WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gannett Co., Inc. v. Henry Chan
Case No. D2004-0117
1. The Parties
The Complainants are Gannett Co., Inc., and each of its subsidiaries that have ownership rights in the trademarks at issue, of Reno, Nevada, United States of America, represented by Dow, Lohnes & Albertson, PLLC, United States of America.
The Respondent is Henry Chan, of Nassau, Bahamas.
2. The Domain Names and Registrar
The disputed domain names:
are registered with iHoldings.com Inc. d/b/a DotRegistrar.com
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 13, 2004. On February 16, 2004, the Center transmitted by e-mail to iHoldings.com Inc. d/b/a DotRegistrar a request for registrar verification in connection with the domain names at issue. iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by e-mail 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 February 20, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default.
The Center appointed Christiane Féral-Schuhl 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 Complainants are the owners of the following United States federal registrations, which are used through trademark licenses for newspaper titles: ARIZONA REPUBLIC (Reg. No. 2,136,804), ASHEVILLE CITIZEN-TIMES (Reg. No. 2,017,084), THE CINCINNATI ENQUIRER (Reg. No. 2,302,203), THE CLARION-LEDGER (Reg. No. 2,365,928), COURIER-POST (Reg. No. 2,752,629), COURIER-POST ONLINE (Reg. No. 2,243,458), THE COURIER-JOURNAL (Reg. No. 2,304,262), DEMOCRAT AND CHRONICLE (Reg. No. 2,359,626), THE DES MOINES REGISTER & DESIGN (Reg. No. 1,249,840), FORT COLLINS COLORADOAN (Reg. No. 2,781,581), GREEN BAY PRESS-GAZETTE (Reg. No. 2,794,129), THE GREENVILLE NEWS (Reg. No. 2,320,946), THE JOURNAL NEWS (Reg. No. 2,267,383), MONTGOMERY ADVERTISER (Reg. No. 2,781,572), THE POST-CRESCENT (Reg. No. 2,755,824), RENO GAZETTE-JOURNAL (Reg. No. 2,323,740), ROCKFORD REGISTER STAR (Reg. No. 2,320,943), SPRINGFIELD NEWS-LEADER (Reg. No. 2,677,658), THE TENNESSEAN (Reg. No. 2,285,589) and USA TODAY (Reg. No. 1,332,045).
The Complainants have also acquired common law rights in the following trademarks based on the Complainants long, continuous and exclusive use: THE BURLINGTON FREE PRESS, THE ARIZONA REPUBLIC, THE DES MOINES REGISTER, OSHKOSH NORTHWESTERN, PENSACOLA NEWS JOURNAL, STAR-GAZETTE, STATESMAN JOURNAL, and THE TOWN TALK.
The Complainantsí newspapers and websites are well-known in their respective regions and throughout the United States.
The Complainant, Gannett Co. Inc., is the owner of the GANNETT trademark and currently owns a number of United States federal registrations and pending applications for trademarks that include the GANNETT mark and operates a website at the domain name <gannett.com> since 1996.
When a visitor types in the contested domain names, he or she is directed to a portal site which directs the visitor to links to third party commercial websites in a variety of areas, including newspaper websites that are in direct competition with the Complainantsí newspapers.
On February 28, 2002, counsel for the Complainants sent a demand letter via Federal Express and e-mail to the Respondent at his then-listed address in Hung Hom, Hong Kong, and his email address, demanding that the Respondent cease his use of the domain name <ashvillecitizentimes.com> and transfer this domain name to the Complainant, the Asheville Citizen Times. The FedEx package was returned as undeliverable, and counsel for the Complainants did not receive a response to the e-mail. On May 15, 2003, counsel for the Complainants sent a second demand letter via Federal Express to the Respondent at his then-listed address at the Cheung Tat Centre, Chai Wan, Hong Kong. This FedEx package was also returned as undeliverable.
