WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Chicago Tribune Company, LLC v. Manager Domain/WUITAS, Inc. d/b/a ABILICOM/PrivacyProtect.org

Case No. D2013-1775

1. The Parties

Complainant is Chicago Tribune Company, LLC of Chicago, Illinois, United States of America (“US”), represented by in-house counsel.

Respondents are Manager Domain/WUITAS, Inc. d/b/a ABILICOM (“ABILICOM”) of Dover, Delaware/Van Nuys, California, US, represented internally, and PrivacyProtect.org of Queensland, Australia.

2. The Domain Name and Registrar

The disputed domain name <tehchicagotribune.com> (“the Domain Name”) is registered with 0101 Internet, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2013. On October 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 21, 2013 the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 22, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on October 24, 2013.

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(a) and 4(a), the Center formally notified Respondents of the Complaint, and the proceedings commenced on October 31, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2013. Respondent ABILICOM filed a Response with the Center on November 12, 2013.

On November 22, 2013, the Center received an unsolicited submission from Complainant.

The Center appointed Harrie R. Samaras as the sole panelist in this matter on November 28, 2013. 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

Complainant Chicago Tribune and its affiliates own and operate the Chicago Tribune newspaper, the eighth largest newspaper in the USby circulation. The Chicago Tribune was first published on June 10, 1847 and has been in print for more than one hundred and sixty years. As part of and in conjunction with its operation of the newspaper, Complainant also owns and operates the websites located at “www.chicagotribune.com” and “www.mobile.chicagotribune.com” (the “Chicago Tribune Sites”).

Complainant owns all rights in the CHICAGO TRIBUNE trademark (the “CHICAGO TRIBUNE Mark” or “the Mark”). Complainant prominently displays the CHICAGO TRIBUNE Mark throughout the Chicago Tribune newspaper and on the Chicago Tribune Sites. Complainant is itself known by the “Chicago Tribune” name, and the domain names for the Chicago Tribune Sites consist essentially of the CHICAGO TRIBUNE Mark.

Complainant owns US Trademark Registration No. 0771,167 for the CHICAGO TRIBUNE Mark, covering “Newspaper and Newspaper Supplements”. It first registered the CHICAGO TRIBUNE Mark on June 9, 1964. Complainant’s registration for the CHICAGO TRIBUNE Mark has been in full force and effect for more than forty years and remains in full force and effect.

The Domain Name was registered on February 28, 2013.

5. Parties’ Contentions

A. Complainant

1. Submission

At least one UDRP panel has found that Complainant possesses unusually strong rights in the CHICAGO TRIBUNE Mark, ordering the transfer to Complainant of a domain name (<chicago-tribune.net>) which, like the Domain Name consists essentially of the CHICAGO TRIBUNE Mark. (See The Chicago Tribune Company v. Jose P. Varkey WIPO Case No. D2000-0133). The Domain Name is confusingly similar to the CHICAGO TRIBUNE Mark because the CHICAGO TRIBUNE Mark is fully incorporated within the Domain Name and comprises the dominant portion thereof. Adding the non-distinctive, misspelled term “teh” immediately prior to the CHICAGO TRIBUNE Mark does not render the Domain Name non-infringing, but instead results in confusing similarity. Respondent’s use of a domain name consisting solely of the misspelled term “teh” and the Mark constitutes “typosquatting”, a practice which by its very nature results in confusing similarity.

