WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Media West-CPI, Inc., Media West-GRS, Inc., Cape Publications, Inc., Gannett River States Publishing Corp., Gannett Co., Inc. v. Party Night, Inc.

Case No. D2003-01006

 

1. The Parties

The Complainants are Media West-CPI, Inc., Media West-GRS, Inc., Cape Publications, Inc., Gannett River States Publishing Corp., Gannett Co., Inc., Reno, Nevada, United States of America represented by Dow, Lohnes & Albertson, PLLC, Washington D.C., United States of America.

The Respondent is Party Night, Inc., Amsterdam, Netherlands.

 

2. The Domain Names and Registrars

The disputed domain names <flordiatoday.com> and <shreveportimes.com> are registered with DomainDiscount24.com, a branch of Key-Systems GmbH.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 18, 2003. On December 22, 2003, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the domain names at issue. On January 2, 2004, Key-Systems GmbH dba domaindiscount24.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the  "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 7, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on January 28, 2004.

The Center appointed Edward C. Chiasson Q.C. as the Sole Panelist in this matter on February 5, 2004.

The Administrative Panel finds that it was properly constituted. The panelist has submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The following information derives from the Complaint.

Media West-CPI, Inc. owns the United States trademark rights of various FLORIDA TODAY® marks, which marks are used under license by Cape Publications, Inc., the owner and publisher of the FLORIDA TODAY newspaper and the FLORIDA TODAY® website, to which the domain name <floridatoday.com> resolves.

Both Media West-CPI, Inc. and Cape Publications, Inc. are subsidiaries of Gannett Co., Inc. Media West-GRS, Inc. owns common law trademark rights in THE TIMES™ and SHREVEPORT TIMES™ marks, which are used under license by Gannett River States Publishing Corp., the owner and publisher of THE TIMES newspaper and the SHREVEPORT TIMES™ website to which the domain name <shreveporttimes.com> resolves. Both Media West-GRS, Inc. and Gannett River States Publishing Corp. are subsidiaries of Gannett Co., Inc.

The Complainant Gannett River owns and publishes FLORIDA TODAY, a daily newspaper that has been continuously published and promoted under the FLORIDA TODAYÒ mark since August 26, 1985. In addition, since October 1998, the Complainant Gannett River has operated an online version of its newspaper at the domain name <floridatoday.com>.

Media West-CPI, Inc. is a subsidiary of Gannett Satellite Information Network, Inc. and owns six U.S. federal registrations for marks that include the FLORIDA TODAY® mark. Five of these registrations are now incontestable within the meaning of the Lanham Act. These registrations are as follows:

MARK

REGISTRA-TION NUMBER

INTíL CLASS

DESCRIPTI-ON

FLORIDA TODAY®

1,408,440

016

daily newspaper containing news of statewide interest

FLORIDA TODAY and DESIGN®

1,394,857

016

daily newspaper containing news of statewide interest

FLORIDA TODAY and DESIGN®

1,394,856

016

daily newspaper containing news of statewide interest

FLORIDA TODAY and DESIGN®

1,394,855

016

daily newspaper containing news of statewide interest

FLORIDA TODAY and DESIGN®

1,396,808

016

daily newspaper containing news of statewide interest

FLORIDA TODAY SPACE ONLINE®

2,221,209

042

computer services, namely, providing information about NASA, the United States commercial space program and various international space programs by means of a global computer network

These marks are collectively referred to herein as the "FLORIDA TODAY® Registered Marks."

The federal registrations for the FLORIDA TODAY® Registered Marks were initially in the name of Gannett Co., Inc., except for the mark FLORIDA TODAY SPACE ONLINE®, which was initially registered in the name of Media West-CPI, Inc. The FLORIDA TODAY® Registered Marks that were initially registered in the name of Gannett Co., Inc. were subsequently assigned from Gannett Co., Inc. to Cape Publications, Inc., and from Cape Publications, Inc. to Media West-CPI, Inc.

The FLORIDA TODAY® Registered Marks are used by the Complainant Cape Publications, Inc. in its creation and distribution of the FLORIDA TODAY newspaper pursuant to a license agreement between Cape Publications, Inc. and Media West-CPI, Inc.

The Complainant Cape has continuously and extensively used the FLORIDA TODAY#210; mark to identify, advertise and promote the FLORIDA TODAY newspaper and "www.floridatoday.com" website.

