WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Dallas Morning News, Inc. and The Belo Company v. WhoisGuard, Inc., WhoisGuard Protected / Nicolas Stewart

Case No. DCO2017-0019

1. The Parties

The Complainants are The Dallas Morning News, Inc. and its affiliated company The Belo Company, both of Dallas, Texas, United States of America (“United States”), represented by the law firm Jackson Walker, LLP, United States.

The Respondent is WhoisGuard, Inc., WhoisGuard Protected of Panama, Panama / Nicolas Stewart of Chicago, Illinois, United States, self-represented.

2. The Domain Name and Registrar

The disputed domain name <dallasmorningnews.co> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2017. On June 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 8, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 13, 2017, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 14, 2017. The Panel refers to the amended Complaint as the “Complaint”.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 6, 2017. The Response was filed with the Center on June 17, 2017.

As further discussed in Section 6 below, the Response included the following: “The Respondent consents to the remedy requested by the Complainants and agrees to transfer the disputed domain name(s) to the Complainant the disputed domain name(s).” Pursuant to the Rules, paragraph 17, on June 19, 2017, the Center, following its customary practice, notified the parties that “a UDRP proceeding may be suspended to implement a settlement agreement between the Parties,” and invited the Parties, if they chose, to submit a request for suspension by June 26, 2017. No request for suspension was received by the deadline. Accordingly on June 27, 2017, the Center notified the Parties that the proceeding would continue.

The Center appointed Richard G. Lyon as the sole panelist in this matter on July 11, 2017. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his 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 Complainants publish The Dallas Morning News, the principal newspaper in Dallas, Texas, United States. This publication is sold as a hard-copy newspaper and online through the Complainants’ principal website at “www.dallasnews.com”. The Complainants hold trademarks, duly registered with the United States Patent and Trademark Office (USPTO), for DALLASNEWS.COM (registered in 1997) and THE DALLAS MORNING NEWS (registered in 1923, claiming a first use in 1885).

The Respondent registered the disputed domain name on March 15, 2017. When the Panel attempted to access the disputed domain name he received an error message:

“SORRY! If you are the owner of this website, please contact your hosting provider”.

5. Parties’ Contentions

A. Complainant

The Complainants contend as follows:

A. The disputed domain name is identical to the Complainants’ USPTO-registered THE DALLAS MORNING NEWS trademark but for the deletion of the definite article and addition of the country code Top-Level Domain “.co”, and confusingly similar to their DALLASNEWS.COM mark.

B. Neither Complainant has authorized the Respondent to use its trademarks and, other than by means of the disputed domain name, the Respondent has never been commonly known by any phrase that includes “Dallas Morning News”. The Complainants supply no evidence of the Respondent’s use of the disputed domain name, but, according to the Complaint, “the banner on the website’s homepage is styled ‘Dallas Morning News’. . . Respondent’s website contains typographical and grammatical errors; promotes unverified conspiracy theories; and does not observe basic journalistic ethics. Respondent has literally no connection to Dallas, and at best a strained connection to ‘news’. This use of the disputed domain name is not legitimate, is intended to divert Internet users seeking the Complainants, and tarnishes the Complainants’ trademarks.”

C. The Respondent’s conduct as described above constitutes bad faith in registration and use by attempting unlawfully to divert Internet users seeking the Complainants.

B. Respondent

While the Respondent does contest the Complainants’ assertion of confusing similarity, he agrees to transfer the disputed domain name to the Complainants.

6. Discussion and Findings

The Respondent’s unconditional agreement to transfer the disputed domain name to the Complainants requires the Panel to consider whether to order a transfer on that basis — consent — or to proceed to address the merits of the Complaint under paragraph 4 of the Policy. As stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.10:

“4.10 How do panels handle cases involving a respondent’s informal or unilateral consent for the transfer of the domain name to the complainant outside the ‘standard settlement process’ described above?

Where parties to a UDRP proceeding have not been able to settle their dispute prior to the issuance of a panel decision using the ‘standard settlement process’ described above [in paragraph 4.9], but where the respondent has nevertheless given its consent on the record to the transfer (or cancellation) remedy sought by the complainant, many panels will order the requested remedy solely on the basis of such consent. In such cases, the panel gives effect to an understood party agreement as to the disposition of their case (whether by virtue of deemed admission, or on a no-fault basis).

In some cases, despite such respondent consent, a panel may in its discretion still find it appropriate to proceed to a substantive decision on the merits. Scenarios in which a panel may find it appropriate to do so include (i) where the panel finds a broader interest in recording a substantive decision on the merits – notably recalling UDRP paragraph 4(b)(ii) discussing a pattern of bad faith conduct, (ii) where while consenting to the requested remedy the respondent has expressly disclaimed any bad faith, (iii) where the complainant has not agreed to accept such consent and has expressed a preference for a recorded decision, (iv) where there is ambiguity as to the scope of the respondent’s consent, or (v) where the panel wishes to be certain that the complainant has shown that it possesses relevant trademark rights.”

This Panel’s preference on the choice between transfer on consent versus considering the merits has been to honor a respondent’s consent to transfer, see Group Kaitu LLC, Darkside Productions, Inc. v. Sunlane Media LLC, WIPO Case No. D2008-1831 (“. . . the Panel reads the Response as a consent to transfer all the disputed domain names to Complainant. As transfer constitutes all the relief to which Complainant would be entitled in a UDRP proceeding after a full review of the merits, ordinarily that would end the Panel’s analysis”), though admittedly he has not faced any of the alternative circumstances set forth in the WIPO Overview 3.0.

None of the five examples cited in the WIPO Overview 3.0 obtains, strictly speaking, in this proceeding. The Panel does not read the Respondent’s denial of identity or confusing similarity as qualifying its consent to transfer and does not consider resolution of that issue as a reason for not ordering transfer on consent. Unlike a disclaimer of bad faith, example (ii) in the WIPO Overview 3.0, confusing similarity is a matter particular to each proceeding and not especially germane to a subsequent UDRP proceeding against this Respondent.

A variant of examples (ii) and (v) might be said to apply, although in a manner counter to the gist of the WIPO Overview 3.0. The Complainants have presented no evidence to support the factual assertions underlying their charges of registration and use of the disputed domain name in bad faith. Should the Panel address the merits that might require a denial of the Complaint. The Panel does not consider the Complainants’ or their representative’s inexplicable failure to provide proof to be sufficient reason to override the Respondent’s unqualified consent to transfer, so transfer shall be the Panel’s order. As there is no evidence of any other Policy offenses by this Respondent, the transfer is on the no-fault basis cited in the WIPO Overview 3.0.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <dallasmorningnews.co>, be transferred to the Complainant. This Decision is made without any findings under paragraph 4(a) of the Policy.

Richard G. Lyon
Sole Panelist
Date: July 13, 2017