WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Herald & Weekly Times Pty Limited v. Quantec, LLC/Novo Point, LLC / WhoIs Privacy Services Pty Ltd
Case No. D2014-2140
1. The Parties
The Complainant is Herald & Weekly Times Pty Limited of Melbourne, Victoria, Australia, represented by Crowell & Moring LLP, Belgium.
The Respondent is Quantec, LLC/Novo Point, LLC of Dallas, Texas, United States of America / WhoIs Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <melbourneheraldsun.com> (the "Domain Name") is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2014. On December 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 10, 2014, 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 the Complainant on December 12, 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 December 19, 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 December 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2015.
The Center appointed Ian Lowe as the sole panelist in this matter on January 29, 2015. 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 based in Melbourne, Australia and is the publisher of four newspapers. These include the Herald Sun which was established in 1990 as an amalgam of the afternoon daily, The Herald, and the morning daily, The Sun News-Pictorial. The Herald Sun is claimed to be Australia's favourite daily newspaper, read by 1.3 million readers in the State of Victoria every weekday, with 1.4 million readers of the Sunday Herald Sun every week.
The Complainant is the registered proprietor of a number of Australia trade marks in respect of the word mark HERALD SUN including trade mark number 543306 registered as of October 4, 1990, number 727145 registered as of February 4, 1997 and number 1038115 registered as of January 18, 2005.
According to the WhoIs records submitted by the Complainant, the Domain Name was created on June 27, 2006 but was transferred to and registered by the Respondent between October 15, 2010 and December 7, 2010. At the time of the Complaint, the Domain Name resolved to a website comprising sponsored advertisements and links to third party websites, a number of which were news related.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to its HERALD SUN trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has undoubted registered trademark rights in respect of HERALD SUN. The Domain Name comprises the whole of the Complainant's trademark together with the geographical indicator, Melbourne. In the Panel's view, this additional word does not detract from the distinctiveness of the HERALD SUN trade mark. Rather, since the Complainant is based in Melbourne, the additional term serves to increase the likelihood of confusion with the Complainant. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Name. The use made of the Domain Name by the Respondent for a website comprising sponsored advertisements and links to third party websites does not indicate any such rights and the Respondent has chosen not to respond to the Complaint or to counter the prima facie case established by the Complainant. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The Panel considers that in light of the long-standing use of the Herald Sun name for a newspaper in Melbourne over many years, there can be no doubt that the Domain Name was originally registered with the Complainant and its rights in the HERALD SUN trademark in mind and that the Respondent subsequently registered the Domain Name also well aware of the Complainant's rights. The Panel cannot conceive of a legitimate reason for the Respondent registering the Domain Name. The Domain Name has been used by the Respondent for a website comprising pay-per-click links. The Panel considers that this is with a view to commercial gain by confusing Internet users as to the source or affiliation of the Domain Name.
Accordingly, the Panel finds that the Domain Name was registered and is being used in bad faith.
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 <melbourneheraldsun.com> be transferred to the Complainant.
Date: February 11, 2015