5. Partiesí Contentions
The Complainants indicate that they either own registration certificates or have common law rights in the trademarks on which their complaint is based.
The Complainants explain that all the contested domains are identical or confusingly similar to their trademarks. The Complainants explains that in some cases:
- the only difference between their marks and the corresponding domain names is the addition of the ".com" generic top-level domain and the deletion of the hyphens in Complainantsí marks, both of which are irrelevant (Draw-Tite, Inc. v. Plattsburgh Spring Inc., WIPO Case No. D2000-0017, March 14, 2000);
- the Respondent has either added or deleted a generic or descriptive term (e.g. "jobs", "daily", "register", "the", "art" or "life"), and that such addition or deletion of an ordinary generic or descriptive term does not prevent the domain names from being confusingly similar to the Complainantsí marks (Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031, March 5, 2003; Sony Kabushiki Kaisha v Inja, Kil, WIPO Case No. D2000-1409, December 9, 2000; Bedford Fair Apparel, Inc. v. Henry Chan, Claim No. FA 157322, June 20, 2003.);
- the Respondent has added (or deleted) the applicable geographic identifiers and that it is well established that a domain name consisting of a (locally) well-known mark, combined with the applicable geographically descriptive term or phrase, is confusingly similar to the mark, as stated in America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713, August 24, 2000; The Field Museum of Natural History v. John Barry d/b/a Buy This Domain, Claim No. FA 114354, June 28, 2002;
- the contested domain names consist of a second-level domain name that either drops out, replaces or switches one or more letters of the Complainantsí marks in a manner that creates common misspellings of the Complainantsí marks. Such misspellings are likely to be confused with the Complainantsí marks and in such cases, panels have already decided for the transfer (CimCities, LLC v. Party Night, Inc., WIPO Case No. D2002-0613, August 16, 2002; Microsoft Corporation v. Microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548, July 21, 2000; Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, WIPO Case No. D2000-0578, August 28, 2000).
The Complainants also explain that in some cases, the Respondent has registered domain names which cumulate two or three of the modifications mentioned above.
According to the Complainants, the Respondent has no rights or legitimate interests in the domain names as the Respondent has registered the domain names without the authorization, knowledge or consent of the Complainants. The Complainants specify that the Respondent is not a licensee of the Complainants, nor is he authorized to use the Complainantsí marks. The Complainants state that such a situation creates a presumption that the Respondent cannot establish that it has rights or any legitimate interest in the domain names, as in Guerlain S.A. v. SL, Blancel Web, WIPO Case No. D2000-1191, November 21, 2000, and Nilfisk-Advance A/S v. Leong Tak Lang, WIPO Case No. D2000-1299, December 27, 2000.
In addition, the Complainants explain that the Respondentís use of the domain names to misdirect potential visitors to third party commercial websites is not a bona fide use of the domain names, and does not constitute a legitimate, non-commercial use of the domain names under the Policy (MBNA America Bank, N.A. v. Vertical Axis, Inc., Claim No. FA0211000133632, January 6, 2003; The George Washington University v. Domain World a/k/a Domains For Sale a/k/a John Barry, Claim No. FA0208000122140, October 14, 2002). Moreover, at least some of the websites that are prominently linked to the Respondent feature third party newspapers or newspaper products that are in direct competiton with Complainantsí newspapers (Bedford Fair Apparel, Inc. v. Henry Chan, Claim No. FA0305000157322, June 20, 2003).
Finally, the Complainants insist on the fact that the Respondent cannot establish rights in the contested domain names because it has never been commonly known by the domain names and has not acquired trademark or service mark rights in the domain names (Gallup Inc. v. Amish Country Store, Claim No. FA010000096209, January 23, 2001; Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020, March 14, 2000).
As far as bad faith is concerned, the Complainants indicate that the Respondentís registration of the contested domain names that are identical or nearly identical to the Complainantsí federally registered marks and his use of those domain names in a manner that deliberately prevents Complainants from using their marks as a domain name is evidence of the Respondentís bad faith (J. Crew International, Inc. v. crew.com, WIPO Case No. D2000-0054, February 16, 2000; Henry Ford Health System v. Domain For Sale, Inc., FA0203000105976 April 30, 2002).
