The Complainant is Capitol News Company, LLC of Arlington, Virginia, United States of America, represented by Dow Lohnes, PLLC, United States of America.
The Respondent is Jason Brown of Huddersfield, West Yorkshire, the United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <tory-politico.com> (“the Domain Name”) is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2010. On March 16, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On March 17, 2010, GoDaddy.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 Domain Name. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 March 18, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 8, 2010.
The Center appointed Warwick Smith as the sole panelist in this matter on April 14, 2010. 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.
In the absence of a Response, the Panel has checked the record to ensure that the Center has discharged its responsibility to notify the Complaint to the Respondent. The Panel is satisfied that the Center has done so.
The Complainant operates a website at “www.politico.com” (“the Complainant's website”), which is dedicated to providing political news on a 24 hour basis. The Complainant has been providing this service since at least January 2007.
The Complainant also publishes newspapers, and it uses POLITICO as its house mark to brand both its newspapers and its Internet news and information services.
The Complainant holds a number of registered POLITICO trademarks. First, it holds a United States Federal registration for the word mark POLITICO (“the POLITICO word mark”). The application for the POLITICO word mark was filed on December 12, 2006, and it proceeded to registration on December 11, 2007. The registration covers, inter alia, the provision of news and information via the Internet in the nature of current events reporting about the activities of the legislative and executive branches of the United States Federal Government, and other matters of interest to people who work for or with the Federal Government.
The Complainant also has a federally registered POLITICO device mark in the United States (“the POLITICO device mark”), although the “device” element of this mark appears to be confined to its colour (red), and possibly the font. The application for the POLITICO device mark was filed on September 15, 2008, and it was registered on August 11, 2009. It covers the same services (relevant to the Complaint) as are covered by the POLITICO word mark.
The United States Patent and Trademark Office database shows a “first use in commerce” date for the POLITICO word mark, of January 23, 2007. The corresponding date for the POLITICO device mark, was September 4, 2007.
The Complainant also holds United States Federal trademark registrations for a number of other marks which incorporate the word “politico”. These marks are THE POLITICO, registered with effect from December 12, 2006, CAMPUS POLITICO, registered with effect from December 6, 2007, and MOBILEPOLITICO, registered with effect from July 8, 2008. The Complainant also holds a United States federal registration for the mark LA POLITICA, registered with effect from August 15, 2007.
Since September 4, 2007, the Complainant has branded its newspaper and Internet news services under the POLITICO design mark.
According to the Complaint, the Complainant's website attracts numerous visitors from the United Kingdom (an average of approximately 93,000 visitors per month in the period between December 1, 2009 and February 28, 2010). The Complainant also publishes a separate electronic addition of its print POLITICO publication, and that electronic addition is accessible to residents of the United Kingdom.
In addition to its registered marks, the Complainant uses the word “Politico” in its Internet publications in combination with particular expressions which relate to specific aspects of its news and information coverage – for example, “Politico Pulse” (dealing with healthcare reform), “Politico Morning Money” (covering Government and business), “Politico 2010” (covering the United States mid-term Congressional elections), and “Politico Jobs” (covering classified employment advertisements). The Complainant says that it has invested a substantial amount of time and resources promoting and advertising the POLITICO word and design marks and the goods and services associated with them.
The Complainant contends that the POLITICO word mark and the POLITICO design mark are “undeniably famous”.
The Respondent registered the Domain Name on May 2, 2009. The Respondent has no connection with the Complainant, and had no licence or authority from the Complainant to register the Domain Name.
Prior to the filing of the Complaint, the Domain Name pointed to a web site (referred to hereafter as “the Respondent's website”) that provided articles on political news and information. Generally, the Respondent's website focused on British government and politics.
The Complainant produced a printout taken from the Respondent's website on January 26, 2010, showing the words “Tory Politico” in capital letters, in the colour red.
