WIPO Domain Name Decision: D2005-1322

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Media West-DMR, Inc., Media West-GSI, Inc., Media West-INI, Inc., Media West-PNI, Inc., Des Moines Register and Tribune Co., Gannett Satellite Information Network, Inc., Indiana Newspapers, Inc., Phoenix Newspapers, Inc., Gannett Co. Inc. v. Phil Nagy

Case No. D2005-1322

1. The Parties

The Complainants are Media West-DMR, Inc., Media West-GSI, Inc., Media West-INI, Inc., Media West-PNI, Inc., Des Moines Register and Tribune Co., Gannett Satellite Information Network, Inc., Indiana Newspapers, Inc., Phoenix Newspapers, Inc., Gannett Co. Inc., Reno, Nevada United States of America, represented by Dow, Lohnes & Albertson, PLLC, United States of America.

The Respondent is Phil Nagy, Sabana Sur, Costa Rica.

2. The Domain Names and Registrar

<arizonarepublicdelivery.com>
<arizonarepublicsubscription.com>
<cincinnatienquirerdelivery.com>
<cincinnatienquirersubscription.com>
<desmoinesregisterdelivery.com>
<desmoinesregistersubscription.com>
<indianapolisstarnewsdelivery.com>
<indianapolisstarnewssubscription.com>
<myusatodaysubscription.com>
<orderarizonarepublic.com>
<ordercincinnatienquirer.com>
<orderdesmoinesregister.com>
<orderindianapolisstarnews.com>
<ordertennessean.com>
<orderthearizonarepublic.com>
<orderthecincinnatienquirer.com>
<orderthedesmoinesregister.com>
<ordertheindianapolisstarnews.com>
<orderthetennessean.com>
<ordertheusatoday.com>
<orderusatoday.com>
<theusatodaysubscription.com>
<usatodaydelivery.com>
<usatodaysubscription.net>
<usatodaysubscriptiononline.com>

are registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2005. The Respondent named in the Complaint was OrderTheNewspaper, aka PaperBoy LLC. On December 22, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On the same date, Go Daddy Software transmitted by email to the Center its verification response indicating that the registrant of the domain names was Phil Nagy. Mr. Nagy had been the technical contact for OrderTheNewspaper, aka PaperBoy LLC, which had been the registrant of record (per the Whois database) until at least November 15, 2005.

On December 23, 2005, the Complainants filed an amended complaint to correct a date in the original complaint.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed a second amendment to the Complaint on December 29, 2005. The second amendment amends the Respondent to Phil Nagy and demonstrates the close links between the Respondent named in the initial complaint and the Respondent in the Complaint as amended, Phil Nagy.

The Center verified that the Complaint together with the two amendments to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 January 4, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 26, 2006.

The Center appointed Daniel J. Gervais as the Sole Panelist in this matter on February 1, 2006. 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 Complainants, a group of related corporate entities, are licensors and licensees of a number of trademarks used in relation with newspapers and other online and paper publications, including USA Today, The Des Moines Register, The Cincinnati Enquirer, The Indianapolis Star, The Arizona Republic and The Tennessean. The names (& related designs) of the above publications are registered as trademarks at the United States Patent and Trademark Office. The Complainant Gannet Co., Inc., is the ultimate parent of all the other Complainants.

5. Parties’ Contentions

A. Complainants

The Complainants submit that it is legitimate to proceed in a single proceeding in spite of the fact that there are multiple marks, multiple complainants and multiple domain names involved. They refer to previous decisions under the Policy including NFL Properties, Inc. et al v. Rusty Rahe, WIPO Case No. D2000-0128 and Mucos Emulsions, GmbH and Marlyn Nutraceuticals, Inc. v. Esex.org and Kim Taeho, WIPO Case No. D2000-1513.

The Complainants submit that domain names are all identical or confusingly similar with the Complainants’ marks. The domain names incorporate the marks or in some cases the distinctive portion thereof (i.e. removing generic words such “the”) and/or adding words such as “order” or “delivery”, which, far from reducing the likelihood of confusion, may increase it and mislead Internet users into thinking that they may be able to subscribe to or reach the online version of the Complainants’ various publications when it fact they are redirected to sites containing various forms of advertising not belonging to or operated by the Complainants and/or to pages containing an “under construction” message.

