WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Oregonian Publishing Company v. Whois Privacy Corp.
Case No. D2017-1259
1. The Parties
The Complainant is Oregonian Publishing Company of Portland, Oregon, United States of America (“United States”), represented by Sabin Bermant & Gould, LLP, United States.
The Respondent is Whois Privacy Corp. of Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <theoregonian.com> (the “Domain Name”) is registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 5, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.
The Center verified that the 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 July 6, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 27, 2017.
The Center appointed Karen Fong, David H. Bernstein and Miguel B. O’Farrell as panelists in this matter on August 14, 2017. The Panel finds that it was properly constituted. Each member of 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 publishes a daily newspaper based in Oregon, United States, “The Oregonian”. The newspaper is owned by Advance Publications. The Oregonian has been in continuous publication since 1850. It was first published as a weekly paper and was published daily since 1861. It is the largest newspaper in Oregon, the second largest in the Pacific Northwest by circulation and the 19th largest daily newspaper in the United States. The Oregonian received the 2001 Pulitzer Prize for Public Service. The paper’s staff or individual writers have received seven other Pulitzer Prizes, including the award for Editorial Writing in 2014.
The Complainant owns United States trade mark no. 2,656,518 for THE OREGONIAN in class 16, registered since December 3, 2002 (the “Trade Mark”), based on an application filed on February 25, 2002. The Complainant also publishes online through the websites connected to the domain names <oregonian.com> and <oregonlive.com>.
The Domain Name was registered on or about June 17, 2002, approximately four months after the filing of the Trade Mark application. The Registrar was unable to verify the date that the Respondent registered or acquired the Domain Name because the Respondent used a privacy service to register the Domain Name. The website that was connected to the Domain Name (the “Website”) was a landing page that has a list of links to various websites. “The Oregonian Newspapers” and “The Oregonian” appear as the top two results. The Website was linked, at least on June 7, 2017, to a pornography site which also appears to have a virus. The Website is not currently active.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
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 each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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 was registered and is being used in bad faith.
6.2. Substantive Analysis
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.
The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name in dispute to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name. In this case the Domain Name contains the Complainant’s trade mark, THE OREGONIAN, in its entirety.
For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the Top-Level Domain (“TLD”) as it is viewed as a standard registration requirement.
The Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant submits that it has never granted the Respondent with the right to use or register the Trade Mark as a domain name or for any other reason.
The Panel notes that the Domain Name has been registered since 2002. However the Registrar has not been able to verify when the Respondent registered or acquired the Domain Name. In any event, the Domain Name was registered several months after the Complainant applied to register its mark in the United States Patent and Trademark Office, and more than a century after the Complainant began publishing under the Trade Mark. It is not entirely clear from the Complaint when the Complainant became aware of the Domain Name. It would appear it was sometime in June 2017. In any case, as stated in section 4.17 of WIPO Overview 3.0, mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits especially as the Respondent has not filed a response to show any detrimental reliance on the delay.
This Domain Name has been used in connection with a pornography site which also appears to infect a user’s computer with a virus. That is not a legitimate use of the Domain Name.
The Website has also been used as a parking page comprising pay-per-click (“PPC”) links including what appears to be links to the Complainant – “The Oregonian Newspaper” and “The Oregonian”. Section 2.9 of the WIPO Overview 3.0 says that PPC links do not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. The links on the Website would mislead Internet users especially if there are links to the Complainant as well as to pornography and are therefore unable to confer rights or legitimate interests on the Respondent.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
To succeed under the Policy, a Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered or acquired the Domain Name. It is implausible that it was unaware of the Complainant when it registered or acquired the Domain Name. The Trade Mark is the name of a newspaper that has been in circulation for more than 150 years. In the WIPO Overview 3.0, section 3.2.2 states as follows:
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the Domain Name is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0). Further, the links to the Complainant’s newspaper confirm the Respondent’s awareness of the Trade Mark. The Domain Name falls into the category stated above and the Panel finds that registration is in bad faith.
The Domain Name is also used in bad faith. The Domain Name has been used as landing page for PPC linking pages, malware and pornography. This is clearly aimed at generating revenue off the Trade Mark without authorisation.
By using the Domain Name, the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Website or services on the Website. This amounts to bad faith under paragraph 4(b)(iv) of the Policy.
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 <theoregonian.com> be transferred to the Complainant.
David H. Bernstein
Miguel B. O'Farrell
Date: August 17, 2017