According to the Complainants, the Respondentís use of the domain names to misdirect potential visitors to the Complainantsí websites to Respondentís commercial website and to other third party commercial websites, for which Respondent presumably receives compensation, is also evidence that the Respondent registered the domain names to deceptively attract and then misdirect Internet users for the Respondentís own commercial gain (The George Washington University v. Domain World a/k/a Domains For Sale a/k/a John Barry, Claim No. FA0208000122140; October 14, 2002).
In addition, the Complainants insist on the past behavior of the Respondent, which is a well-known cybersquatter, such being evidence of bad faith use (LTD Commodities LLC v. Henry Chan, Claim No. FA0303000152617, May 8, 2003; Pioneer Hi-Bred International, Inc. v. Henry Chan, Claim No. FA0304000154119, May 12, 2003; Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031, March 5, 2003).
Finally, the Complainants specify that the Respondent has carried out "typosquatting", which is in itself evidence of bad faith registration and use under the Policy. See Natíl Assín of Profíl Baseball Leagues Inc., v. Zuccarini, WIPO Case No. D2002-1011, January 21, 2003).
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
As a preliminary finding, the Panel notes that the fact there are multiple Complainants in this proceeding with interests in the trademarks at issue does not prevent the Panel from examining the case as there is only one single Respondent for all the domain names. In addition, all Complainants have the same parent company. Previous panels have also decided to examine such similar cases (NFL Properties, Inc. et al. v. Rusty Rahe, WIPO Case No. D2000-0128, April 26, 2000; Mucos Emulsions, GmbH and Marlyn Nutraceuticals v. Esex.org and Kim Taeho, WIPO Case No. D2000-1513, April 12, 2001).
A. Identical or Confusingly Similar
It is well established under the Policy that the concept of rights in a trademark does not necessarily mean a complainant must own a registered trademark. Common law rights may be sufficient to support a domain name complaint under the Policy (Brooklyn Institute of Arts and Sciences v. Fantastic Sites, Inc., Case No. FA 95560, November 2, 2000).
As a consequence, the panel finds that the Complainants have met their burden of proof regarding their rights in the trademarks on the basis of which the complaint has been filed.
Regarding identity or confusing similarity, the Panel notes that it is well established under the Policy that the addition of the ".com" generic top-level domain, the deletion of the hyphens, or other non-significant modifications to the complainantís marks do not prevent confusing similarity (e.g. Draw-Tite, Inc. v. Plattsburgh Spring Inc., WIPO Case No. D2000-0017, March 14, 2000).
The Panel emphasizes that the misspelling of a trademark registered as a domain name is in itself a confusing similarity (CimCities, LLC v. Party Night, Inc., WIPO Case No. D2002-0613, August 16, 2002; Microsoft Corporation v. Microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548, July 21, 2000; Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, WIPO Case No. D2000-0578, August 28, 2000).
The Panel also recalls that in numerous cases, it has been stated that a domain name that wholly incorporates a complainantís mark may be sufficient to establish confusing similarity for purposes of the Policy. As an example, in A. Nattermann & Cie Gmbh, Aventis Pharma SA v. Derrick Horner, WIPO Case No. D2003-0844, the panel stated that ""Direct" being a generic word, the dominant element remains "lipostabil" (Ö) In other words, the mere addition of the word "direct" has not such an influence upon the overall impression that it would exclude the likelihood of confusion between the domain name and the Complainantís trademarks."
In addition, it is well established that a domain name consisting of a well known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark, as stated in America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713, August 24, 2000; The Field Museum of Natural History v. John Barry d/b/a Buy This Domain, Claim No. FA 114354, June 28, 2002.
