In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply or participate in any other fashion is not due to any omission by WIPO (See Procedural History, supra).
Applicable Rules and Principles of Law
6.5 Paragraph 15(a) of the Rules addresses the principles to be used in rendering a decision:
"A Panel shall decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
6.6 The domiciles of the Complainant and the named Respondent differ, although that of Dennis Tison is the same as the Complainantís. In other cases it has been found unnecessary to deal with applicable rules and principles of law in a substantial depth, but rather to turn to jurisprudence developed by a wide variety of Panelists as a fruitful source of precedent. See e.g. Singapore Airlines Ltd. v. P&P Servicios de Communication S.L. (WIPO Case No. D2000-0643.1); TV Globo Ltda. v. Globoesportes.com (WIPO Case No. D2000 Ė 0791); ViewSonic Corporation v. Informer Associates Inc. (WIPO Case No. D2000-0852); Bank of New Zealand v. Xuhui, Dai (WIPO Case No. D2000-0988); and BAA plc v. Spektrum Media Inc. (D2000-1179). This has been done in cases where particularly egregious circumstances are shown. This case displays such circumstances.
In order to obtain the relief requested under the Policy, Complainant must prove in the administrative proceeding that each of the three elements of paragraph 4(a) are present:
6.7 (i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
The uncontradicted evidence of the Complainant satisfies the Panel that the Respondent has registered a domain name identical or confusingly similar to Complainantís registered trademark.
6.8 (ii) Respondent has no rights or legitimate interests in respect of the domain name.
The Respondent has not asserted any rights or legitimate interests in respect to the domain name in question. While the burden of proof in this regard is on the Complainant (See America Online Inc. v. Anson Chan (WIPO Case No. D2001-0004), and Madonna Ciccone, p/ka Madonna v. Dan Parisi and ĎMadonna.comí (WIPO Case No. D2000-0847)), the Panel may draw an inference that Complainantís allegations are true where the Respondent has failed to submit a response (See Reuters Limited v. Global Net 2000 Inc. (WIPO Case No. D2000-0441)). An inference in favor of the Complainant may be drawn in this regard where there is no evidence that the Respondent has been commonly known by the domain name (America Online Inc. v. Anson Chan (WIPO Case No. D2001-0004)). It has been held in an earlier Panelís decision that the absence of any license or permission from a Complainant for the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks have been found to be evidence of the lack of a Respondentís rights or legitimate interests in the domain name. (See Telstra Corp. Ltd. v. Nuclear Marshmellows (WIPO Case No. D2000-003)). This Panel finds that on a preponderance of evidence before it that the Respondent has no rights or legitimate interests in respect of the domain name <sacramentobee.com>.
6.9 (iii) The domain name has been registered and is being used in bad faith.
Twenty-five years before the Sacramento Bee was first published, an English judge Sergeant Arabin, sitting at the Old Bailey in London concluded of the matter then before him that "if ever there was a case of clearer evidence than this of persons acting together this case is that case". While this Panel may not agree with the syntax of that statement, the same conclusion may readily be adopted to the circumstances here. It is very much to be doubted that Dennis Tison, Henri Malroux, Republican Center for Information, the Society of All Jardin, Lizardca-Holding and Moldava S.A. are separately controlled persons and entities. In any event, there is sufficient evidence to warrant a finding that their conduct, individually and in concert, is such as to make the acts of any one of them admissible in this Panelís determination that the domain name in question has been registered and is being used in bad faith. Being a Sacramento resident, there can be no question but that Mr. Tison was well aware of the mark in question. The evidence demonstrates, overwhelmingly, a consistent pattern of capitalizing on the goodwill and trade-worthiness of Complainantís respective business. The covert attempts to transfer the domain name in question through a number of nominees in a variety of countries demonstrates a transparently nefarious scheme to delay justice and further harm the Complainant.
6.10 In addition, this Panel agrees with the submission on behalf of the Complainant to the effect that even if Moldova S.A. is not Tison, its actions, on their own, constitute bad faith use of the domain name.
7.1 For the foregoing reasons, the Panel finds that the Complaint has satisfied the applicable standard of proof, which must be met by the Complainant, which is a preponderance of the evidence. See Madonna Ciccone p/ka Madonna v. Dan Parisi and ĎMadonna.comí (WIPO Case No. D2000-0847) and America Online Inc. v. Anson Chan (WIPO Case No. D2001-0004).
7.2 The ruling of this Panel is that the registration of the domain name <sacramentobee.com> be transferred to the Complainant.
Cecil O.D. Branson
Dated: May 7, 2001