WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The News-Gazette, Inc. v. baby safe
Case No. D2004-0115
1. The Parties
The Complainant is The News-Gazette, Inc., of Champaign, Illinois, United States of America, represented by Webber & Thies, P.C., United States of America.
The Respondent is baby safe, of Rawalpindi, Pakistan.
2. The Domain Name and Registrar
The disputed domain name <newsgazete.com> is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint filed with the WIPO Arbitration and Mediation Center (the "Center") on February 13, 2004, was against Mike Flynn as registrant for the domain name in dispute. The registrar was declared to be ENOM, Inc. Upon conducting the usual investigation, the Center was informed that after the filing of the Complaint and before formal acknowledgement of receipt of same by the Center, the registrar and the registrant were changed. In response to a notification by the Center that the Complaint had been directed to the former registrant and mentioned the former registrar and that the Complaint was administratively deficient, the Complainant filed an Amended Complaint on February 16, 2004 (although dated February 24, 2004) in which the new names of the registrant as Respondent and of the registrar appeared and in which the administrative deficiency was cured.
On February 16, 2004, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On February 16, 2004, Intercosmos Media Group d/b/a directNIC.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 Amended 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 March 1, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 21, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 23, 2004.
The Center appointed Joan Clark as the sole panelist in this matter on March 25, 2004. The Panel finds that it was properly constituted. The Panel has submitted the 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 Complainant is the owner of the registered trade-mark THE NEWS GAZETTE which according to the photocopy of the certificate of registration attached to the Complaint was registered on December 24, 1991, and has since been renewed. The Complainant also has a website at "www.newsgazette.com".
The domain name in dispute, <newsgazete.com>, was registered on December 1, 2003. Ownership of the domain name was transferred as of February 16, 2004, from Mike Flynn to baby safe, the present Respondent.
5. Parties’ Contentions
The Complainant sets forth its ownership of the trade-mark THE NEWS GAZETTE which it states it has used in connection with publishing and selling newspapers and related enterprises. The Complainant also refers to its website "www.newsgazette.com".
The Complainant asserts that the domain name in dispute is confusingly similar to the Complainant's registered trade-mark, and also notes that there is only one letter different between Respondent's domain name and the Complainant's own domain name, <newsgazette.com>. The Complainant asserts that Respondent is attempting to divert web users who are trying to reach the Respondent's website.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect to the domain name in dispute because its clear purpose is to divert people who are trying to reach the Complainant's website. The Complainant also states that the Respondent received its domain name from "Domains for Life/Mike Flynn" and that Domains for Life displayed a strong anti-abortion content to include very graphic pictures. The Complainant asserts that the Respondent has not and probably will not use the domain name in dispute for a bona fide offering of goods or services, that Respondent has never been known by <newsgazete.com> and that Respondent is making a non-commercial use of the domain name with the clear intent to divert customers of the Complainant.
Furthermore, the Complainant alleges that the domain name <newsgazete.com> is registered and is being used in bad faith.
The Complainant notes that the current Respondent acquired the domain name in dispute after the original Complaint in this case against Mike Flynn was filed, but before it was formally acknowledged by the Center. The Complainant also alleges that Mike Flynn has a long history of acting in bad faith and refers to numerous decisions: Mayo Foundation for Medical Education and Research v. Mike Flynn, National Arbitration Forum, # FA 028000117896; Wal-Mart Stores, Inc. v. Mike Flynn, WIPO Case No. D2002-1020; Smith Sports Optics, Inc. v. Mike Flynn, National Arbitration Forum # FA 020600114590; America Online, Inc. v. Mike Flynn, National Arbitration Forum, # FA 0301000143679.
The Complainant also alleges that, because the Respondent received the domain name in dispute from Mike Flynn, and because it is named "baby safe", the circumstances demonstrate that the Respondent is also acting in bad faith. The Complainant asserts that the word "newsgazete" does not relate to abortions, safety or babies, and the use of "newsgazete" by the Respondent is clearly intended to divert customers trying to reach the Complainant's website.
The Complainant requests that the Panel issue a decision that <newsgazete.com> be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that in order to be successful, Complainant has the burden of proving that all three elements are present in the Complaint, namely:
(i) that the domain name is identical or confusingly similar to Complainant's trademark or service mark; and
(ii) that Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith but are not limitative.
Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate Respondent's rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
The Panel has no hesitation in finding that the domain name in dispute <newsgazete.com> is confusingly similar to the trade-mark THE NEWS GAZETTE in which Complainant has rights. As has been held in numerous decisions, the suffix of the top level domain should not be considered in determining the question of confusing similarity. The absence of the definite article, of the second "t" in "gazette" and of the space between "news" and "gazete", as well as the use of lower case instead of upper case letters, are not sufficient to avoid confusion. Indeed, with the exception of the removal of the second letter "t", these are minor changes that a trade-mark owner would be likely to make when registering his domain name to be used in connection with his trade-mark.
B. Rights or Legitimate Interests
The Complainant's assertion that the Respondent has no rights or legitimate interests is unopposed by the Respondent. There is no evidence that Respondent or its predecessor in title Mike Flynn has made active use of the domain name in dispute. There is no evidence in the record as to what appears when one attempts to access the website of the Respondent under the domain name <newsgazete.com>. There is no evidence that the Respondent has made any preparations to use the domain name, there is no indication that the Respondent has been commonly known by the domain name, and there is no indication that the Respondent is making a legitimate, non-commercial or fair use of the domain name.
The Panel concludes that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
The Complainant makes a plausible argument that, in view of the history of acting in bad faith of the original registrant "Domains for Life/Mike Flynn" and in view of the name of the current registrant baby safe, it would seem that the website of the domain name in dispute was intended for a political anti-abortion purpose, for which the domain name at issue was chosen in view of its confusing similarity to the trade-mark THE NEWS GAZETTE and its apparent association with the Complainant's name The News-Gazette, Inc. and own domain name <newsgazette.com>. There is no indication in the record of any other reason for the adoption by the current or former registrant of the domain name at issue. The political purpose aforesaid is evident in the Mayo Foundation decision (supra) where Mike Flynn, predecessor to the Respondent herein, was held to use a confusing domain name to divert users to <abortionismurder.org>, a graphic anti-abortion website.
In the Wal-Mart Stores decision (supra) it was held that "the issue of bad faith is further clearly demonstrated to the Panel by the movement of the Domain Name's Registrar and change in name of the Registrant in an obvious attempt to avoid responsibility and continue its use of the Domain Name." In the present case, there was also a change of Registrar and there was also a change of Respondent's name, following the pattern of the Wal-Mart Stores decision and creating the presumption these changes were intended to impede a challenge to the domain name at issue.
There is no indication that the domain name at issue is in active use at present. It has been held in a number of decisions that the use required for this criterion of registration and use in bad faith need not be active use, but can be passive use, that is maintaining the domain name such that it is not available for the person entitled to use it. The Panel is satisfied that, by adopting a domain name confusingly similar to the Complainant's trade-mark and closely associated with the name and domain name of Complainant, without any justification for choosing a domain name so similar to the foregoing, the domain name at issue <newsgazete.com> was registered and is used in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <newsgazete.com> be transferred to the Complainant.
Dated: April 7, 2004