As a consequence, in the present case, the panel finds that all the contested domain names, in one way or another, are confusingly similar to the Complainantsí trademarks.
B. Rights or Legitimate Interests
Paragraph 4(a)(c) of the Policy explains how a Respondent may demonstrate its rights to and legitimate interests in a domain name in responding to a complaint.
In the present matter, the Respondent has not filed any response.
As a consequence, it has not been proven that the Respondent is either affiliated to the Complainant or an official dealer.
It has not been proven either that there is a legal or business relationship between the parties.
The Complainant denies that any relationship of such kind ever existed.
As a consequence, such as in the "Telstra" decision (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, February 18, 2000), it can be stated that: "Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Uniform Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name. In light of (i) the fact that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks, and (ii) the fact that the word "TELSTRA" appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant, the Administrative Panel finds that the Respondent has no rights or legitimate interests in the domain name."
The facts brought to the Panelís attention in WIPO Case No. D2000-0003 are similar to those in the present dispute regarding the test of paragraph 4(a)(c) of the Policy.
Hence, the Panel finds that in the present case there is no proof that the Respondent has a right or legitimate interest in the contested domain name.
C. Registered and Used in Bad Faith
As far as bad faith is concerned, thePpanel notes that the Respondent obviously knew the Complainantsí trademarks when registering the domain names as in many cases, the Respondent just misspelled the Complainantsí trademarks, added a generic term or the name of a geographical area to these trademarks. In some other cases, the Respondent just added an hyphen.
In order to make such modifications to the Complainantsí trademarks, the Respondent necessarily knew these trademarks prior to registering the contested domain names.
The Panel also notes the impressive number of domain names registered by the Respondent which are all confusingly similar to the Complainantsí trademark, which obviously means that the Respondent is engaged in a pattern of conduct consisting of registering third parties trademarks as domain names.
In addition, the Respondent is a well-known cybersquatter as Henry Chan was also the Respondent in several transfer decisions before the present proceeding: LTD Commodities LLC v. Henry Chan, Claim No. FA0303000152617, May 8, 2003; Pioneer Hi-Bred International, Inc. v. Henry Chan, Claim No. FA0304000154119, May 12, 2003; Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031, March 5, 2003.
As a consequence, the Panel considered that the Respondentís conduct constitutes bad faith registration and bad faith use of the contested domain names.
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 names:
<arizonarepblic.com>, <arizonarepublicjobs.com>, <artusatoday.com>, <ashvillecitizentimes.com>, <bagannet.com>, <burlingtonfreeprees.com>, <cincinnatienqurier.com>, <citizenstimes.com>, <clarinledger.com>, <clarionledgar.com>, <clarionledge.com>, <claronledger.com>, <courialjournal.com>, <couriorpost.com>, <couriorpostonline.com>, <courrierpost.com>, <democratandchroncile.com>, <democratandcronical.com>, <democrateandchronical.com>, <democratechronicle.com>, <demoinesregister.com>, <desmoinsregister.com>, <gannetnews.com>, <greenbaypressgazett.com>, <greenvillnews.com>, <jacksonclarionledger.com>, <lifeusatoday.com>, <montgomeryadvertisor.com>, <montgomeryadvertizer.com>, <pensacolanewsjournel.com>, <renogazzettejournal.com>, <rockfordregistarstar.com>, <rockfordstar.com>, <springfieldnewleader.com>, <stargazett.com>, <statesmansjournal.com>, <tenesseean.com>, <tennesian.com>, <tennesseeian.com>, <tennesseian.com>, <theburlingtonfreepress.com>, <thecoloradoan.com>, <thedailytowntalk.com>, <themontgomeryadvertiser.com>, <theoshkoshnorthwestern.com>, <thepostcrescent.com>, <therocklandjournalnews.com>, <thetennessan.com>, <westchesterjournalnews.com>,
be transferred to Complainant Gannett Co., Inc., the ultimate parent company of the Complainants.
Date: April 8, 2004