Respondent is not affiliated with Complainant in any way, and Complainant has never licensed nor otherwise authorized Respondent to use the CHICAGO TRIBUNE Mark or any other trademark of Chicago Tribune. Absent such authorization, Respondent cannot have legitimate rights in the CHICAGO TRIBUNE Mark or the Domain Name. Respondent could not possibly use the Domain Name in connection with a bona fide offering of goods or services because such use inevitably would constitute an infringement of Complainant’s famous CHICAGO TRIBUNE Mark. Respondent’s website is designed to deceptively mimic the Chicago Tribune Sites by using the same distinctive text of the CHICAGO TRIBUNE Mark and newspaper-style layout used by Complainant on Chicago Tribune Sites. Respondent even provides a password and username login through which a confused Chicago Tribune reader could unintentionally reveal both personal information and proprietary Chicago Tribune registration information. Respondent’s mimicking of Chicago Tribune Sites demonstrates that Respondent has no rights or legitimate interests in the Domain Name. Respondent’s selection and use of the Domain Name can only be understood as an attempt by Respondent to (a) divert traffic from Chicago Tribune Sites, (b) unfairly attract for commercial gain Internet users by trading on the fame of the CHICAGO TRIBUNE Mark, (c) take advantage of a common typographical error employed by Internet users while attempting to locate Chicago Tribune Sites, and (d) benefit from the goodwill Complainant has created in the CHICAGO TRIBUNE Mark. Respondent’s conduct does not constitute a bona fide offering of goods and services under the Policy nor establish rights or legitimate interests in respect of the Domain Name.

The Domain Name consists essentially of the famous CHICAGO TRIBUNE Mark. Given the myriad alternative names Respondent could have chosen, Respondent’s duplication of Complainant’s trademark in the Domain Name provides compelling evidence of “opportunistic bad faith” under the Policy. Respondent’s use of a misspelled version of the generic word, “the,” is a calculated attempt to “typosquat” the Chicago Tribune Sites by (a) intentionally misleading Chicago Tribune readers into believing that they are accessing the Chicago Tribune Sites, and (b) deceptively inducing Chicago Tribune readers into unintentionally providing their personal information and proprietary Chicago Tribune registration information. Exploiting minor spelling variations is a common tactic utilized by typosquatters and is strong evidence of bad faith. Respondent’s deceptive mimicking of Chicago Tribune Sites, including employing the same distinctive, stylized text of the CHICAGO TRIBUNE Mark, the newspaper-style layout, and account information login also establishes beyond any reasonable doubt that Respondent knew of Complainant and its rights in the CHICAGO TRIBUNE Mark when registering the Domain Name. Respondent’s knowledge of Complainant and the CHICAGO TRIBUNE Mark is strong evidence of bad faith under the Policy. Respondent’s bad faith is further demonstrated by the fact that Respondent is luring consumers seeking a genuine “Chicago Tribune” website to Respondent’s fake website featuring numerous advertising links that Respondent presumably earns “click through commissions.” Respondent’s improper conduct, coupled with Complainant’s longstanding use of the CHICAGO TRIBUNE Mark, further establishes that Respondent registered the Domain Name primarily for the purposes of disrupting Complainant’s business, within the meaning of paragraph 4(b)(iii) of the Policy. Respondent intentionally has hidden its contact information through an off-shore privacy protection service, a fact that provides further evidence of bad faith.

2. Supplemental Submission

Respondent’s website located at the Domain Name is not a parody. It is a typosquatting scam site designed to lure unsuspecting customers seeking the genuine Chicago Tribune website to Respondent’s website, where Respondent provides revenue-generating advertisements. Given that Respondent is obviously using the Domain Name for commercial gain rather than true parody, the “fair use” defense does not apply. Even if the fair use defense were relevant here, it would apply only to the content of Respondent’s website, not to Respondent’s use of the Domain Name because the Domain Name itself is not a communicative message. Irrespective of any First Amendment right that Respondent may have to include parody, commentary or criticism on its website, Respondent does not have the right to drive traffic to its website through the use of typosquatting and the attendant initial interest confusion that it creates.

B. Respondent (ABILICOM)

Respondent concedes Complainant’s rights to the Mark, however Complainant makes no factual demonstration how the Domain Name is being used in a manner that is “confusingly similar” other than the single word “teh” in place of the word “the.”

WUITAS, Inc. d/b/a ABILICOM is merely a holding organization for domain names and, as such, would not in and of itself be operating as the Domain Name to prove sufficiency to be commonly known as the Domain Name. In point of fact, “www.tehchicagotribune.com” operates as <tehchicagotribune.com> and is commonly known by that name and is not “confusingly similar” as Complainant alleges. A reasonable person with even a de minimis amount of intelligence would have no difficulty distinguishing the two entities. Respondent does not deny that the Domain Name is being used for commercial purposes.