FLORIDA TODAY provides daily news coverage and advertising information to more than 300,000 residents in Brevard County, Florida. In addition to the daily newspaper circulation, the online edition of the newspaper located on the website to which <floridatoday.com> resolves has received more than 35 million total site visits and 140 million page views since it was first made available to the public on November 5, 1996.

The Complainant Cape in its own name or in the name of FLORIDA TODAY newspaper, has registered numerous second-level domain names incorporating the FLORIDA TODAY® mark, including: <floridatoday.com>, <floridatoday.org>, <floridatoday.net>, <floridatoday.info>, <floridatoday.biz>, <florida-today.com>, <florida-today.org>, <florida-today.net>, <florida-today.info>, <florida-today.biz>, <florida-today.us>, <flatoday.com>, <flatoday.org>, <flatoday.net>, <flatoday.biz> and <flatoday.info>.

The FLORIDA TODAY® Registered Marks and FLORIDA TODAY® Domain Names are collectively referred to herein as the "FLORIDA TODAY® Marks."

The FLORIDA TODAY newspaper and "www.floridatoday.com" website are extremely successful and well-known.

The Complainant Cape currently spend approximately $470,000 per year to promote the FLORIDA TODAYÒ newspaper, website and marks. As a result, the Complainant Cape has developed extremely valuable goodwill and an outstanding reputation in FLORIDA TODAYÒ Marks, which are associated exclusively with Complainant Cape.

The Complainant Gannett owns and publishes THE TIMES, a daily newspaper founded in 1872, that has been continuously published in Shreveport, Louisiana for more than 128 years. THE TIMES is one of Louisianaís oldest continually, operating newspapers. Its print edition serves 13 parishes in Northwest Louisiana, two counties in Southern Arkansas, and five counties in East Texas. Although the newspaperís print masthead is THE TIMES, it is commonly referred to as the SHREVEPORT TIMES, as is shown by the fact that the online edition of the newspaper is branded SHREVEPORT TIMES and is located at the URL "www.shreveporttimes.com."

The Complainant Gannett claims ownership of the marks THE TIMES™ and the SHREVEPORT TIMES™ (collectively, the "SHREVEPORT TIMES™ Marks").

The SHREVEPORT TIMES™ Marks are owned by Media West-GRS, Inc., a subsidiary of Gannett River States Publishing Corp., and are used by Gannett River States Publishing Corp. in its creation and distribution of THE TIMES newspaper pursuant to a license agreement between Gannett River States Publishing Corp. and Media West-GRS, Inc.

The Complainant Gannett does not currently own any federal or state registrations for its SHREVEPORT TIMES™ Marks.

Complainant Gannett has continuously and extensively used its SHREVEPORT TIMES™ Marks to identify, advertise and promote its THE TIMES newspaper and "shreveporttimes.com" website. Complainantís THE TIMES newspaper is one of the most widely read and recognizable publications in the area of Shreveport, Louisiana, with a daily circulation of 66,877 readers.

In addition, since October 18, 2001, Complainant Gannett has operated an online edition of its newspaper at the domain name <shreveporttimes.com>. The website to which "shreveporttimes.com" resolves has received more than 1.7 million page views a month to date.

The Complainant Gannett, in the name of Media West-GRS, Inc. or in the name of its THE TIMES newspaper, has registered a number of second-level domain names incorporating its SHREVEPORT TIMES™ Marks, including: <shreveporttimes.com>, <shreveporttimes.info>, <shreveporttimes.biz>, <theshreveporttimes.info>, <theshreveporttimes.biz> and <thetimes.com> (collectively, the "SHREVEPORT TIMES™ Domain Names").

The SHREVEPORT TIMES™ Marks and SHREVEPORT TIMES™ Domain Names are collectively referred to herein as the "SHREVEPORT TIMES™ Marks." THE TIMES newspaper and "www.shreveporttimes.com" website are extremely successful and well-known.

The Complainant Gannett River currently spends approximately $270,000 per year to promote THE TIMES newspaper and mark and the SHREVEPORT TIMES™ website and marks. As a result, the Complainant Gannett River has developed extremely valuable goodwill and an outstanding reputation in its SHREVEPORT TIMES™ Marks, which is associated exclusively with Complainant Gannett River.

On or about April 10, 2002, the Respondent registered the domain name <flordiatoday.com> and on or about March 10, 2002, registered the domain name <shreveportimes.com>.

The subject domain names were registered without the knowledge or authorization of the Complainants. The Respondent is not a licensee of the Complainants and is not authorized to use the FLORIDA TODAYÒ or SHREVEPORT TIMES™ Marks.