The Complainant pointed to other respects in which the Respondent's website appeared similar to the Complainant's website – the claimed similarities included the positioning of the word “Tory Politico” above a blue navigation bar with white letters, with the lead headline in blue font immediate below the navigation bar, and a split-screen picture located beneath the lead headline on the left side of the screen. There was also a navigation box on the lower right side of the Respondent's website which was similar to the navigation box on the lower right side of the Complainant's website. (The navigation box on the Complainant's website was headed, in red capital letters, “POLITICO POLICY”. Beneath that heading, in blue lettering (lower case apart from the first letter in each word), there were five subheadings, three of which were “Health Care”, “Energy Environment”, and “Defense”. The navigation box on the lower right hand side of the Respondent's website included all of those features, except that the heading, in slightly larger font, was “POLITICO's POLICY WATCH”, and the subheadings corresponding to the Complainant's “Health Care” and “Defense” subheadings were (respectively) “Health” and “Defence”.) The Complainant stated that (like the Complainant's website) the Respondent's website also featured links to third party websites such as the website at “www.amazon.co.uk”.
On January 29, 2010, counsel for the Complainant sent a cease and desist letter to the Respondent, seeking, inter alia, the transfer of the Domain Name to the Complainant. The Respondent replied promptly on February 1, 2010. In his reply, the Respondent acknowledged that both “logos” (i.e. the POLITICO design mark and the expression “TORY POLITICO” used on the Respondent's website) were red, but denied the Complainant's counsel's assertion that they were in the same font. The Respondent noted the Complainant's contentions relating to the use of a split-screen image with a large headline placed below a navigation bar, but contended that that was a “well rganiza design convention when it comes to the implementation of ‘magazine' style websites”. The Respondent also denied that his use of the expression “Politico” in the Domain Name and on the Respondent's website would be likely to cause confusion among the Complainant's actual or would-be clients. The Respondent stated that the Respondent's website was focused on British, not American, politics.
The Respondent contended that 84.94% of Internet traffic to the Respondent's website comes from the United Kingdom (that figure was said to come from Google Analytics), and that traffic from the United States made up only 5% of the total.
The Respondent argued out that the word “tory” was much more than merely descriptive, and that it has never been associated with American politics, an American political party, or an American politician: since 1678 it has been associated with the British Conservative Party. On the other hand, the Respondent argued, the word “politico” has long been used in modern politics in association with people with overly political viewpoints, or who spend considerable time playing politics within an rganization.
The Respondent contended in his February 1, 2010 letter that the Complainant's readers and Internet clients are a highly educated demographic group, with many working in or around United States political institutions, or in the media. Those people could not fail to understand the relevance of the word “tory”, and its importance in British political history. The Respondent concluded by saying that he would not transfer the Domain Name to the Complainant, but was willing to enter into discussions, without accepting culpability, on implementing changes to the design of the Respondent's website.
The Respondent followed up with another letter to the Complainant's counsel, on February 3, 2010. This letter advised that the Respondent had, over the preceding 48 hours, been working on redesigning the Respondent's website, in order to remove any issues of “trade dress” infringement associated with the Complainant's website. The Respondent reiterated his willingness to work with the Complainant to resolve any issues the Complainant might still have regarding the design of the Respondent's website.
The Respondent wrote a third letter to the Complainant's counsel, on February 10, 2010. This letter simply reported that the Respondent's website had been redesigned “as requested”, and noted that the Respondent, not having received any reply to his letters of February 1 and February 3, considered the matter closed.
According to the Complaint, the Respondent continued to use what the Complainant referred to as “the Tory Politico logo”, in stylized capital letters, on the Respondent's website. The Respondent simply changed the font colour from red to white, and placed the “logo” over a series of blurred photographs of people on a dark background. The Complainant acknowledged that the Respondent also made some changes to the layout of the Respondent's website. The changes included eliminating the use of split-screen photographs, and changing the colour scheme from blue to black. The Complainant produced a copy of the home page from the Respondent's website showing these changes. That page was printed on February 17, 2010.
In accordance with normal practice, the Panel has visited the Respondent's website. That occurred on April 19, 2010. The Respondent's website as described by the Complainant had been taken down, and replaced with a free parking page provided by the Registrar. This page contained what appeared to be sponsored links to a number of third party websites, each apparently concerned with different subject matter. The page had the general appearance of a typical “landing page” site, of the kind commonly used by domain name registrants for the purpose of deriving pay-per-click revenue under monetization agreements made with the website host.
