WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gannett Co., Inc., Media West-GSI, Inc., Media West-FPI, Inc., Media West-SJC, Inc., Gannett Satellite Information Network, Inc., Federated Publications, Inc., The Statesman-Journal Company v. Dom 4 Sale, Inc. and so so domains
Case No. D2003-0589
1. The Parties
The Complainants are Gannett Co., Inc., Media West-GSI, Inc., Media West-FPI, Inc., Media West-SJC, Inc., Gannett Satellite Information Network, Inc., Federated Publications, Inc., and The Statesman-Journal Company, all with a stated address in Reno, Nevada, United States of America, collectively the "Complainants." The Complainants are represented by the law firm Dow, Lohnes & Albertson, PLLC, Washington, D.C., United States of America.
The Respondents are Dom 4 Sale, Inc. and so so domains, located in The Bronx, New York, United States of America. The Respondents share the same business address, share the same address for administrative and technical contacts, share the same email address, and have been used as aliases for John Barry. In addition, each of the disputed Domain Names are directed to the same website. As such, it is appropriate to treat the separate Respondents as a single entity for purposes of this opinion. The Respondents are not represented by counsel.
2. The Domain Names and Registrars
The Respondent Dom 4 Sale, Inc. is the current registrant of the disputed Domain Names <thetennessean.com>, <idahostatsman.com> and <statesmanjournel.com>. The Domain Names are registered with Intercosmos Media Group, Inc. d/b/a directNIC.com of New Orleans, Louisiana, United States of America ("Intercosmos Media").
The Respondent so so domains is the current registrant of the disputed Domain Names <idhaostatesman.com> and <statsmanjournal.com>. Those disputed Domain Names are registered with Intercosmos Media.
The Domain Names identified above are referred to collectively as the "disputed Domain Names."
3. Procedural History
The Complaint was electronically filed with and received by the WIPO Arbitration and Mediation Center (the "Center") on July 25, 2003, naming as the Respondent John Barry, a/k/a Dom 4 Sale, Inc., a/k/a Buy This Domain, a/k/a Tech Domains, a/k/a Best Domains, a/k/a All Domains $1,000 or Less, a/k/a High Traffic Pro-Life Domains, a/k/a Pro-Life Domains, a/k/a km. On July 29, 2003, the Center acknowledged receipt of the Complaint and assigned a case number and case manager. Also on July 29, 2003, the Center transmitted by email to Intercosmos Media a request for registrar verification in connection with each of the five disputed Domain Names.
At the time of the request, Intercosmos Media was the registrar for <thetennesean.com>. As of July 30, 2003, the disputed Domain Names <idahostatsman.com> and <statesmanjournal.com> were transferred to Intercosmos Media as registrar. On August 5, 2003, Intercosmos Media transmitted by email to the Center its verification response confirming that it was now the registrar for all of the disputed Domain Names. Intercosmos Media further confirmed that the Respondent Dom 4 Sale, Inc. is the listed registrant of <thetennessean.com>, <idahostatsman.com> and <statesmanjournel.com> and provided the details for the administrative, billing and technical contacts and that so so domains is the listed registrant of <idhaostatesman.com> and <statsmanjournal.com> and provided the details for the administrative, billing, and technical contact.
Upon receipt of the registrant information from Intercosmos Media, the Center, by email dated August 11, 2003, advised counsel for the Complainants that an amended Complaint would have to be submitted identifying the correct respondents for the disputed Domain Names, demonstrating a link between Dom 4 Sale, Inc. and so so domains to show that the disputed Domain Names are controlled by the same person and entity, and identifying the correct registrar with whom each of the disputed Domain Names is registered. The Center initially required the amended Complaint to be submitted by August 16, 2003. Upon request by the Complainantsí counsel, the deadline to file the amended Complaint was extended to August 20, 2003. On August 20, 2003, the Complainants electronically filed their amended Complaint. On August 25, 2003, the Center verified that the pleadings 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 Respondents of the proceeding by sending a copy of the Complaint and the Amended Complaint to the address verified by Intercosmos Media, and the proceedings commenced on August 25, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was September 14, 2003. The Respondents did not submit any response or request any extension of time to respond. Accordingly, the Center sent a notification of default to Respondents on September 17, 2003, and advised Respondents that the proceedings would be forwarded to an Administrative Panel for decision.