As of the date of the execution of the Complaint, the subject domain names did not appear to resolve to any active website.

From at least May 6, 2002, through at least May 23, 2003, when a visitor typed in either of the subject domain names, the visitor was automatically linked to the website "www.hanky-panky-college.com," which contains graphic pornographic material and pop-up advertisements for a variety of pornographic and other websites. When a visitor to the "www.hanky-panky-college.com" website clicks on the "Enter Site" button, he or she receives a pop-up window containing a free XXX pornographic movie. If left open, or if a visitor attempts to close this window, he or she receives additional pop-up windows containing free previews for the pornographic websites "www.extremepenetration.net" and "www.myfreelivewebcam.com." When a visitor to the "www.hanky-panky-college.com" website hits the "BACK" or "HOME" button on his or her browser, pop-up windows appear that contain content from the websites "www.yes-yes-yes.com," "www.mp3messenger.com" and "www.prescription-drugs.org."

By letter dated May 6, 2002, counsel for the Complainants sent to the Respondent a cease and desist letter to the address then provided in the registrant contact information for the <flordiatoday.com> domain name. It was returned as undeliverable.

On May 31, 2002, counsel for the Complainants attempted to re-send the cease and desist letter to the Respondentís updated address and e-mail provided in the registrant contact information for the <flordiatoday.com> domain name. This letter also was returned as undeliverable.

Counsel for the Complainant then tried to re-send the letter via e-mail to Respondentís listed e-mail address. No response has been received.

On October 2, 2002, counsel for the Complainant sent the Respondent a cease and desist letter to the address and e-mail provided in the registrant contact information for the <shreveportimes.com> domain name and made a written demand that Respondent transfer the <shreveportimes.com> Domain Name to it. The letter was returned as undeliverable and there was no response to the e-mail.

The Respondent did not participate in the proceeding.

 

5. Partiesí Contentions

A. Complainant

The Complainants rely on their use and registration of the words "Florida Today," "The Times" and "Shreveport Times" and contend that the subject domain names are confusingly similar to their marks.

It is asserted that the Respondent does not have a legitimate interest in the subject domain names because it either does not use them or uses them to resolve to a pornographic site. The Claimants have not authorized the Respondent to use their marks.

Bad faith is said to derive from the use made of the subject domain names, which wrongly attracts users to the Respondent and which interferes with the legitimate commercial interests of the Complainants.

B. Respondent

The Respondent did not reply to the Complainants' contentions.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

It is clear that the Complainants have rights to the words "Florida Today," "The Times" and "Shreveport Times" The subject domain names essentially are indistinguishable from them. Both domain names merely alter a letter of the marks in the text of the domain name. The alterations are very subtle and not detected easily.

The Administrative Panel is satisfied that the Complainants have met the requirements of paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Respondent is not authorized to use the Complainantsí marks and either does not use them or uses them to direct members of the public to a pornographic site. Using a domain name which resolves to a pornographic site is not per se non-legitimate and a registrant may have a legitimate interest in the domain name, but not when the domain name is identical to or confusing similar to the mark of another which in the circumstances is protected.

In this case, it is not suggested that the Complainantsí rights are not engaged. There does not appear to be any connection between the Respondent or any commercial activity of the Respondent and the subject domain names.

The Administrative Panel is satisfied that the Complainants have met the requirements of paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

A respondent is not obliged to participate in a domain name dispute, but when it does not do, the respondent is subject to the legitimate inferences that flow from the not unreasonable assertions of a complainant.

A finding that a respondent does not have a legitimate interest in a domain name that is confusingly similar to the mark of another does not automatically lead to a conclusion of bad faith, but the facts on which the finding is based may be relevant to the bad faith inquiry.

The Respondent did not respond to the Complainantsí cease and desist communications. In fact, they were undeliverable to the contact locations provided by the Respondent.

The Respondentís use of the subject domain names has the potential to harm the Complainantsí reputation and goodwill as well as being a clear example of bad faith as set out in paragraph 4(b)(iv) of the Policy.

There is no information that suggests a good faith selection of the subject domain names and the subtle distortions of the Complainantsí marks suggest bad faith.

The Administrative Panel is satisfied that the Complainants have met the requirements of paragraph 4(a)(iii).

 

7. Decision

Based on the information provided to it and for all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Administrative Panel orders that the subject domain names be transferred to the Complainant.

 


 

Edward C. Chiasson Q.C.
Sole Panelist

Dated: February 11, 2004