WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Media West - PCC Inc., Press-Citizen Company Inc. v. WhoisGuard
Case No. D2006-1626
1. The Parties
The Complainants are jointly Media West – PCC Inc., Reno, Nevada, United States of America; and Press-Citizen Company Inc., Iowa City, Iowa 52245, United States of America, represented by Dow Lohnes, PLLC, United States of America.
The Respondent is WhoisGuard, Lagos, IMO State, Nigeria.
2. The Domain Name and Registrar
The Disputed Domain Name <iowacitypresscitizen.com> is registered with eNom, Inc. dba Dynames.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2006. On December 22, 2006, the Center transmitted by email to eNom, Inc. dba Dynames.com, Inc. a request for registrar verification in connection with the domain name at issue. On January 9, 2007, eNom, Inc. dba Dynames.com, Inc 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 9, 2007. In accordance with the Rules, paragraph 5(a), the due date for response was January 29, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2007.
The Center appointed Charné Le Roux as the sole panelist in this matter on February 9, 2007. 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 First Complainant is Media West - PCC Inc. (hereinafter referred to as the “First Complainant”) an American Company which owns rights in the trademark IOWA CITY PRESS-CITIZEN through a United States trademark registration secured in August 2003. It is also the owner of a number of IOWA CITY PRESS-CITIZEN domain names, including <theiowacitypress-citizen.info>, <theiowacitypresscitizen.info>, <iowacitypress-citizen.biz>, <iowacitypresscitizen.biz>, and <iowacitypress-citizen.com>. The first two domain names were registered in September 2001. Both the .BIZ domain names were registered in November 2001 and <iowacitypress-citizen.com> was registered on November 2004.
The First Complainant has been using its trademark IOWA CITY PRESS-CITIZEN through a licensee (the Second Complainant) to promote the IOWA CITY PRESS-CITIZEN newspaper. The newspaper has a circulation of more than 14 000 people in Iowa City, Iowa, and its online edition at <press-citizen.com> has received more than 22 million site visits and 103 million page views since August 2003. Considerable sums of money have been expended from 2002 to 2006 promoting the IOWA CITY PRESS-CITIZEN newspaper, website and mark.
The First Complainant has made numerous attempts to obtain registration of the Disputed Domain Name and has sent letters of demand initially to the previous owners of the Disputed Domain Name and later the Respondent, calling on them to transfer it.
The Second Complainant, Press-Citizen Company Inc., is also an American company based in Iowa (hereinafter referred to as the “Second Complainant).
The Second Complainant is the licensee of the First Complainant and is the owner and the publisher of the IOWA CITY PRESS-CITIZEN newspaper and the associated website at “www.press-citizen.com”.
The Respondent registered the Disputed Domain Name on January 13, 2006. The Disputed Domain Name is currently owned by the Respondent on record and it is connected to a website which features sponsored links to the websites of third parties, offering goods and services from real estate services and employment. It also offers links to the Complainants’ own websites and, as the Panel has ascertained, the websites of other newspapers.
5. Parties’ Contentions
A. First and Second Complainants
The Complainants contend that they are respectively the owners of, and/or have used the trademark IOWA CITY PRESS-CITIZEN, registered since 1920, and the domain names, <theiowacitypress-citizen.info>, <theiowacitypresscitizen.info>, <iowacitypress-citizen.biz>, <iowacitypresscitizen.biz> and <iowacitypress-citizen.com>.
The Complainants contend that the Disputed Domain Name is virtually identical to the IOWA CITY PRESS-CITIZEN trademark and the IOWA CITY PRESS-CITIZEN range of domain names. The only difference between the Disputed Domain Name and the First Complainant’s trademark is that the hyphen was deleted and that the generic TLD. “com” was added to the Disputed Domain Name.
The Complainants contend that the Respondent lacks rights or legitimate interest in the Disputed Domain Name in that:
a) the Respondent has never been authorised by the Complainants to use the trademark IOWA CITY PRESS-CITIZEN in any form;
b) the Respondent has never made use of or demonstrable preparations to use the Disputed Domain Name or any name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services. Instead, the Respondent has parked the Disputed Domain Name at a portal site that provides links to third-party commercial websites;
c) the Respondent’s use of the Disputed Domain Name is to direct potential visitors to the Respondent’s own commercial website and then to third party commercial websites against compensation,
d) the Disputed Domain Name is identical to a mark in which long established rights exist and that it is associated exclusively with the Complainants, and the Respondent is intentionally infringing the Complainants’ rights and is trading off the goodwill that the Complainants have built up;
e) the Respondent has never been commonly known by the Disputed Domain Name and has not acquired trademark or service mark rights in the Disputed Domain Name.
The Complainants furthermore contend that the Respondent has registered and is using the Disputed Domain Name in bad faith.
The Complainants indicate that the Disputed Domain Name is being used to divert potential visitors to third party commercial websites for which the Respondent presumably receives compensation.
They also contend that the shielding of the actual identity of the registrant through a privacy service constitutes evidence of bad faith.
The Complainants request that the Disputed Domain Name be transferred to the First Complainant.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
(i) Procedural matters
The Respondent has not reacted to the Complaint but this does not relieve the Respondent of the burden of proof. The Respondent’s failure to deny the Complainants’ allegations and the evidence submitted by the Complainants do, however, in terms of the Rules, permit the Panel to draw appropriate inferences.
