WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
News Holdings Limited, Dow Jones & Company, Inc. and Dow Jones, LP v. noblemay
Case No. D2008-0220
1. The Parties
The Complainants are News Holdings Limited of New South Wales, Australia; Dow Jones & Company, Inc. of New York, United States of America (“USA”); and Dow Jones, LP of Massachusetts, USA; all represented by Hogan & Hartson, L.L.P ., of Virginia, USA.
The Respondent is noblemay, of New South Wales, Australia.
2. The Domain Names and Registrar
The disputed domain names:
(the “Domain Names”) are registered with GoDaddy.com, Inc (the “Registrar”).
3. Procedural History
The Complaint was filed by the First Complainant with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2008. The Center transmitted a request for registrar verification by email to the Registrar on February 15, 2008. The Registrar replied by email the same day, confirming that it had received a copy of the Complaint, that it was the registrar and the Respondent was the registrant of the Domain Names, that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the registrations, that the Domain Names would remain locked during this proceeding, subject to expiry, that the registration agreement was in English and contained a submission by the Respondent to the jurisdiction at the location of its principal office, and providing the contact details recorded on its Whois database in respect of the registrations.
The Center verified that the Complaint satisfied the formal requirements of 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 21, 2008. The notification appears to have been transmitted successfully by email to the addresses provided in the contact details in respect of the Domain Names in the Registrar’s database. In accordance with paragraph 5(a) of the Rules, the due date for Response was March 12, 2008.
On March 6, 2008, the Complainant contacted the Center by email, informing it, pursuant to paragraph 2(j) of the Rules, that the hard copy of the Complaint, which it had sent to the Respondent’s address listed in the Registrar’s database, had been returned as undeliverable by the courier service. The Complainant also requested to add further domain names to the Complaint. The Center replied on March 7, 2008, saying that the Rules did not explicitly provide for a Complaint to be amended to include additional domain names after the commencement of proceedings, and that it would be for the Panel to determine whether to accept such an addition. The Center informed the Complainant that it could ask to file a Supplemental Complaint in relation to the further domain names once the Panel was appointed; in the event, the Complainant did not do so.
The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2008.
The Center appointed Jonathan Turner as the sole panelist in this matter on March 20, 2008. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.
By a Procedural Order of April 3, 2008, the Panel requested the First Complainant to file an amendment to the Complaint adding Dow Jones & Company, Inc. and/or Dow Jones, LP as additional complainant(s), if those companies so consented, by April 10, 2008. The Panel indicated that if the First Complainant failed to do so, it would proceed to determine the Complaint on the footing that the Complainant did not have rights in the mark WALL STREET JOURNAL. The Order afforded the Respondent an opportunity to submit a response in relation to any issue arising out of such amendment by April 17, 2008.
By email to the Center of April 9, 2008, the Respondent stated that he wished to know the domains that are in dispute and that he was setting up a company as an online directory called News Finance Corporate pty ltd, which would be a site for business news, business finance and corporate activity, and that “NewsCorp” was a natural abbreviation of the company name. The Center replied to the Respondent on the same date, listing the Domain Names.
The First Complainant filed an amended Complaint naming both Dow Jones & Company, Inc. (the “Second Complainant”) and Dow Jones, LP (the “Third Complainant”) as additional Complainants on April 10, 2008. The Respondent made a submission on April 17, 2008. The Complainants made a further submission in reply on April 22, 2008.
The Panel finds that the Respondent’s submission of April 17, 2008, does not relate to any issue arising out of the amendment to the Complaint. The Respondent has not provided any other justification for the admission of this submission at this very late stage. In all the circumstances, the Panel decides not to admit this submission. Even if it had been admitted, it would not have altered the Panel’s views on the merits of the case, particularly given the Respondent’s earlier reply to the Complainant’s communication of November 6, 2007 (discussed below). It is therefore unnecessary for the Panel to consider the Complainants’ further submission in reply thereto.
4. Factual Background
The First Complainant is a wholly owned subsidiary of News Corporation and holds rights in trademarks used by News Corporation and its subsidiaries, which carry on extensive media and entertainment businesses in Australia, the USA, Europe, Latin America, Asia and the Pacific Basin.
These businesses have operated under the names “News Corporation” and “News Corp” for about twenty years and these names, together with “A News Corporation Company”, have been used and promoted in connection with these businesses and their products on a substantial scale.
The businesses operate websites at, inter alia, “www.newscorporation.com”, “www.newscorporation.org”, “www.newscorporation.net”, “www.newscorp.com” and “www.newscorp.co.uk”.
The First Complainant has registered NEWS CORPORATION, NEWS CORP and A NEWS CORPORATION COMPANY as trademarks in a number of countries.
