The Complainant is Tribune License, Inc. of Chicago, Illinois, United States of America, represented by Michael K. Hendershot, Esq., United States of America.
The Respondent is Luxutor Group of New York, New York, United States of America.
The disputed domain name <latimeswineclub.com> (“Disputed Domain Name”) is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2010. On September 1, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On September 1, 2010, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 4, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2010.
The Center appointed Michael Albert as the sole panelist in this matter on October 13, 2010. 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.
Complainant and its corporate affiliates own and operate the Los Angeles Times newspaper (commonly known the world over as “the LA Times”). The LA Times was first published in 1881 and has been in print for nearly one-hundred and thirty years.
Complainant is the owner of the following trademarks: LATIMES.COM, LA TIMES, and LOS ANGELES TIMES (collectively, “Complainant’s Marks”). The mark LATIMES.COM, covering “Providing online copies of newspapers for general circulation, via an on-line global network” in International Class 42, was first used in 1996 and was registered in 1998. The marks LA TIMES and LOS ANGELES TIMES cover “Newspapers” in International Class 16. Complainant first used the LOS ANGELES TIMES mark in 1928 and first registered the LOS ANGELES TIMES mark in 1974.
In conjunction with its operation of the LA Times newspaper, Complainant also owns and operates the affiliated websites located at the domain names <latimes.com> and <mobile.latimes.com>. The website maintained at <latimes.com> receives over twenty million visits each month. Complainant has also registered some two dozen domain names incorporating the “LA Times” name, for use in connection with various business initiatives.
The WHOIS record indicates that the Respondent acquired the registration for the Disputed Domain Name in August 2009.
Complainant is the owner of the following federally registered trademarks: LATIMES.COM and LOS ANGELES TIMES. Complainant is also the owner of LA TIMES. The mark LATIMES.COM is in use by the Complainant for “[p]roviding online copies of newspapers for general circulation, via an on-line global network.” The mark LOS ANGELES TIMES is registered and in use by Complainant for newspapers. Complainant has established common law rights in LA TIMES for newspapers. Further, Complainant contends that its LA TIMES and LOS ANGELES TIMES marks are famous.
Complainant contends that the Disputed Domain Name incorporates in full Complainant's LA TIMES and LATIMES.COM marks and is confusingly similar to Complainant’s Marks. Complainant goes on to contend that the dominant portion of the Disputed Domain Name is “LA TIMES,” and the Disputed Domain Name only adds the generic terms “WINE” and “CLUB”. Complainant contends that Respondent’s use of a domain name that combines Complainant’s LA TIMES and LATIMES.COM marks with generic terms is likely to cause “initial interest confusion” and result in confusing similarity with the Complainant’s Marks.
Complainant contends that Respondent is neither using nor preparing to use the Disputed Domain Name in connection with a bona fide offering of goods and services, as evidenced by the fact that the Disputed Domain Name contains nothing more than links to other web sites, and does not itself offer any original content. Further, Complainant says that Respondent is using the Disputed Domain Name in a misleading manner to attract consumers looking for genuine LA TIMES goods and services, and then diverting consumers through links to third-party websites. Complainant contends that this use is neither a legitimate noncommercial use nor a fair use of the Disputed Domain Name.
Further, Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith. Complainant suggests, as evidence of Respondent’s bad faith, that it is inconceivable that Respondent did not know of Complainant or Complainant’s Marks when registering the Disputed Domain Name. Complainant contends that the fact that the Disputed Domain Name consists solely of the terms “LA TIMES” combined with the generic terms “WINE” and “CLUB” is further evidence of “opportunistic bad faith.”
Additionally, Complainant contends that Respondent registered the Disputed Domain Name primarily for the purpose of disrupting Complainant’s business and that Respondent is using the Disputed Domain Name for commercial gain. In support thereof, Complainant states that Respondent’s bad faith is demonstrated by the fact that Respondent is luring consumers seeking genuine “LA Times” website(s) to Respondent’s website and then directing those consumers to non-affiliated third-party websites, presumably earning “click-through commissions” in the process. Moreover, Complainant contends that Respondent had actual or constructive notice of the Complainant’s Marks due to the fame of these marks.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a Domain Name should be cancelled or transferred:
(i) the domain name registered by the Respondent 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Here, Respondent provided no response, and the deadline for so doing expired on October 4, 2010. Accordingly, Respondent is in default. Given Respondent’s default, the Panel can infer that Complainant’s allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Nonetheless, Complainant retains the burden of proving the three requisite elements of Paragraph 4(a).
Complainant has provided sufficient evidence that it is the owner of valid and subsisting federal registrations for the LATIMES.COM mark and the LOS ANGELES TIMES mark, and that it has common law rights in the LA TIMES mark. The Disputed Domain Name is not identical to any of the Complainant’s Marks. Therefore, the first issue is whether the Disputed Domain Name and Complainant’s Marks are confusingly similar.
The Disputed Domain Name combines three elements: (1) the Complainant’s LA TIMES and/or its LATIMES.COM marks; (2) the terms “wine” and “club”, and (3) the suffix “.com”. The relevant comparison to be made is with the second-level portion of the domain name only (i.e., “latimeswineclub”), as it is well established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561.