The Center appointed Barbara A. Solomon as the sole panelist in this matter on November 23, 2003. 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 Complainant Gannet Co., Inc., through its various subsidiaries, publishes several newspapers in the United States including The Tennessean, The Idaho Statesman, and The Statesman Journal. These newspapers have been published in the United States for decades. The Tennessean is distributed in the middle Tennessee area, The Idaho Statesman is distributed in the state of Idaho, and The Statesman Journal is distributed in the mid-Willamette Valley area of Oregon. Each of these publications currently has associated with it an online version of the newspaper at the domain names "www.tennessean.com", "www.idahostatesman.com", and "www.statesmanjournal.com" respectively. The websites are accessible throughout the United States including New York where the Respondents are located.
The Complainant Media West-GSI, Inc. owns a United States federal trademark registration for THE TENNESSEAN based on use since 1972. The registration issued October 12, 1999. This registration was in full force and effect prior to the Respondentsí registration of the Domain Name <thetennessean.com>, which was not registered until on or about May 13, 2002. In addition, the Domain Name <thetennessean.com> was procured after the Complainant obtained the Domain Name <tennessean.com> and launched a website connected to that URL.
None of the Complainants own trademark registrations for IDAHO STATESMAN or STATESMAN JOURNAL. However, at least one of the Complainants has been using IDAHO STATESMAN since 1969, in connection with a newspaper in Idaho and the URL "www.idahostatesman.com" in connection with a nationally available website since 1999. Both of these dates are prior to the Respondentsí registration of the disputed Domain Names <idhaostatesman.com> and <idahostatsman.com>. Finally, at least one of the Complainants has been using Statesman Journal since 1980, in connection with a newspaper and has been using the URL "www.statesmanjournal.com" in connection with a website available nationally since April 1998. These dates precede the Respondentsí registration of <statesmanjournel.com> and <statsmanjournal.com>.
The Respondents are not newcomers to these types of proceedings. The Respondents have been known to register well-known marks or misspellings of well-known marks and linking the Domain Names to pages showing graphic depictions of aborted fetuses. The Respondentsí conduct is no different in this case.
The Respondent Dom 4 Sale, Inc. registered <thetennessean.com> on May 13, 2002; <idahostatsman.com> on May 20, 2003; and <statesmanjournel.com> on May 20, 2003. So so Domains registered <idhaostatesman.com> on May 20, 2003, and <statsmanjournal.com> on May 20, 2003. All of the disputed Domain Names are paid in full and all are set to expire in May, 2005.
As detailed in the Complainantsí papers and not disputed, the disputed Domain Names had been used at one time to take visitors to a graphic webpage entitled "www.abortionismurder.org". The disputed Domain Names have also pointed to a commercial website which sells and accepts orders for pharmaceutical products as well as a web page advertising domain names for sale for US $985. The email link on the domains for sale web page listed an email address identical to the contact email provided by the Respondents. The Panel has noted that as of October 27, 2003, the disputed Domain Names were reverting back to the "www.abortionismurder.org" webpage.
In response to demand letters, John Barry offered to sell the Domain Name <thetennessean.com> for US $5,000. Although there were communications between the parties relating to the transfer of <thetennessean.com> Domain Name, ultimately an arrangement was never reached.
5. Partiesí Contentions
The Complainants contend that by virtue of their publication of newspapers and associated websites, they have acquired protectable rights in THE TENNESSEAN, IDAHO STATESMAN, and STATESMAN JOURNAL. The Complainants contend that the disputed Domain Names at issue are identical to or otherwise confusingly similar misspellings of the Complainantsí protectable trademarks.
As to the Respondentsí legitimate rights or interests in the disputed Domain Names, the Complainants state that the Respondents are not licensees of any of the Complainants nor have either been authorized by any of the Complainants to use the marks THE TENNESSEAN, IDAHO STATESMAN, or STATESMAN JOURNAL.