Complainant alleges the Domain Name was registered and is being used in bad faith. This is patently untrue. Complainant alleges “typosquatting,” however this is not the case in the instant situation. Respondent purposefully chose the Domain Name with the deliberate misspelling of the name ‘the’ to ‘teh’ because it comports with the theme of Respondent’s website, which is a parody of the Chicago Tribune website and translates the website into Geekspeak, called “Geek” throughout the website, the word ‘the’ is often misspelled by computer programmers and others and is commonplace. The website also randomly creates typographical error of case-inversion as well as incorporating Geek slang linguistics. Respondent famously maintains over 100 similar websites which are similarly translated into such dialects as ‘Gangsta,’ ‘Redneck’ (a southern United States dialect), and Piglatin. The fact that the website is translated into “Geek” is clearly identified at the top of each page in the folio section and below the logo. Complainant would not file a claim against a major search engine such as Google or Bing for translating its work into another language, such as Spanish or Hebrew, so it has no basis for so doing in the instant case. A reasonable person would have no difficulty distinguishing the Domain Name from Complainant’s domain name.

The citations supplied by Complainant only deal with so-called “cyber-squatting” and “typo-squatting” and do not address the issue of parody. The issue of parody in domain names and their attendant websites has been addressed by ICANN, WIPO, and the courts and all have held that parodies are a fair and legitimate use. In the United States, parody is considered as protected speech under the First Amendment of the Constitution. Courts uniformly recognize that the concept of fair use, as construed consistently with the First Amendment, allows the publisher or author of a book about a famous person to use that person’s name in the title of the book. Both the UDRP and the Trademark laws permit the use of a name for a website that is about the owner of the name, rather than being sponsored by the owner of the name. The fundamental flaw in Complainant’s argument is that it rests on an erroneous assumption – that a domain name necessarily identifies the owner or sponsor of the website located at that domain name. In fact, a domain name may just as easily reflect the subject or title of a website as its owner or sponsor, and hence a person who desires to create a website that is “about” the owner of a well-known (or trademarked) name, has just as legitimate a claim to that domain name as does the owner of the name or trademark. The UDRP specifically recognizes this defense in paragraph 4(c)(iii). Thus, many UDRP decisions have upheld the use or registration of domain names that were identical to a trademark, by persons other than the owner of the trademark, where the purpose was to mount a website about the owner of the name. The largest number of such cases have involved the use of the name for the purpose of criticizing the name owner.

6. Discussion and Findings

A. Supplemental Filing

The Panel must determine as a preliminary matter whether Complainant’s Supplemental Filing should be considered, consistent with the Policy and the Rules. No provision in the Policy, the Rules or the Supplemental Rules authorizes the filing of supplemental filings by either party to the administrative proceeding without leave from the Panel.

If a party wants to make a supplemental filing, they must set forth reasons for doing so such as: the existence of new, pertinent facts that did not arise until after the submission of the Complaint, the desire to bring new, relevant legal authority to the attention of the Panel, or the need to rebut factual arguments that could not have been anticipated in the Complaint. Because Respondent is relying so heavily on paragraph 4(c)(iii) of the Policy (i.e., parody) as a defense, and because it appears that Complainant did not anticipate such an argument, the Panel will consider Complainant’s short and focused submission.

B. Identical or Confusingly Similar

There is no dispute over Complainant’s trademark rights in the CHICAGO TRIBUNE Mark. Respondent concedes Complainant has rights to the Mark, and in addition to Complainant’s long-standing use of the Mark, Complainant owns USTrademark Registration No. 0771,167.