News Corporation recently acquired the Second and Third Complainants, which publish “The Wall Street Journal”. The Second and Third Complainants or their predecessors have used the mark WALL STREET JOURNAL since 1889. “The Wall Street Journal” now has a paid circulation of more than 2.6 million, including over 930,000 subscribers to its online edition.
The Third Complainant (which is a subsidiary of the Second Complainant) owns trademark registrations for THE WALL STREET JOURNAL in the USA and the Second Complainant owns trademark registrations for this mark in numerous other countries.
The Respondent registered the Domain Names which do not include “wallstreetjournal” or “wallstreet-journal” (the “Non-WSJ Domain Names”) on May 9, 2007, and those which include “wallstreetjournal” or “wallstreet-journal” (the “WSJ Domain Names”) on June 8, 2007. The Domain Names were directed to a secure server notice which said: “This domain name is held in a secure server. 369SantaClara CA.”
The Complainant’s representative wrote a cease and desist letter to the Respondent in respect of the Non-WSJ Domain Names on October 1, 2007. The letter also demanded that the Respondent inform the Complainant’s representative if he owned any other domain names which infringed the rights of News Corp.
The Respondent replied on October 3, 2007, stating:
“I will get back to you once my legal people look into this. im not sure of the implications on a domain name that is not being promoted or used in any form. Its just parked inside a server.”
In the absence of a further response, the Complainant’s representative chased the Respondent on November 6, 2007 (USA time). The Respondent replied, saying:
“I’m stuffed if i can see how these domains infringe on your rights … we are not trading with these and you don’t own the internet or even the term ‘newscorp’ on the internet. I’ve got over 92,000 .com’s and get these sort of demands daily so we know our way around this issue. there are lots of people who like these domains. i could easily go create a company name here such as newscorpmarketing pty ltd which would entitle me to have these domains. I’ve also got a reseller site where we lease/sell domains. if you want to make us an offer on these domains that would be fine or we will just keep the click traffic that they generate.”
In December 2007 or January 2008, the Domain Names were redirected to web pages which stated “This domain is held by International Business Domains.com Australia Business Domains.com We currently hold over 1.86 m business domains” and invited participants in a website at “www.shareholdersrealty.com” which it said “owns 1,282,000 High Ranking Real Estate Domains”. By the date of the Complaint, the Domain Names were redirected to Sedo web pages containing sponsored links.
5. Parties’ Contentions
The Complainants contend that the First Complainant owns common law rights in the mark NEWS CORPORATION and variations of it including NEWS CORP, NEWS CORP WORLD and A NEWS CORPORATION COMPANY, by virtue of their extensive use in the businesses of the News Corporation group. The Complainants further contend that the Second and Third Complainants own rights in the mark WALL STREET JOURNAL and variations of it.
The Complainants submit that all of the Domain Names are identical or confusingly similar to the NEWS CORPORATION mark and variations of it; and that the WSJ Domain Names are identical or confusingly similar to the WALL STREET JOURNAL mark.
The Complainants further contend that the Respondent has no rights or legitimate interests in the Domain Names, pointing out that the Domain Names were not used in connection with any bona fide offering of goods or services by the Respondent prior to notice of the dispute.
The Complainants finally contend that the Respondent registered and is using the Domain Names in bad faith. In support of this allegation, the Complainants refer to the Respondent’s threat to “keep the click traffic that they generate” if News Corporation did not make an appropriate offer; his threat to start an online directory called “News Finance Corporate pty ltd” which would naturally be abbreviated to “NewsCorp”; a previous finding of bad faith made against him in Pfizer Inc. v. Noblemay, George May, WIPO Case No. D2007-1025 in respect of the domain name <viagraoysters.com>; and the fact that he must have known of the use of the marks by the Complainants’ group.
The Complainants request a decision that the Domain Names be transferred to the First Complainant.
As noted above, the Respondent did not submit a timely reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Names are identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Names; and (iii) that the Domain Names have been registered and are being used in bad faith. Each of these requirements will be considered in turn below.
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s default as it considers appropriate. This includes the acceptance of plausible evidence of the Complainant which has not been disputed.
A. Identical or Confusingly Similar to Marks in which Complainants have Rights
The Panel is satisfied that the First Complainant has registered rights in the marks NEWS CORPORATION, NEWS CORP and A NEWS CORPORATION COMPANY. The Panel is also satisfied by the evidence that the First Complainant has unregistered rights in these marks. Although they may be descriptive marks, the businesses of the News Corporation group have made very extensive use of them over a considerable period of time. The Panel finds that they have acquired secondary meaning and distinctiveness such as to confer common law rights in them. The Panel has no reason to doubt the Complainants’ statement that these rights are held within the News Corporation group by the First Complainant, and this is corroborated by the registration of these marks in the name of the First Complainant.
The Panel is also satisfied on the evidence that registered and unregistered rights in the mark WALL STREET JOURNAL in the USA are owned by the Third Complainant and that such rights are owned in other countries by the Second Complainant.