The Complainant contends:
1. The Domain Name is confusingly similar to the POLITICO word mark and the POLITICO design mark. Adding a generic term such as “tory” to a registered trademark is insufficient to avoid a finding of confusing similarity under the Policy.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following:
(i) The Complainant has never authorized the Respondent to use the POLITICO word mark or the POLITICO design mark, or any mark confusingly similar thereto. That fact gives rise to a presumption that the Respondent cannot establish that he has rights or any legitimate interest in the Domain Name.
(ii) The Respondent has never made any use of the Domain Name, or any name corresponding to the Domain Name, in connection with any bona fide offering of goods or services. Nor has the Respondent made any demonstrable preparations to do so. The Respondent has been intentionally using the Domain Name to trade off the Complainant's well-known marks, luring Internet users who are familiar with the Complainant to the Respondent's website, where the Respondent offers services that are competitive with those offered by the Complainant. That does not constitute a bona fide offering of goods or services.
(iii) The Domain Name is so obviously connected with the Complainant and its products that its very use by the Respondent (who has no connection with the Complainant) suggests opportunistic bad faith.
(iv) The fact that the Respondent has copied the Complainant's POLITICO design mark in its entirety on the Respondent's website, for the purpose of promoting services which overlap with those provided by the Complainant under the POLITICO word mark or the POLITICO design mark, further proves that the Respondent's intention has been to trade off the reputation of the Complainant. Again, the use of the Complainant's marks proves that the Respondent has not been using the Domain Name in connection with any bona fide offering of services.
(v) The Respondent's actions in copying the overall design, look, and feel of the Complainant's website also points to the conclusion of “no bona fide use”. The Respondent cannot claim any right or legitimate interest under paragraph 4I(i) of the Policy.
(vi) The Respondent cannot claim rights under paragraph 4I(ii) of the Policy, as the Respondent has never been commonly known by the Domain Name and had not acquired trademark or service mark rights in the Domain Name prior to the registration of the Domain Name. (The Respondent could not have acquired any such rights or interest after the registration of the Domain Name.)
(vii) Nor can the Respondent claim any right or legitimate interest under paragraph 4I(iii) of the Policy, because the Respondent's use of the Domain Name misdirects potential visitors seeking the Complainant's website to the Respondent's website, and thence to third-party commercial websites such as “www.amazon.co.uk”. The Respondent presumably receives compensation for the links to the third party websites. Using the Domain Name to misdirect Internet users looking for the Complainant's website to a third party commercial website, is not a bona fide offering of goods or services, and does not constitute a legitimate non-commercial or fair use of the Domain Name. Even if the Respondent claimed not to receive compensation, the presence of the advertisements on the Respondent's website constitutes a commercial element that precludes a finding of fair use.
3. The Respondent registered, and has been using, the Domain Name in bad faith. The Complainant relies on the following matters:
(i) The Complainant's registrations of the POLITICO word mark and the POLITICO design mark provided the Respondent with constructive notice of those marks prior to the registration of the Domain Name. Registration of the Domain Name in the face of such notice supports a finding of bad faith on the part of the Respondent (citing RRI Financial, Inc. v. Ray Chen, WIPO Case No. D2001-1242; Reebok International Limited v. Domain Privacy Service, Hong Kong Names LLC, WIPO Case No. D2008-0359; and Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137).
(ii) The notoriety of the POLITICO word mark and the POLITICO design mark is such that the Panel should conclude that the Respondent had actual knowledge of the services provided by the Complainant at the Complainant's website. The Respondent's use of the “Tory Politico logo”, which is nearly identical to the POLITICO design mark, provides further evidence of the Respondent's actual knowledge of the Complainant's services.
(iii) The Respondent's conduct constitutes bad faith under paragraph 4(b)(iv) of the Policy. The Respondent has been intentionally attempting to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's marks, as to the source, sponsorship, affiliation, or endorsement of the Respondent's website and services.
