WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Dallas Morning News, Inc. v. Perfect Privacy, LLC / Brody Cruise
Case No. D2018-1838
1. The Parties
The Complainant is The Dallas Morning News, Inc. of Dallas, Texas, United States of America (“United States”), represented by Jackson Walker, LLP, United States.
The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States / Brody Cruise of Bancroft, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <fdmag.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2018. On August 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 14, 2018, the Registrar transmitted by email to the Center its verification response disclosing:
(a) it is the Registrar for the disputed domain name;
(b) the registration agreement is in English;
(c) the UDRP applies to the disputed domain name;
(d) the disputed domain name was first registered on October 1, 2014 by the second-named Respondent (the Respondent); and
(e) 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 August 17, 2018, 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 amendment to the Complaint on August 22, 2018.
The Center verified that the Complaint together with the amendment to 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 August 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 13, 2018.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on September 24, 2018. 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 was established in 1885 in Dallas, Texas in the United States as a newspaper publisher. In June 1978, it began publishing a fashion supplement under the name “Fashion Dallas”. In 2006, the Complainant began publishing the supplement in a new monthly magazine format under the name “FD Luxe”. In around July 2014, the name of the magazine was changed simply to “FD”. Publication of the magazine was discontinued in February 2016. In 2015, the magazine’s circulation was 80,000 copies.
The Complainant owns two registered trademarks in the United States:
(a) Registered Trademark No. 4,546,914 for FD LUXE in relation to a range of goods and services in International Classes 9, 16, 35 and 41. This trademark was registered on June 10, 2014 asserting a first use in commerce on April 1, 2012.
(b) Registered Trademark No. 4,546,915 for a stylised or fancy version of FD LUXE in relation to a range of goods and services in International Classes 9, 16, 35 and 41. This trademark was also registered on June 10, 2014 asserting a first use in commerce on April 1, 2012.
The Respondent registered the disputed domain name on October 1, 2014.
At least until recently, it has resolved to a website which has reproduced articles from the Complainant’s magazine without permission.
5. Discussion and Findings
No response has been filed. The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Respondent has been given a fair opportunity to present its case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has demonstrated ownership of at least the two registered trademarks referred to in section 4 above.
The Complainant also contends it has rights at common law in the letters “FD” alone. It is certainly arguable that with a circulation of 80,000 the sign “FD” had come to represent to people in at least the Dallas, Texas area the Complainant’s magazine and, given the comparatively short passage of time since the magazine’s closure, would still do so.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
The Panel notes that the letters “FD” are a separate and prominent part of both registered trademark. Indeed, they are presented in much larger and emphasised letters than the separate word “LUXE” in Registered Trademark No. 4,546,915. They also comprise the first distinct element or “word” in both of the Complainant’s trademarks. As with the Complainant’s trademarks, the letters “FD” are at the start of the disputed domain name. As the Complainant points out, the letters “mag” are a common, colloquial abbreviation for magazine. If one were wondering what type of “mag” the disputed domain name was associated with, they are plainly the distinctive feature. The disputed domain name also contains the whole of the magazine’s title in the period from July 2014 until its closure.
Disregarding the gTLD “.com”, therefore, the disputed domain name is confusingly similar to the Complainant’s trademark. Accordingly, the Panel finds that the Complainant has established the requirement under the first limb of the Policy.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is not derived from the Respondent’s name. Further, the website which the disputed domain name has resolved to reproduces essentially verbatim the text of articles formerly published in the Complainant’s magazine without any permission from the Complainant. The website in fact presents as if it were the Complainant’s website. The Complainant contends that this unauthorised reproduction of its content is copyright infringement. The scale of reproduction seems very unlikely to qualify as fair use. Such unauthorised use of the Complainant’s copyright material with a domain name so similar to the Complainant’s trademark does not qualify as a good faith offering of goods or services under the Policy
Having regard to these matters, the Panel finds that the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that case or otherwise defend his conduct.
Accordingly, the Panel finds that the Complainant has established that the Respondent does not have rights or legitimate interests in the disputed domain name under the Policy.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint. See e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd., WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
Given the content on the website to which the disputed domain name resolves, there can be little doubt that the Respondent was well aware of the Complainant’s trademarks when registering the disputed domain name. As on the record in this proceeding the Respondent has been found not to have any right or legitimate interest in using the disputed domain name in the way and for the purpose it has been used, therefore, it follows that the disputed domain name has been registered and used in bad faith.
The Panel finds therefore that the Complainant has also established the third requirement under 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 disputed domain name <fdmag.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: October 8, 2018