WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Media West-CPI, Inc., Media West-DMR, Inc., Media West-GMP, Inc., Media West-GSI, Inc., Media West-PNI, Inc., Media West-PNJ, Inc., Media West-SJC, Inc., Media West-NPP, Inc., Cape Publications, Inc., Des Moines Register and Tribune Co., Gannett Satellite Information Network, Inc., Multimedia Holdings Corp., Phoenix Newspapers, Inc., Gannett Co., Inc. v. Unasi, Inc.
Case No. D2005-1336
1. The Parties
The Complainants are Media West-CPI, Inc., Media West-DMR, Inc., Media West-GMP, Inc., Media West-GSI, Inc., Media West-PNI, Inc., Media West-PNJ, Inc., Media West-SJC, Inc., Media West-NPP, Inc., Cape Publications, Inc., Des Moines Register and Tribune Co., Gannett Satellite Information Network, Inc., Multimedia Holdings Corp., Phoenix Newspapers, Inc., Gannett Co., Inc., C/O Brooks Johnson, President, Media West Companies, Reno, Nevada, United States of America; all represented by Dow, Lohnes & Albertson, PLLC, United States of America.
The Respondent is Unasi, Inc., Panama.
2. The Domain Names and Registrars
The disputed domain names are registered with three different registrars.
The domain names:
are registered with CapitolDomains LLC.
The domain names:
are registered with DomainDoorman, LLC.
The domain names :
are registered with DSTR Acquisition VII, LLC d/b/a DotRegistrar.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2005. On December 23, 2005, the Center transmitted by email to Capitoldomains, LLC, DSTR Acquisition VII, LLC d/b/a Dotregistrar.com and DomainDoorman, LLC a request for registrar verification in connection with the domain names at issue. On January 3, 2006, Capitoldomains, LLC and DomainDoorman, LLC transmitted by email to the Center their verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. On January 3, 2006, DSTR Acquisition VII, LLC d/b/a Dotregistrar.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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 6, 2006, as is explained below. 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 January 11, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2006.
The Center appointed Daniel J. Gervais as the sole panelist in this matter on February 13, 2006. 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.
It should be noted that in the initial Complaint, the Complainants included an additional domain name, namely <floriatoday.com> (registar: BelgiumDomains LLC). Pursuant to a notice from Capitol Domains that the domain name <floriatoday.com> does not exist, the Center filed a Complaint Deficiency Notification on January 5, 2006. An Amendment to the Complaint was filed on January 6, 2006, deleting that domain name from the Complaint together with any references thereto (and to BelgiumDomains LLC).
4. Factual Background
The Complainants are a group of related corporate entities (Complainant Gannett Co. is the ultimate parent of all other Complainants), which own and operate media and information services including broadcast television stations, newspapers, various information services and websites. They own, inter alia, the following trademarks registered with the United States Patent and Trademark Office in connection with such goods and services: THE ARIZONA REPUBLIC, AZCENTRAL.COM, THE CINCINNATI ENQUIRER, THE DES MOINES REGISTER, FLORIDA TODAY, NEWS-PRESS, OSHKOSH NORTHWESTERN, PENSACOLA NEWS JOURNAL, STATESMAN JOURNAL, USA TODAY, GANNETT and GANNETT FOUNDATION.
5. Parties’ Contentions
The Complainants submit that it is legitimate to proceed in a single proceeding in spite of the fact that there are multiple marks, multiple complainants, multiple domain names and three registrars involved. They refer to previous decisions under the Policy including NFL Properties, Inc. et al v. Rusty Rahe, WIPO Case No. D2000-0128 and Mucos Emulsions, GmbH and Marlyn Nutraceuticals, Inc. v. Esex.org and Kim Taeho, WIPO Case No. D2000-1513.
The Complainants submit that the domain names are all identical or confusingly similar with the Complainants’ marks. The domain names incorporate the marks or in some cases the distinctive portion thereof. In most cases, the domain names are misspelled versions of the Complainants’ marks. The domain name <naplesnewspress.com> is identical to Complainants’ mark NEWS-PRESS, which is used in connection with the Complainants’ newspaper circulated in the geographic area of Naples, Florida.
The Respondent has no right or legitimate interest in the domain names. He is not known by any of the domain names nor did he make a bona fide offering or demonstrably prepare to make such an offering. The Respondent’s use of the Domain Names to misdirect potential visitors to Complainant’s commercial websites and then to third party commercial websites and to serve pop-up advertisements for third party goods and services to visitors, for which Respondent presumably receives compensation in the form of “click through” or web page impression revenues from the third parties to whom visitors are redirected, 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.
The Respondent registered and used the domain names in bad faith to confuse and mislead Internet users and to increase traffic to its sites for commercial gain.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
As to the multiplicity of marks, domain names, registrars and complainants, this Panel finds that this is a proper case to bring a single proceeding under the Policy. When a complainant (or, as in this case, a group of closely related entities) are seeking redress against a single respondent and their complaint is based on the same set or similar sets of facts and on the same legal basis, it seems appropriate to allow them to proceed in this way. See e.g. Eli Lilly and Company, ICOS Corporation, and Lilly ICOS LLC v. RM-RS, LLC, WIPO case No. D2005-1052 and L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO case No. D2005-0623.
Turning to the substantive part of the analysis, the Panel recalls that, in accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name the Complainants must prove that each of the three following elements are satisfied:
(1) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.1);
(2) The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.2); and
(3) The domain name has been registered and is being used in bad faith (see below, section 6.3).
Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainants.
Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.