(iv) The fact that the Respondent changed the content of the Respondent's website after he received the Complainant's cease and desist letter, does not provide the Respondent with a defense. On the contrary, this action strongly indicates that the Respondent was attempting to avoid liability for his actions, and further demonstrates the Respondent's bad faith registration and use of the Domain Name.
The Respondent did not reply to the Complainant's contentions.
Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent's failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.
The Complainant has satisfactorily proved that it is the registered proprietor of United States federal registrations of the POLITICO word mark and the POLITICO design mark. Those registrations provide sufficient evidence that the Complainant has “rights” in those marks for the purposes of paragraph 4(a)(i) of the Policy.
The next question is whether or not the Domain Name is confusingly similar to one or other of those marks. In the Panel's view, it is confusingly similar to both.
In coming to that view, the Panel first notes the approach to the confusing similarity issue which was adopted by the panel in Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227, where the domain name <unofficialblackberrystore.com> was held to be confusingly similar to the complainant's BLACKBERRY mark. The panel in Research in Motion Limited took the view that the confusing similarity requirement in paragraph 4(a)(i) of the Policy sets a fairly low threshold test, which is concerned only to establish that the complainant has sufficient rights to give it standing to bring the complaint (citing Aubert International SAS and Aubert France SA v. Tucows.com Co., WIPO Case No. D2008-1986). This Panel respectfully agrees with that approach.
Next, the Panel notes that the Domain Name incorporates the Complainant's POLITICO word mark in its entirety. Numerous panel decisions under the Policy have regarded that as a compelling indicator that the domain name at issue is confusingly similar to the complainant's mark.1
In this case, the constituent words in the Domain Name are both dictionary expressions. The Panel notes that the New Shorter Oxford English Dictionary defines “politico” as meaning either “a politician”, or “a person holding strong political views or acting from political motivation”. The expression is said to be chiefly used in a derogatory sense. The same dictionary provides a number of meanings for the word “tory”. For present purposes, the most relevant one appears to be “a member or supporter of the British Conservative Party”, although the meaning is also said to have been “transferred” to the more general “a member or supporter of a political party analogous to the British Conservative Party; a person of conservative views or temperament”.
It might perhaps be argued that where the trademark relied upon by a complainant is itself a descriptive or other dictionary word, relatively small additions to that mark will suffice to avoid a finding of confusing similarity. But in this case the word “politico” is itself a fairly distinctive expression, and it is separated from the word “tory” in the Domain Name by a hyphen. The overall impression conveyed by the Domain Name will therefore be strongly influenced by the inclusion of the POLITICO word mark within it. That will be particularly so for individuals outside of Britain who are not familiar with the word “tory” at all, and for those who are familiar with the Complainant's use of its marks in combination with other short expressions such as “Pulse”, “Morning Money”, and “Jobs”. People in the latter group might well assume that “tory” was just another short expression the Complainant had decided to use with its marks.
The ultimate question in a case such as this, where a descriptive or generic expression (in this case “tory”) has been added to the Complainant's trademark, is whether the addition of the descriptive term sufficiently alters the impression created by the Complainant's mark that the confusion which would otherwise be caused by the use of the Complainant's mark is removed. In the Panel's judgment, the addition of the word “tory”, separated from the word “politico” by a hyphen, is not, having regard to the above-referenced threshold test set by paragraph 4(a)(i) of the Policy, sufficient to dispel the confusion likely to be caused by the inclusion of the Complainant's POLITICO word mark in the Domain Name.
The Complainant accordingly succeeds on this part of its Complaint.
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the Center's online document WIPO Overview of WIPO Panel Views on Selected UDRP Questions, as follows:
“A Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP”.
In this case, the Domain Name is confusingly similar to the POLITICO word mark and the POLITICO design mark, and the Complainant has not authorized the Respondent to use either of those marks, whether in a domain name or otherwise. There is nothing in the record to suggest that the Respondent, or any business or organization operated by the Respondent, might be commonly known by the Domain Name, and therefore no apparent basis for the defense provided by paragraph 4(c)(ii) of the Policy.
For the reasons which are set out in the next section of this decision, the Panel is also satisfied on the evidence produced, that the Respondent's use of the Domain Name has been neither bona fide (essential to the existence of any right or legitimate interest under paragraph 4(c)(i) of the Policy), nor fair or legitimate (essential to the kind of right or legitimate interest which is described at paragraph 4(c)(iii) of the Policy).