Respondent, however, challenges whether its use of the Mark in the Domain Name is confusingly similar. The Panel finds that the Domain Name is confusingly similar to the CHICAGO TRIBUNE Mark because it is fully incorporated within the Domain Name and comprises the dominant portion of it. See Magnum Piering, Inc. v. The Mudjackers, WIPO Case No. D2000-1525 (“As numerous prior panels have held, when a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy.”). Adding the non-distinctive, misspelled term “teh” in front of the CHICAGO TRIBUNE Mark does not render the Domain Name non-infringing, but instead results in confusing similarity. See, e.g., Hertz System, Inc. v. Peter Bishop, WIPO Case No. D2009-1309; see also, Mark. Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095 (holding that “ample authority exists to support the conclusion that this virtual identity [from typosquatting] is sufficient to establish confusing similarity); Expedia, Inc. v. Alvaro Collazo, WIPO Case No. D2003-0716 (finding the domain name <expediua.com> confusingly similar to <expedia.com> and noting the visual and phonetic similarity of the two).

For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.

C. Rights or Legitimate Interests

Complainant alleges that Respondent is not affiliated with it in any way and it has never licensed or otherwise authorized Respondent to use the CHICAGO TRIBUNE Mark. Respondent does not dispute this. Furthermore, the Panel agrees with Complainant that Respondent could not be using the Domain Name in connection with a bona fide offering of goods or services because such use would inevitably constitute an infringement of the Mark. See, e.g., Yahoo Inc v. Syrynx, Inc., WIPO Case No. D2000-1675 (“in the absence of any license or permission from Complainant to use its YAHOO! names and marks or to apply for or use any domain name incorporating those marks, it is clear that no actual or contemplated bona fide or legitimate use of the contested domain names could be claimed by Respondent.”).

To show rights or legitimate interests in a disputed domain name under paragraph 4(c)(ii) of the Policy a respondent must demonstrate that “you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights”. Respondent argues that “WUITAS, Inc. d/b/a ABILICOM is merely a holding organization for domain names and, as such, would not in and of itself be operating as the [Domain Name] . . . .” That statement essentially indicates that Respondent is unable to show any rights or legitimate interests in the Mark under paragraph 4(c)(ii) of the Policy. However Respondent claims that “www.tehchicagotribune.com” operates as <tehchicagotribune.com> and is commonly known by that name. Whatever the relevance of that statement may be, Respondent does not provide any evidence of who or what “www.tehchicagotribune.com” is, or how “www.tehchicagotribune.com” has been commonly known by the Domain Name.

With regard to paragraph 4(c)(iii) of the Policy , Respondent states that it “does not deny that the [Domain Name] is being used for commercial purposes.” Rather it attempts to argue that its use of the CHICAGO TRIBUNE Mark is excused as parody/fair use (although this argument is included in response to Complainant’s bad faith allegations). First, when the Panel accessed the website associated with the Domain Name in real time, the evidence of Respondent’s commercial intent is apparent from the click through advertisements of the Lord & Taylor department store, a specialty store named Kalamazoo Gourmet, the Bed Bath & Beyond store, and the Nexus5 smart phone from Google, for example. Similarly, a screen shot of the website annexed by Complainant shows an ad from GoDaddy. Given this evidence and the fact that Respondent has admitted to using the website for commercial purposes, the “fair use” defense cannot apply. See, e.g., Media West-PNI, Inc. and Phoenix Newspapers, Inc. v. Bruce Watson, WIPO Case No. D2004-0974 (“[T]he defense suggested by Paragraph 4(c)(iii) of the Policy requires that a domain name be used ‘without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.’ The presence of advertising on the VPC site strongly suggests that commercial gain was included among the motives for diverting consumers from Complainant’s website.”). Respondent’s reliance on fair use/parody to excuse its conduct fails on this basis alone.