Prior WIPO panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to Complainant’s registered mark. AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758 (finding <attelephone.com> confusingly similar to ATT); Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding <quixtarmortgage.com> legally identical to QUIXTAR).
Moreover, the addition of the terms “wine” and “club” as a suffix to the LA TIMES mark in the Disputed Domain Name does not mitigate the confusing similarity between the Disputed Domain Name and Complainant’s Marks. Both “wine” and “club” are descriptive. Consequently, the addition of these descriptive terms does not negate the confusing similarity between the Complainant’s Marks and the Disputed Domain Name. See Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363 (finding <dellaustralia.com> confusingly similar to DELL); Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046 (finding <telstraaustralia.net> confusingly similar to TELSTRA).
Furthermore, the proper approach is to look at the overall impression or idea created by the mark and compare the result with the domain name. See Yell Ltd. v. Ultimate Search, WIPO Case No. D2005-0091. Applying the test described in Yell, the overall impression of the trademark in the present case is that it is a reference to Complainant or to Complainant’s Marks. As the Disputed Domain Name uses the mark LA TIMES and/or LATIMES.COM, it is confusingly similar to Complainant’s Marks.
For all of the foregoing reasons, this Panel finds that the Disputed Domain Name, <latimeswineclub.com>, is confusingly similar to the Complainant’s Marks, specifically, Complainant’s LA TIMES and LATIMES.COM marks, in which the Complainant has established rights. Therefore, the Panel finds that the Complainant has proven the first element of the Policy.
Under the Policy, paragraph 4(c), legitimate interests in domain names may be demonstrated by showing that:
(i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services;
(ii) Respondent has been commonly known by the domain names, even if no trademark or service mark rights have been acquired; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
It is uncontested that Complainant has neither licensed nor otherwise authorized Respondent to use the “LA Times” name or any of Complainant’s Marks, or variations thereof, in connection with Respondent’s business or as part of the Disputed Domain Name. Complainant has thus made a prima facie showing that Respondent lacks rights to the Disputed Domain Name. Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261.
Complainant has provided uncontroverted evidence that the Respondent is using the Disputed Domain Name in a misleading manner to attract consumers looking for genuine “LA Times” goods and services, and then diverting them through links to third-party websites. Prior Panels have found that such offerings are not a bona fide offering of goods or services within the meaning of Paragraph 4(c)(i). See Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (finding no bona fide use where <pfizerforwomen.com> redirected to online pharmacy); see also Clad Holdings Corp. v. Kentech, Inc., WIPO Case No. D2006-0837 (“[n]or does the Respondent appear to be using the domain names in relation with a bona fide offering of goods or services … The Respondent only appears to provide links leading to websites unrelated to the Respondent where ALL-CLAD products or competing products may be purchased.”)
Moreover, Complainant has alleged, and the Respondent has not denied, that because the Respondent used its website to generate advertising revenue by directing consumers to numerous other websites, presumably earning “click-through commissions” in the process, Respondent was not making a legitimate noncommercial or fair use of the Disputed Domain Name.
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent lacks rights to, or legitimate interests in, the Disputed Domain Name. Therefore, the Panel finds that Complainant has proven the second element of the Policy.
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. One of the illustrations of bad faith, Policy Paragraph 4(b)(iv), occurs when Respondent attempts to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark(s) as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service offered on the Respondent’s website.
It is well established that using a domain name which incorporates a trademark to offer the products of competitors of the trademark owner is likely to cause confusion among consumers as to the source of products or to confusingly suggest sponsorship by the trademark owner. See Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249; Exel Oyj v. KH Trading, Inc., WIPO Case No. D2004-0433. Here, by placing links to various other websites on Respondent’s website, Respondent is using the Disputed Domain Name to attract—for commercial gain—Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s Marks. The Panel finds that this use is in bad faith.
Further, the Panel finds compelling circumstantial evidence that Respondent likely knew of Complainant and Complainant’s Mark when it registered the Disputed Domain Name. Complainant first used its LATIMES.COM mark in 1996, and first registered the mark in 1998; the registration for this mark has been in full force and effect for more than a decade. Additionally, Complainant first used its LOS ANGELES TIMES mark in 1928 and first registered the mark in 1974; the registration for this mark has been in full force and effect for more than three and a half decades. Further, Complainant has asserted, and Respondent has not refuted, that Complainant has well-established rights in the famous “LA TIMES” name and its LOS ANGLES TIMES and LATIMES.COM trademarks, the latter corresponding to a website that receives twenty million hits per month. Taken together, these facts make it likely that Respondent knew of Complainant’s marks and unlikely that Respondent innocently registered the Disputed Domain Name without such knowledge.
Respondent’s knowledge of Complainant and Complainant’s Marks is strong evidence of bad faith. Based on the foregoing, the Panel finds that Respondent registered the Disputed Domain Name in bad faith. See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 (“It defies common sense to believe that Respondent coincidentally selected these precise domain names without any knowledge of Complainant and its … trademarks.”); 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.”)
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent registered and is using the Disputed Domain Name in bad faith. Therefore, the Panel finds that Complainant has proven the third and final element of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <latimeswineclub.com> be transferred to the Complainant.
Michael A. Albert
Sole Panelist
Dated: October 26, 2010