(ii) Substantive matters
Paragraph 4 of the Policy requires that the Complainants prove each of the following three elements in order for the Disputed Domain Name to be transferred:
a. that the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainants have rights and
b. that the Respondent has no rights or legitimate interest with respect to the Disputed Domain Name and
c. that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the First Complainant has proven that it owns rights in the trademark IOWA CITY PRESS-CITIZEN. The Panel also notes the Complainant’s registration of the following domain names: <theiowacitypress-citizen.info>, <theiowacitypresscitizen.info>, <iowacitypress-citizen.biz>, <iowacitypresscitizen.biz> and <iowacitypress-citizen.com>.
The Panel finds that the Second Complainant has not proven that it owns rights in the relevant trademark, although a copy of the licence agreement between the First and Second Complainant has been provided that sets out the relationship between these parties. The Panel accepts that the extent and scope of this agreement is subject to the law of the United States of America but the agreement indicates that the Second Complainant shall not acquire any ownership or interest in the IOWA CITY PRESS-CITIZEN trademark, and that any use by it of this trademark will enure to the benefit of the First Complainant.
The Second Complainant states that it has rights in the trademark IOWA CITY PRESS-CITIZEN independent from those rights owned by the First Complainant.
Reference is made to a panel decision in Zee Telefilms Ltd and Wimpole Holdings Ltd. (presently known as Zee Multimedia Worldwide Ltd) v. Rahul Dholakia and Oznic.com WIPO Case No. D2001-0624, where the following passage from Ken Done, Ken Done & Associates Pty Ltd and Ken Done Done Down Under Pty Ltd v. Ted Gibson ERESOLUTION Case No. NAF-0638 was quoted with approval:
“[no] provision explicitly excludes a single Complaint brought by multiple related parties with a common interest in the disputed domain name. In such cases, however, the complaining parties must be meticulous in delineating the relationships among the parties, the relevant trademark ownership interests of each party, and each party’s stake in the remedy……”
The Panel will in light of its above referenced finding consider the remaining points of substance with reference to the First Complainant only.
The Panel finds that the Disputed Domain Name is confusingly similar to the First Complainant’s trademark IOWA CITY PRESS-CITIZEN and its various relevant domain names indicated above. The Disputed Domain Name consists of a miss-spelling of the First Complainant’s registered trademark in that the hyphen between the words IOWA CITY PRESS and CITIZEN has been removed. This does not distinguish the Disputed Domain Name from the registered trademark.
The Panel finds that the First Complainant has established the first element.
B. Rights or Legitimate Interests
The panel in Do The Hustle LLC v. Tropic Web WIPO Case No. D2000-0624 summarised the burden of proof in respect of paragraph 4(a)(ii) of the Policy, namely that once the Complainant has asserted that the Respondent has no rights or legitimate interest, the burden of proof shifts to the Respondent. The Respondent must then make more than an assertion that it has rights or legitimate interests and must provide factual evidence in support of its claim. Paragraph 4(c) of the Policy provides circumstances whereby the Respondent may demonstrate its rights or legitimate interest in a domain name.
The First Complainant in this matter has made the required prima facie case to which the Respondent has not reacted. By failing to file a Response Respondent has failed to demonstrate rights or legitimate interests in the Domain Name at issue. See Time Out Group Limited v. Mark Jacobson, WIPO Case No. D2001-0317.
Furthermore, on the record presented in this matter, the Respondent appears to use the Disputed Domain Names to promote the sale of goods and the provision of services in competition with the Complainant, with particular reference to the links that appear on the website “www.iowacitypresscitizen.com” to third party newspaper websites. The Panel finds that internet users would in all likelihood be attracted to the website linked to the Disputed Domain Name by the IOWA CITY PRESS CITIZEN trademark and that they would be likely to access the website because they are interested in the First Complainant’s goods and services. The Panel finds that the Respondent’s only interest apparent in the Disputed Domain Name is to derive a benefit from the goodwill that attaches to the Complainant’s trademark, presumably to share in revenues generated by the diverted traffic through the sponsored links.
The Panel finds that the First Complainant has discharged its onus in proving that the Respondent does not have rights or a legitimate interest in the Disputed Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. The First Complainant relies on Paragraph 4(b)(iv) of the Policy, which provides that bad faith may be evidenced by use by the Respondent of the domain name with the intention to attract, for commercial gain, internet users to the Respondent’s website or other online location, by creating the likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or of a product or service on its website or location.
The Panel finds on the record presented that a case has been made out in terms of paragraph 4(b)(iv) of the Policy. The Panel finds that the Respondent is intentionally attempting to divert internet users to its website by exploiting the confusing similarity between the Disputed Domain Name and the First Complainant’s IOWA CITY PRESS-CITIZEN trademark and that the Respondent is in all likelihood engaging in such conduct in order to reap a commercial benefit.
The First Complainant also contends that the fact that the Respondent is acting as a proxy for the actual registrant and through a privacy service, particularly when it is using the Disputed Domain Name to create confusion with a trademark, is evidence of bad faith. However, noting the limited evidence presented on this point, and in light of the Panel’s previous finding, it is not necessary for the Panel to address the issue further here.
The Panel notes however that the conduct of the Respondent in not responding to correspondence sent by the First Complainant’s attorneys of record in connection with the First Complainant’s trademark and the continued use of the Disputed Domain Name, is not indicative of good faith.
The Panel orders that the Disputed Domain Name, <iowacitypresscitizen.com> be transferred to the First Complainant.
Charné Le Roux
Dated: February 27, 2007