In this Panel’s view, another problem Respondent has been trying to apply the fair use defense here is that the defense would apply only to the content of Respondent’s website, not to Respondent’s use of the Domain Name because the Domain Name itself is not a communicative message. See, e.g., Valero Energy Corporation v. American Distribution Systems, Inc. D/B/A Default Data.com and Brian Wick, WIPO Case No. D2001-0581 (“As for fair use, in the Panel’s view, it is not the address of the web site that is protected by free speech principles, but rather the content of the website.”); Media West-PNI, Inc. and Phoenix Newspapers, Inc. v. Bruce Watson, WIPO Case No. D2004-0974 (“Thus, regardless of the content of the website to which Respondent diverted traffic in this case, Respondent could not sustain an argument that he made a legitimate noncommercial or fair use of the Domain Name. The Domain Name is confusingly similar to Complainants’ mark and is not itself a communicative message that is protected free speech.”).

The Respondent’s website mimics the Chicago Tribune Sites by using the same or very similar fonts as Complainant uses on those sites as well as a similar newspaper-style layout. Respondent describes the theme of its website as a translation of Complainant’s website into “Geekspeak” (e.g., using misspelled words like “teh” instead of “the”, using case inversion like “fEATUreS" where words are spelled with varying letter case, and using Geek slang linguistics like “speakn” for “speaking” or “buzinezz” for “business”). There are also many places where the text is quite readable and sounding like Complainant’s content (e.g., “Chicago Featured Stories, Chicago News, Chicago Obituaries, and Chicago Sports”). With the combination of similar fonts, similar layout, readable text, and then inverted case text and Geekspeak, Internet users looking for the Chicago Tribune online and reaching Respondent’s website are likely to think they have reached Complainant’s website but that there are problems with the website. Thus, irrespective of any First Amendment right that Respondent may have to use its website for parody, Respondent does not have the right to drive traffic to it using a confusingly similar domain name and creating initial interest confusion. See, e.g., Valero Energy Corporation v. American Distribution Systems, Inc. D/B/A Default Data.com and Brian Wick, WIPO Case No. D2001-0581 (“The Internet user has arrived at the site because of initial confusion on which Respondents openly rely here… The source, here Valero, may be a proper subject of parody, but its valid service marks may not properly be used as the address for a website purporting to contain such parody”); Media West-PNI, Inc. and Phoenix Newspapers, Inc. v. Bruce Watson, WIPO Case No. D2004-0974 (“it is not a legitimate expression of free speech for one journal to appropriate the name of a more famous one in order to divert readers to its own publication, even if readers are likely to be confused only initially as to the source of the communications.”)

For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.

D. Registered and Used in Bad Faith

Complainant’s long-established use of the registered CHICAGO TRIBUNE Mark and Respondent’s mimicking of the Chicago Tribune Sites, including employing the same font used by Complainant for its CHICAGO TRIBUNE Mark and even throughout the website, using a similar newspaper-style layout, and requiring an account information login, is all evidence Respondent knew of Complainant and its rights in the CHICAGO TRIBUNE Mark when registering the Domain Name. See, e.g., Société Air France v. R Blue, WIPO Case No. D2005-0290 (“Respondent must have been aware of the Complainant’s trademarks while registering the domain name in dispute. This finding leads to the conclusion that the domain name in dispute has been registered in bad faith.”)

The Panel also finds that Respondent’s use of a confusingly similar domain name, with a website that mimics the Chicago Tribune Sites, for commercial gain, runs afoul of paragraph 4(b)(iv) of the Policy, which provides that “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.” Respondent stated that it does not deny the commercial nature of its website and, in fact, given the numerous commercial advertisements and links appearing on the website the commercial nature is patently obvious. See Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102 (links to commercial websites on a website using a well-known mark in its domain name found to constitute evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy). Furthermore, Respondent’s use of Complainant’s Mark with a slightly misspelled generic suffix (“teh” instead of “the”) is an intended attempt to “typosquat” which is further evidence of bad faith. See, e.g., The Sportsman’s Guide, Inc. v. Vipercom, WIPO Case No. D2003-0145 (“Typosquatting is by itself strong evidence of bad faith in registration and use of a domain name.”).

For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.

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 Domain Name <tehchicagotribune.com> be transferred to Complainant.

Harrie R. Samaras
Sole Panelist
Date: December 12, 2013