The Respondent has no right or legitimate interest in the domain names. He is not known by any of the domain names nor did he make a bona fide offering or demonstrably prepare to make such an offering.

The Respondent registered and used the domain names in bad faith to confuse and mislead Internet users and to increase traffic to its sites for commercial gain.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

As to the multiplicity of marks, domains and complainants, this Panel finds that this is a proper case to bring a single proceeding under the Policy. When related complainants are seeking redress against a single respondent (or related entities) and their complaint is based on the same set of facts and legal basis, it seems fair to allow them to proceed in this way.

Turning to the substantive part of the analysis, the Panel recalls that, in accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name the Complainants must prove that each of the three following elements are satisfied:

(1) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.1);

(2) The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.2); and

(3) The domain name has been registered and is being used in bad faith (see below, section 6.3).

Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainants.

Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.

6.1 Is the domain name Identical or Confusingly Similar to a Trademark in which Complainant has Rights?

This question raises two issues: (1) do the Complainants have rights in a trademark or service mark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.

As to the first question, the record confirms that the Complainants have used and registered in the United States inter alia the following marks: USA TODAY, THE DES MOINES REGISTER, THE CINCINNATI EQUIRER, THE INDIANAPOLIS STAR, THE ARIZONA REPUBLIC and THE TENNESSEAN. The Panel finds that the Complainants have rights in those marks. As will be made clear under point 7 below, it is unnecessary for the purposes of this proceeding to determine which Complainant owns which mark.

As to the second question, the Panel finds that the domain names are confusingly similar to these marks. As a rule, when a domain name wholly incorporates a complainant’s mark and only adds a generic word, that is sufficient to establish confusing similarity for purposes of the Policy. Confusion is only heightened when the generic word added by a respondent is descriptive of a complainant’s goods or services marketed in relation to the mark. (see, e.g., Volvo Trademark Holding AB v. Lost in Space, SA, WIPO Case No. D2002-0445; Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo, WIPO Case No. D2001-0020; and Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH, WIPO Case No. D2001-0026).

6.2 Does the Respondent Have Rights or Legitimate Interests in the domain name?

The Complainants submit that the Respondent has no rights or legitimate interests in the domain name based on Complainants’ prior use of the above-mentioned marks. The Respondent, whom did not file a Response, did not dispute this contention nor provide information as to its interests to use the domain name.

According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

There are no elements showing that the Respondent is or was commonly known by any of the domain names. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of any of the domain names. On the contrary, the uncontradicted evidence submitted by the Complainants points to cybersquatting by the Respondent.

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the domain names.

6.3 Was the domain name Registered And Used in Bad Faith?

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product.

There is ample evidence of the situation described in paragraph (iv). The relevant facts are mentioned above.

In all likelihood, the Respondent registered the domain name in bad faith. Putting aside the relative fame attached to the Complainants’ marks, the domain names are composed of the Complainants’ marks (or, in some cases, only the distinctive part thereof) to which is added the generic terms “order” or “delivery”, which evoke access to services offered by the Complainants and associated with its marks. It is reasonable to conclude that only someone who was familiar with the marks and what they stand for would have gone through the trouble of registering the domain names.

In sum, it is inconceivable that Respondent chose to include the Complainants’ marks in the domain names by accident. In addition, it is difficult to conceive of any plausible actual or contemplated active use of the domain names by the Respondent that would not be illegitimate, such as by being passing off, an infringement of consumer protection legislation, and/or an infringement of the Complainants’ rights under trademark law.

The Panel finds for the Complainants on this third element of the test.

7. Decision

The Complainants as a group have requested that, if successful in this proceeding, all domain names be transferred to Complainant Gannett Co., Inc., the ultimate parent company of all the Complainants. 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 names

be transferred to the Complainant Gannett Co., Inc.

Daniel J. Gervais
Sole Panelist

Dated: February 6, 2006