WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Orlando Sentinel Communications Company v. Orlandsentinel-Com-Dom
Case No. D2005-0163
1. The Parties
The Complainant is Orlando Sentinel Communications Company, New York, United States of America, represented by Susan Tillotson Bunch of Holland & Knight, LLP, Tampa, Florida, United States of America.
The Respondent is Orlandsentinel-Com-Dom, United States of America.
2. The Domain Name and Registrar
The disputed domain name <orlandsentinel.com> is 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 10, 2005. On February 11, 2005, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On February 11, 2005, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant. In response to a notification by the Center that the Complaint was administratively deficient (Complaint not filed in electronic format, registrant of record of the domain name was not the person/entity specified in the Complaint as the Respondent), the Complainant filed an amendment to the Complaint on February 24, 2005. The Center verified that the Complaint together with the amendment to 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 28, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 20, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 21, 2005.
The Center appointed Paul E. Mason as the sole panelist in this matter on March 31, 2005. 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
Complainant is based in the central part of Florida and publishes a daily newspaper of general circulation throughout the area and around the United States, in both print and electronic formats. These formats include local, state and national news, obituaries, movie listings, classified advertising, real estate and employment listings. According to the Complaint, Complainant does business as the Orlando Sentinel and has operated under that name since 1982, with customers throughout the United States.
Complainant has registered with the U.S. Patent & Trademark Office the marks ORLANDO SENTINEL and ORLANDOSENTINEL.COM, both on January 28, 2002. For many years prior to the registration of these marks, Complainant has been using them regularly in commerce.
5. Parties’ Contentions
In order to make its case for transfer of a domain name, Complainant must prove three elements:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent’s domain name has been registered and is being used in bad faith.
a) The domain name is almost exactly the same as the mark, the difference being omission of the final “o” in “Orlando”, amounting to “typosquatting”.
b) Complainant has both registered and regularly used its mark in commerce for a substantial period of time, with large investments to market its services under the mark. Respondent has no rights in the mark whatsoever.
c) Respondent has registered the domain name in bad faith by shifting the name of the registrant, as it has in a plethora of other UDRP cases filed against it by various complainants. Respondent has also used the domain name in bad faith directing Internet traffic to various profit-making websites, a number of which offer competing services to those of Complainant such as news headlines, job listings, classified ads, subscriptions, etc.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the domain name is confusingly similar to Complainant’s registered and common law trade marks.
Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
On this issue the Panel finds that Complainant has shown sufficient evidence to prove that the Respondent lacks rights and legitimate interests in the domain name.
Respondent did not submit a Response and has failed to rebut Complainant’s showing of no rights and legitimate interests. The record shows in particular that the Respondent is using the domain name to direct Internet traffic to various profit-making websites, some of which directly compete with the Complainant’s services. Such use of the domain name, which is confusingly similar to Complainant’s trademark, cannot be considered as a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy. The Respondent has not made any legitimate non-commercial or fair use of the Domain Name.
Respondent did not submit a Response and has failed to rebut Complainant’s showing of no rights and legitimate interests. See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270. The Panel in that case indicated that “Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name. This “burden shifting” is appropriate given that Paragraph 4(c) of the Policy, which is entitled “How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint,” discusses the kind of evidence a Respondent should provide to show that it has rights to or legitimate interests in the domain name. The burden of proof, however, does not shift as the Policy makes clear that “the complainant must prove that each of these three elements are [sic] present.” Policy, ¶ 4(a).
However, in this case, the Respondent has failed to meet even a minimum burden. Accordingly, the Panel finds that the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
On the matter of bad faith registration, the Panel finds that this is indicated by Respondent’s shifting of its registration name from “Horoshiy, Inc.” to “Henry Chan” and from “Henry Chan” to “ORLANDSENTINEL-COM-DOM”, apparently following a similar pattern in a number of prior UDRP cases with the same Respondent(s).
On the matter of bad faith use, the Panel finds that Respondent has used the domain name to resolve to a website offering services directly competing with those of Complainant – at least as of November 17, 2004, which was the date on Exhibit D to the Amended Complaint. The Panel notes that there was no disclaimer on Respondent’s website disassociating it from Complainant.
The Panel visited Respondent’s website on April 11, 2005, and found it had a different look, quite possibly because of this UDRP proceeding. The page now redirects Internet traffic to a another website that is supposedly affiliated with Fox News.
Bad faith use is also partly evidenced here by a history of many similar cases against the same Respondent(s) – a kind of “serial typosquatting” as Complainant’s counsel dramatically puts it.
Of course Respondent is free to offer services competing with those of the Complainant. What he is not allowed to do, however, is to do so by typosquatting to take a free ride on the goodwill built by Complainant in its mark . There is a very large body of UDRP decisions supporting this position.
Accordingly, the Panel finds that the Complainant has satisfied the third element of the Policy.
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 <orlandsentinel.com> be transferred to the Complainant.
Paul E. Mason
Date: April 14, 2005