Those factors provide sufficient prima facie proof that the Respondent has no rights or legitimate interest in respect of the Domain Name. The evidentiary onus therefore shifts to the Respondent.
The Respondent having failed to file any Response, the Complainant must also succeed on this part of the Complaint.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website 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 [the respondent's] website or location or of a product or service on [the respondent's] website or location.
The Panel is also satisfied that this part of the Complaint has been proved. The Panel has come to that view for the following reasons.
1. The Panel is satisfied that the Respondent had actual knowledge of the Complainant and its online publication when the Respondent registered the Domain Name. First, the Respondent was operating in the same general field of activity as the Complainant. Secondly, when the Respondent received the Complainant's cease and desist letter, he did not deny knowledge of the Complainant or the Complainant's website. Thirdly, a number of features of the Respondent's website as it stood before the Complainant sent its cease and desist letter, were very similar to the corresponding features in the Complainant's website. While some of these features may be in common use in the design of “magazine”-style websites, the number of design features on the Respondent's website which were identical (or nearly identical) to corresponding features on the Complainant's website, is simply too high to be coincidental. The use of similar colors and headings, the use of the split-screen pictures, and the near-identical navigation boxes at the lower right hand sides of both websites, point strongly to the conclusion that the design of the Respondent's website was copied from the Complainant's website. Fourthly, the Respondent's prompt action in altering the design of the Respondent's website as soon as he received the Complainant's cease and desist letter, is consistent with the Respondent knowing that substantial design elements of the Respondent's website had been copied and would have to be changed. So too is the Respondent's subsequent failure to file a Response, and his apparent abandonment of the Respondent's website in favour of a parking page hosted by the Registrar.
2. The Complainant's uncontradicted evidence suggests that it has a substantial readership in the United Kingdom (on average, approximately 93,000 unique visits to the Complainant's website by UK-based Internet users in the three months between December 1, 2009 and February 28, 2010). In addition, the Respondent stated in his letter to the Complainant's counsel dated February 1, 2010, that traffic from the United States made up approximately 5% of total visits to the Respondent's website. When one puts the substantial United Kingdom-based market for the Complainant's online products with (i) the Respondent's choice of the Domain Name, (ii) his apparent copying of numerous features from the Complainant's website, (iii) his apparent success in attracting to the Respondent's website a number of Internet users based in the United States, and (iv) his failure to respond to this Complaint, the inference that the Respondent registered the Domain Name with a view to attracting to the Respondent's website visitors who would believe that the Respondent's website was either operated by the Complainant or at least affiliated with the Complainant in some way, is difficult to resist. The apparent copying of so many design features from the Complainant's website, in particular, is hard to explain in any other way.
3. The foregoing circumstances fall squarely within paragraph 4(b)(iv) of the Policy: by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the POLITICO word mark and/or the POLITICO design mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of the services provided on it. The “commercial gain” element is sufficiently established by the uncontradicted evidence of links on the Respondent's website to various third party websites. Those links would not have been provided by the Respondent for nothing, and, in the absence of any Response, the most likely explanation for their presence is that the Respondent was party to an arrangement under which pay-per-click or other revenue was earned each time a visitor to the Respondent's website clicked on one of the links.
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 <tory-politico.com> be transferred to the Complainant.
Dated: April 22, 2010
1 See for example Nokia Group v. Mr. Giannattasio Mario, WIPO Case No. D2002-0782, The Ritz Hotel Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137; and Quintessentially (UK) Limited v. Mark Schnorenberg/Quintessentially Concierge, WIPO Case No. D2006-1643. A finding of confusing similarity is not inevitable in such circumstances, however. There will be some circumstances where the domain name registrant has added sufficient additional letters or numerals to the disputed domain name, that the domain name could not be confused with the complainant's mark. See in that regard the panel decision in Research in Motion Limited (supra). See also the decisions of this Panel, to similar effect, in The Ritz Hotel Limited, and Quintessentially (UK) Limited.