On the other hand, the Panel would not have been able to conclude on the evidence provided in this case that the First Complainant had rights in the mark WALL STREET JOURNAL. While there are cases where all members of a group of companies share rights in a “house” mark, the evidence provided here indicates that rights in the mark WALL STREET JOURNAL are owned by the Second and Third Complainants.
The Panel is further satisfied that the following Domain Names are confusingly similar to the mark NEWS CORP:
Where a mark is descriptive, a similar domain name is not necessarily confusingly similar, in particular if the domain name would generally be regarded as using the term descriptively rather than referring to the mark: see, for example, Meat and Livestock Commission v. David Pearce aka OTC / The Recipe for BSE, WIPO Case No. D2003-0645. However, the Panel considers that in the Domain Names listed above, “newscorp” would be taken by many Internet users to refer to the Complainants’ group.
In the first nine Domain Names listed above, “newscorp” is followed by a descriptive term. In accordance with common English syntax, Internet users are likely to understand such Domain Names as referring to a particular part, aspect or service of the News Corporation group.
The last two Domain Names identified above comprise “newscorp” followed by “wallstreetjournal” or “wallstreet-journal”. Internet users are likely to understand these Domain Names as referring to a link between the News Corporation group and the Wall Street Journal. In these two domain names, a descriptive connotation of “newscorp” would be syntactically unusual. Similarly, the Panel is satisfied that the Domain Name <newscorporation-wallstreetjournal.com> is confusingly similar to the mark NEWS CORPORATION.
By contrast, the Panel is not satisfied that the other two Domain Names in this Complaint, <wallstreetjournalnewscorp.com> and <wallstreetjournal-newscorporation.com>, are confusingly similar to the marks NEWS CORP or NEWS CORPORATION. In the Panel’s view, this case differs from cases such as Konica Corporation, Minolta Kabushiki Kaisha aka Minolta Co., Ltd. v. IC, WIPO Case No. D2003-0112, where neither of the marks included in the disputed domain name was descriptive, and the domain was therefore confusingly similar to each of them.
In the present case, Internet users who are not aware of the acquisition of “The Wall Street Journal” by the News Corporation group might assume that in these Domain Names “newscorp” and “newscorporation” are used descriptively to refer to a primary function of “The Wall Street Journal”. This would accord with normal English usage of a proper name followed by a descriptive term or phrase.
Some Internet users who are aware of the acquisition may understand these Domain Names as referring to “The Wall Street Journal” within the News Corporation group, but this might be because of the confusing similarity of these Domain Names with the WALL STREET JOURNAL mark, rather than with the NEWS CORP or NEWS CORPORATION marks.
However this may be, the Panel is in any event satisfied that the Domain Names <wallstreetjournalnewscorp.com> and <wallstreetjournal-newscorporation.com> are confusingly similar to the mark WALL STREET JOURNAL in which the Second and Third Complainants have rights.
Accordingly, the first requirement of the Policy is satisfied in relation to each of the Domain Names in the Complaint.
B. Rights or Legitimate Interests
The Respondent had not used the Domain Names in connection with any offering of goods or services prior to notice of dispute given by the Complainants’ representative’s cease and desist letter of October 1, 2007. The Respondent is evidently not commonly known by any of the Domain Names. Nor is he making noncommercial or fair use of the Domain Names; on the contrary, he admits that he is gaining click-through commissions from the traffic which they generate, and it is obvious that much of that traffic is generated by their confusing similarity to the Complainants’ marks.
There does not appear to be any other basis on which the Respondent might claim to have rights or legitimate interests in respect of the Domain Names. In all the circumstances, the Panel is satisfied that the Respondent does not have any rights or legitimate interests in respect of the Domain Names. The second requirement of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Respondent’s registration of multiple Domain Names containing the Complainants’ marks indicates that the Respondent was aware of the Complainants and their marks and intended to take advantage of their reputation.
It is also clear from the correspondence that, unless the Complainants pay a substantial price for the Domain Names, the Respondent intends to use them to attract Internet users to his web pages by confusion with the Complainants’ mark for commercial gain in the form of click-through commissions on sponsored links. The Respondent has carried out this intention by directing the Domain Names to web pages containing sponsored links. This constitutes evidence of bad faith registration and use in accordance with paragraph 4(b)(iv) of the Policy.
The Respondent’s plainly improper registration of the domain name <viagraoysters.com> in March 2007 (see Pfizer Inc.supra) is further evidence of his bad faith. That domain name was similar to the Domain Names in this case, in that it comprised a mark of a major corporation followed by a descriptive term.
In all the circumstances, the Panel is satisfied that the Domain Names were registered and are being used in bad faith. The third requirement of the Policy is satisfied.
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 First Complainant, News Holdings Limited,
and that the domain names:
be transferred to the Second Complainant, Dow Jones & Company Inc.
Dated: April 24, 2008