WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Newsmax Media Inc. v. Domain Privacy Service FBO Registrant/Houssam jibet kadi
Case No. D2014-1085
1. The Parties
The Complainant is Newsmax Media Inc. of West Palm Beach, Florida, United States of America ("US"), represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland ("UK").
The Respondent is Domain Privacy Service FBO Registrant of Burlington, Massachusetts, US, and Houssam jibet kadi, of Tanger, Morocco.
2. The Domain Name and Registrar
The disputed domain name <newsmax4.com> is registered with Domain.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 23, 2014. On June 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 23, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 25, 2014 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 July 1, 2014.
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 the Respondent of the Complaint, and the proceedings commenced on July 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2014. The Center received an informal communication from the Respondent on July 5, 2014.
The Center appointed Alfred Meijboom as the sole panelist in this matter on July 28, 2014. 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 is owner of different trademark registrations for the mark NEWSMAX, registered in classes 9, 16, 38 and 41 for, inter alia, electronic downloadable publications, magazines and broadcasting, in the US (registration number 43038915 of March 26, 2013), the European Union (Community trademark number 010951192 of October 24, 2012), Australia (registration number 1495463 of June 8, 2012) and Switzerland (registration number 636923 of November 26, 2011) (together the "Trademark").
The disputed domain name was registered on January 20, 2014.
5. Parties' Contentions
The Complainant is publisher of an online conservative Republican newspaper magazine under the Trademark, and each month reaches over 12 million Americans via its website entitled "Newsmax.com" and other websites, including "Newsmaxhealth.com", "NewsmaxWorld.com" and "NewsmaxTV.com". The Complainant also asserts that it has an established presence on various social media platforms. It has been using the Trademark since 1998 when the Complainant created its first website at "www.newsmax.com".
The Complaint claims the disputed domain name to being confusingly similar to the Trademark, as the disputed domain name contains the whole of the Trademark conjoined with the number "4", which does nothing to differentiate or distinguish it from the Trademark, in the same way that the replacement of a letter with a number does not.
The Complainant further asserts that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. The Trademark is a coined mark, which is original and one that the Respondent could not possibly have registered as a generic or descriptive mark. The Trademark is not a dictionary word. The Respondent is not affiliated with, nor a partner of, the Complainant and has not been authorized, or licensed, by the Complainant to use the Trademark within the disputed domain name, or for any other purpose. Historical Google searches for the Respondent have shown that the Respondent was not commonly known as "newsmax4" at the time of registration of the disputed domain name, whereas the Complainant is well known amongst its large predominantly American audience under the Trademark.
Other than showing common law or registered rights the Respondent may aver that it has a legitimate interest in the disputed domain name as it is being utilized in connection with a bona fide offering of goods or services, or that it is making nominative, fair use of the disputed domain name. On first inspection of the website under the disputed domain name it would appear as though the Respondent is making use of the disputed domain name for a legitimate interest, however the issue is not whether the business itself is genuine; instead it is whether there is a bona fide offering of goods or services. The Complainant contends that the Respondent is not using the disputed domain name for a bona fide offering of goods or services but rather to mislead Internet users into falsely assuming an affiliation with the Complainant as its Trademark is not one that traders would legitimately choose in the context of provision of news, information, and entertainment services, unless seeking to create an impression of an association with the Complainant, and where this is the case, it cannot create rights or legitimate interests in the disputed domain name. Here the website at the disputed domain name appears to be an imitation of the Complainant's website "www.newsmax.com" which would not be a bona fide offering as the Respondent is trading on the goodwill of the Complainant. Any offering of goods or services made on such misrepresentation amounts to passing off and cannot constitute a bona fide offering. Moreover the website at the disputed domain name contains sponsored links which would cause further redirection of Internet traffic looking for the Complainant's website. The Complainant refutes that the Respondent has any claim of noncommercial use, as the usual purpose of including advertisements on a webpage is to generate income to make profit.
At the time of registration of the disputed domain name the Complainant was long-standing and had been in operation for sixteen years, thus the Respondent ought to have known of its existence, particularly as it appears to be operating in the same industry and was the only online news publication using the Trademark until the Respondent registered the disputed domain name.
On July 5, 2014, the Respondent sent an email to the Center, essentially stating that he registered the disputed domain name in good faith, and did not expect a complaint.
6. Discussion and Findings
The Respondent filed an email on July 5, 2014, which was informative by nature and did not discuss the Complainant's contentions. The Respondent did therefore not file a Response and is in default. However, as set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ("WIPO Overview 2.0"), the consensus view of UDRP panelists is that respondent's default does not automatically result in a decision in favor of complainant. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from the Respondent's default, paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.
Under the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
In the present case, the Complainant has sufficiently demonstrated that it has rights in the Trademark. It is further well established that generic Top-Level Domains such as ".com" may be disregarded in the assessment under paragraph 4(a)(i) of the Policy (e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). With this in mind, the only difference between the disputed domain name and the Trademark is the number "4" which is added to the Trademark. The dominant part of the disputed domain name is and remains the Trademark, which results in the existence of a likelihood of Internet user confusion.
The Panel is therefore satisfied that the disputed domain name is confusingly similar to the Trademark and that the first element of paragraph 4(a) of the Policy is met.
B. Rights or Legitimate Interests
The Complainant must show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (e.g. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Complainant showed ample information showing that the Respondent did not have registered rights in the disputed domain name and was not known under the disputed domain name prior to the Complainant operating its news services under the Trademark. The Complainant further argued that the Respondent's news service on the website under the disputed domain name is not using the domain for a bona fide offering of news services but rather to mislead Internet users into falsely assuming an affiliation with the Complainant.
In absence of the any explanation by the Respondent the Panel is satisfied that the Complainant has made a prima facie case, which has not been rebutted by the Respondent. As a result, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the second element of paragraph 4(a) of the Policy is also met.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of the disputed domain name in bad faith where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service offered on the Respondent's website or location.
In the Panel's view, it is obvious that the Respondent registered the disputed domain name with the Trademark in mind as, at the time Respondent registered the disputed domain name, the Complainant had already been operating its website under the Trademark for 16 years, and had several registrations for the Trademark, including in the US, while the purpose of the website to which the disputed domain name resolves is, inter alia, to provide American news, which undisputedly competes with the Complainant's news services under the Trademark which provides the same from an American perspective, so that the services being offered by the Respondent are similar to those of the Complainant and therefore are competing. Furthermore the term "newsmax4" is not a dictionary word, and without the Respondent's explanation, which is lacking, the Panel considers it unlikely that the Respondent spontaneously thought of such term for a domain name. The Respondent's bad faith is further confirmed because the website to which the disputed domain name resolves is designed in a similar look and feel to the Complainant's website, with similar format and content, and the use of the term "newsmax4" in the background in the same way that the Trademark is used in the background of the Complainant's website at "www.newsmaxtv.com". The Panel also notes the Complainant's assertion that the website at the disputed domain name has not been used regularly to publish information, and has been updated only sporadically, which is indicative that the disputed domain name is not in fact being used for its purported purpose.
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith, so that also the third and last element of paragraph 4(a) of the Policy is met.
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 <newsmax4.com> be transferred to the Complainant.
Date: August 11, 2014