The Complainants further contend that the Respondents cannot establish that they have rights or legitimate interests in any of the disputed Domain Names, claiming that they have never made use of, or demonstrable preparations to use, the disputed Domain Names in connection with a bona fide offering of goods or services, and that their prior use of the disputed Domain Names in connection with the sale of domain names, an anti-abortion website, or the sale of prescription medicines is not sufficient to establish legitimate rights. Among the evidence cited by the Complainants in support of this claim is the fact that the Respondents have offered the disputed Domain Names for sale for amounts in excess of the registration costs.
With respect to the element of bad faith, the Complainants contends that bad faith is shown by the Respondentsí offer to sell the disputed Domain Names for amounts in excess of their out-of-pocket costs, that the Respondents have registered the disputed Domain Names so as to prevent the Complainants from using their marks, that the Respondents registered the disputed Domain Names to deceptively attract and misdirect Internet users for the Respondentsí own commercial gain, and that the Respondentsí use of the disputed Domain Names to divert Internet users to a political website relating to abortion has the possibility of tarnishing the Complainantsí marks due to the graphic and highly charged content of the website.
The Respondents did not submit any response and therefore does not contest the Complainantsí assertion of rights, that the disputed Domain Names are identical or confusingly similar to marks in which the Complainants have protectable rights, that the Respondents have no rights or legitimate interests in the disputed Domain Names, or that the Respondents registered the disputed Domain Names in bad faith.
6. Discussion and Findings
Notwithstanding the fact that the Respondents defaulted in these proceedings, the Complainants may only prevail if, on the basis of the statements and documents submitted in accordance with the Policy, the Complainants establish each of the following: (i) that the Complainants have enforceable or protectable rights in its marks; (ii) that the disputed Domain Names are identical or confusingly similar to the marks in which the Complainants have rights; (iii) that the Respondents have no legitimate rights or interest in the disputed Domain Names; and (iv) that the disputed Domain Names have been registered and are being used in bad faith
A. Ownership of Rights in the Trademarks
Based on the evidence submitted by the Complainants and uncontested by the Respondents, the Panel is satisfied that the Complainants hold sufficient rights in the marks THE TENNESSEAN, IDAHO STATESMAN and STATESMAN JOURNAL based on the registration of the mark THE TENNESSEAN and the use made of all three marks to satisfy the Policy. The Panel further finds from the uncontested evidence that these rights predate the registration or use of the disputed Domain Names and further that based on the national use by the Complainants of their marks via Internet websites, the Respondents likely knew of the Complainantsí rights. Indeed, if the Complainantsí marks were not known to the Respondents or recognized by the public, it is doubtful, based on the Respondentsí pattern of conduct as discussed more fully below, that the Respondents would have adopted the disputed Domain Names in the first instance.
B. Identical or Confusingly Similar
The Domain Name <thetennessean.com> is an exact copy of the Complainant Media West-GSI, Inc.ís prior used and registered mark THE TENNESSEAN. As such, this domain name clearly is identical to the Complainantís prior mark thereby satisfying this element of the Policy.
As to the remaining four disputed Domain Names, none are identical to the Complainantsí trademarks but all clearly are misspellings of marks owned by the Complainants. Using a misspelling of anotherís trademark in the hope of taking advantage of common typographical errors of Internet users is know as typo-squatting. Such domain names take advantage of the similarity between the domain names and the referenced trademark. Accordingly, the Panel finds that <idahostatsman.com>, <idhaostatesman.com>, <statesmanjournel.com> and <statsmanjournal.com> are confusingly similar to the Complainantsí marks. Advanced Magazine Publishers Inc. v. Buy This Domain, WIPO Case No. D2002-0803. Playboy Enterprises Intíl Inc. v. SAND Web Names-For Sale, WIPO Case No. D2001-0094 (<plaboy.com> confusingly similar to PLAYBOY).