6.1 Is the domain name Identical or Confusingly Similar to a Trademark in which Complainant has Rights?
This question raises two issues: (1) do the Complainants have rights in a trademark or service mark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.
As to the first question, the record confirms that the Complainants have used and registered in the United States inter alia the following marks:
THE ARIZONA REPUBLIC, AZCENTRAL.COM, THE CINCINNATI ENQUIRER, THE DES MOINES REGISTER, FLORIDA TODAY, NEWS-PRESS, OSHKOSH NORTHWESTERN, PENSACOLA NEWS JOURNAL, STATESMAN JOURNAL, USA TODAY, GANNETT and GANNETT FOUNDATION. The Panel finds that the Complainants have rights in those marks. As will be made clear under point 7 below, it is unnecessary for the purposes of this proceeding to determine which Complainant owns which mark.
As to the second question, the Panel finds that the domain names are confusingly similar to these marks. This is a case of prototypical typo-squatting, sprinkled with cyber-squatting. The Complainants’ marks are either incorporated whole or systematically misspelled, trying to reproduce mistakes an Internet user might make, such as forgetting the dot after “www” (see Reuters Ltd. v. Global Net 2000, Inc., WIPO Case No. D2000-0441) or otherwise misspelling the names of cities, states, services or titles and other terms contained in the Complainant’s marks (see Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409; and Hill’s Pet Nutrition v. Registrant, WIPO Case No. D2004-0818). In three cases (<gannettpapers.com>, <oshkoshdailynorthwestern.com>, <usatodayarchives>, <realestateazcentral.com>), the confusion is heightened by the use of a term descriptive of the Complainants’ services (namely “daily,” “papers,” “archives” and “realestate” - in the latter case due to advertising concerning real estate).
In some cases the generic word “the” was deleted. This does not reduce the level of confusing similarity. See Heimlich Institute Foundation, Inc. v. Martins, WIPO Case No. D2005-0049 (“It is well established that the addition (or deletion) of a generic term such as “the” or the addition of a generic top-level domain such as “.com” is not relevant when determining whether a disputed domain name is confusingly similar to a mark.”).
In the case of the domain name <naplesnewspress.com>, it incorporates the Complainants’ mark NEWS-PRESS. The confusing similarity follows from the fact that the mark is used in connection with the Complainants’ newspaper circulated in the geographic area of Naples, Florida. See America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713.
In one case (<ettodayusa.com>), the confusing similarity is perhaps less apparent. However, as the analysis of the three-member panel in Gala Holdings Limited v. Richard Chambers, WIPO Case No. D2002-0207 (finding that the domain names <bingogala.com> and <bingogala.net> are confusingly similar to the mark GALA BINGO “as they are a simple reversal of the order of the words constituting the Complainant’s trade mark”) shows, a reversal of terms contained in a trademark, when combined with the relative fame of the Complainants’ mark USATODAY and its use by the Respondent in a context suggestive of the Complainants’ services, warrants a finding of confusing similarity.
The Panel thus finds for the Complainants on both prongs of the first question.
6.2 Does the Respondent Have Rights or Legitimate Interests in the domain name?
The Complainants submit that the Respondent has no rights or legitimate interests in the domain name based on Complainants’ prior use of the above-mentioned marks. The Respondent, whom did not file a Response, did not dispute this contention nor provide information as to its interests to use the domain name.
According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
There are no elements showing that the Respondent is or was commonly known by any of the domain names. There is no evidence that the Respondent is making a legitimate non-commercial or fair use of any of the domain names. On the contrary, the uncontradicted evidence submitted by the Complainants points to cybersquatting and typosquatting by the Respondent.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the domain names.
6.3 Was the domain name Registered And Used in Bad Faith?
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) Circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product.
There is ample evidence of the situation described in paragraph (iv) and some evidence of the situation described in paragraph (ii). The relevant facts are mentioned above.
The Respondent registered the domain names in bad faith. Putting aside the relative fame attached to the Complainants’ marks, the domain names are (a) composed of the Complainants’ marks (or, in some cases, only the distinctive part thereof); (b) misspelled versions of those marks; or (c) the Complainants’ marks used in connection with terms descriptive of the Complainants’ services. It is reasonable to conclude that only someone who was familiar with the marks and what they stand for would have gone through the trouble of registering the domain names. Typosquatting in itself is a strong indication of bad faith registration and use. See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, WIPO Case No. D2002-1011.
The domain names are used to redirect Internet users to various commercial sites, thus probably generating click-through fees for the Respondent.
The Respondent’s use of the Complainants’ marks in a large number of domain names may also prevent the Complainants from using their marks as domain names, another instance of bad faith registration and use under the Policy 4(b)(ii). See Members Equity PTY Limited v. Unasi Management Inc., WIPO Case No. D2005-0383 (“the Respondent appears to be a prolific registrant of domain names, [which] tends to support a finding that the registrations were ‘for the purpose of preventing the owner of the trade mark from reflecting the mark in a corresponding name’ and that the Respondent has ‘engaged in a pattern of such conduct”). See also Volvo Trademark Holding AB v. Unasi, WIPO Case No. D2005-0556; and Gannett Co., Inc. et al. v. Henry Chan, WIPO Case No. D2004-0117.
The Panel finds for the Complainants on this third element of the test.
The Complainants as a group have requested that, if successful in this proceeding, all domain names be transferred to Complainant Gannett Co., Inc., the ultimate parent company of all the other Complainants. 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
be transferred to the Complainant Gannett Co., Inc.
Daniel J. Gervais
Dated: February 24, 2006