C. Rights or Legitimate Interests
The Respondents can demonstrate rights or legitimate interests in the disputed Domain Names under 4(c) of the Policy if they can show that before notice of the dispute they used or made demonstrable preparations to use the disputed Domain Names in connection with a bona fide offering of goods and services, that the Respondents are commonly known by the disputed Domain Names, or that the Respondents are making legitimate non-commercial or fair use of the disputed Domain Names. Here, the Respondents have submitted no evidence of any legitimate rights.
A review of the record submitted by the Complainants provides no evidence to support any showing of legitimate rights or interests in the disputed Domain Names by the Respondents. The uses made of the disputed Domain Names noted by the Complainants and observed by the Panel are wholly unrelated to the Complainants. The Respondentsí websites do not comment on or even refer to the Complainants or their publications. Rather, the disputed Domain Names appear to have been taken simply to drive traffic to the Respondentsí website for the Respondentsí commercial benefit. While the Respondents are certainly not prohibited from making their position on abortion known or from engaging in commercial activity relating to the sale of pharmaceuticals or even from selling domain names, the disputed Domain Names simply have no logical connection to the associated websites. As such, the Complainants have met their burden on this element of the Policy.
D. Registered and Used in Bad Faith
The Complainants posit numerous bases for finding bad faith. Based on the findings of bad faith set forth below, the Panel finds it unnecessary to address each of the Complainantsí theories.
Evidence of bad faith can be found from the name and contact details of the Respondents. One Respondent is known as Domain For Sale. Both Respondents use the same email address. The name and email address indicate that Respondents are in the business of acquiring and selling domain names for a profit. This is sufficient to satisfy the Policy. Advance Magazine Publishers Inc. v. Buy This Domain, WIPO Case No. D2002-0803; Pulitzer, Inc. and St. Louis Post-Dispatch, LLC v. John Barry a/k/a Buy This Domain, National Arbitration Forum Case No. FA0206000114673; University of Central Arkansas v. John Simms and John Barry, WIPO Case No. D2002-0316 (noting that the Respondents e-mail address "suggests that the purpose of Respondent . . . business is to profit from the registration and sale of domain names . . . without regard to the legitimate rights of owners of pre-existing trademarks."); Paramount Pictures Corp. v. Buy This Domain aka Domains Best Domains, WIPO Case No. D2003-0058 (the Respondents e-mail address is evidence of bad faith); Marie Claire Album S.A. v. Buy This Domain, WIPO Case No. D2002-0677 (same).
Added to this is the Respondentsí prior history in UDRP proceedings and pattern of bad faith domain name registration. The Respondents with the same address, contact details and email address have repeatedly been found to have used and registered domain names in bad faith. See Advance Magazine v. Buy This Domain, WIPO Case No. D2002-0803 (<vougemag.com>); Pulitzer, Inc. and St. Louis Post-Dispatch, LLC v. John Barry a/k/a Buy This Domain, National Arbitration Forum, Case No. FA0206000114673 (finding a domain name registrant with an email address identical to Respondentsí to be "a habitual trademark infringer that attempts to harass trademark holders into purchasing infringing domain names by connecting the domain names to unrelated websites thereby tarnishing the goodwill associated with the mark."); The Field Museum of Natural History v. John Barry d/b/a Buy This Domain, National Arbitration Forum, Case No. FA0205000114354.
Here, the Respondents are continuing their pattern of behavior of registering well-known marks or misspellings thereof and linking the domain names to the Ďabortionismurder.orgí website. See Paramount Pictures Corporation v. Buy This Domain a/k/a Best Domains, WIPO Case No. D2003-0058. The Respondents clearly are taking advantage of famous trademarks or misspellings of famous trademarks in order to divert unsuspecting Internet users to their website for their own social, political or pecuniary interests. This is bad faith.
The Panel concludes that the Complainants have met their burden under the Policy and that the disputed Domain Names should be transferred. Accordingly, the Panel orders that the Domain Names <thetennessean.com>, <idhaostatesman.com>, <idahostatsman.com>, <statesmanjournel.com> and <statsmanjournal.com> be transferred to the Complainants
Barbara A. Solomon
Dated: October 31, 2003