WIPO Domain Name Decision: D2007-0169

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Media West-GMP, Inc. and Gannett Satellite Information Network, Inc. v. Registrant [624819] Services LLC

Case No. D2007-0169

1. The Parties

The Complainants are Media West-GMP, Inc. of Nevada, United States of America, and Gannett Satellite Information Network, Inc. of Virginia, United States of America, represented by Abelman Frayne & Schwab, United States of America.

The Respondent is Registrant [624819] Services LLC of the Commonwealth of Dominica.

2. The Domain Name and Registrar

The disputed domain name <thenewarkadvocate.com> is registered with Moniker Online Services, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on February 7, 2007, and in hard copy on February 9, 2007, naming the respondent as Moniker Privacy Services of Florida, United States of America. The Center transmitted a request for registrar verification by email to the Registrar on February 9, 2007. The Registrar replied by email on February 16, 2007, confirming that it had received the Complaint, that the disputed domain name was registered with it, that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the registration, that the disputed domain name would remain on registrar lock during this proceeding, and that the registration agreement was in English and contained a submission to the jurisdiction at the location of its principal office. However, the Registrar identified the registrant of the disputed domain name as Registrant [624819] Services LLC of Dominica and provided the full contact details in respect of the registration on its Whois database.

The Center accordingly notified the Complainants by email of February 20, 2007 of the registrant and its contact details provided by the Registrar in its email of February 16, 2002. The Complainants subsequently submitted an amendment to the complaint by email on February 21, 2007, naming the respondent as Registrant [624819] Services LLC and providing contact details as previously advised by the Registrar.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of 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 proceeding commenced on February 27, 2007. The notification appears to have been delivered successfully by email and courier to the registrant contact details provided by the Registrar. In accordance with the Rules, paragraph 5(a), the due date for Response was March 19, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2007.

The Center appointed Jonathan Turner as the sole panelist in this matter on March 30, 2007. 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.

Having reviewed the file, the Panel is satisfied that the Complaint, together with the amendment to the Complaint, complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.

The Panel further notes that the Registrar has identified “Registrant [624819} Services LLC” as the registered owner of the disputed domain name, that the Complainant has named that entity as the Respondent by its amendment to the Complaint, and that “Moniker Privacy Services” is simply a privacy name registration service. In these circumstances, the Panel will treat Registrant [624819] Services LLC as the Respondent, in line with recent panel decisions such as Xtraplus Corporation v. Flawless Computers, WIPO Case No. D2007-0070.

4. Factual Background

The first Complainant and its predecessors have used the name “The Advocate” as the title of a local newspaper in Licking County, Ohio, United States of America, since at least 1821. The county seat of Licking County is Newark, Ohio. The newspaper is currently published in print and online editions by the second Complainant under an exclusive licence granted by the first Complainant as of July 21, 2000.

The online edition has been published on a website at “www.newarkadvocate.com” since January 2002. The home page of this website carries a banner which gives prominence to the name “Newark Advocate”. The first Complainant owns the domain name <newarkadvocate.com>, which was registered on June 10, 1998.

The Complainants spent over US $486,000 on promoting the newspaper between 2002 and 2006. The website at “www.newarkadvocate.com” has received nearly 35 million visits since September, 2004.

The disputed domain name was registered on September 18, 2004. On December 16, 2005, the registrant of the disputed domain name was Forum LLC and the domain servers were ns1.hitfarm.com and ns2.hitfarm.com. On January 31, 2007, the registrant was listed as Moniker Online Services, Inc., with the same domain servers. On February 16, 2007, the registrant was listed as Registrant [624819] Services LLC.

The disputed domain name is currently directed to a web page with a main heading “Welcome to thenewarkadvocate.com”, a by-line “For resources and information on Newark advocate and Real Estate Network”, and a sub-heading “Sponsored Results for NEWARK ADVOCATE”, followed by various links to other websites.

5. Parties’ Contentions

A. Complainants

The Complainants contend that they have unregistered rights in the marks THE ADVOCATE and NEWARK ADVOCATE as a result of longstanding and extensive use of these marks by themselves and their predecessors, and that the disputed domain name is identical or confusingly similar to these marks. The Complainants further contend that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that it was registered and is being used in bad faith.

In particular, the Complainants allege that the disputed domain name is being used to attract internet users to the Respondent’s website by intentionally creating a likelihood of confusion with the Complainants’ marks in order to obtain commercial gain in the form of click-through commissions through the sponsored links on it.

The Complainants also allege that Forum LLC remains the real owner of the disputed domain name, and that this company has engaged in a pattern of registering domain names incorporating well-known marks and has been regularly found to have registered and used domain names in bad faith under the Policy.

The Complainants request a decision that the disputed domain be transferred to the First Complainant, Media West-GMP, Inc.

B. Respondent

As noted above, the Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainants must prove (A) that the disputed domain name is identical or confusingly similar to a mark in which they have rights; (B) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (C) that the disputed domain name has been registered and is being used in bad faith.

Each of these requirements will be considered in turn:

A. Identical or Confusingly Similar to Mark in which Complainants have Rights

The Panel finds that the Complainants have rights in the mark NETWARK ADVOCATE” as a result of the longstanding use by them and their predecessors of the title “The Advocate” for a local newspaper in the vicinity of Newark, Licking County, Ohio, coupled with their more recent publication of an online edition of the newspaper under a banner emphasizing the words “Newark Advocate” at the web address “www.newarkadvocate.com”.

The Panel further finds that the disputed domain name is confusingly similar to this mark, from which it differs only in the addition of the definite article and the generic .com suffix. The Panel considers that internet users are likely to assume that the disputed domain name belongs to the Complainants and that a website located by this address is connected with the Complainants’ newspaper.

The Panel concludes that the first requirement of the Policy is satisfied.

B. Rights or Legitimate Interests of Respondent

The undisputed evidence of the Complainants is that the only use made by the Respondent of the domain name or of any corresponding name has been its use of the domain name for the web page described in section 4 above.

In the view of the Panel, this use does not constitute a bona fide offering of goods or services so as to confer rights or legitimate interests within the meaning of the Policy. Nor is it legitimate non-commercial or fair use. On the contrary, the Panel considers that it is a use in bad faith seeking to profit from confusion with the Complainants’ mark by diverting internet users through sponsored links to other traders’ offerings.

The Complainants’ evidence that the Respondent is not commonly known by any corresponding name is also undisputed.

In all the circumstances, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Panel is satisfied by the undisputed evidence that the Respondent is using the disputed domain name intentionally to attract internet users to its website through confusion with the Complainants’ NETWARK ADVOCATE mark in order to obtain commercial gain in the form of click-through commissions when they are diverted to other traders’ websites.

Furthermore, the Panel considers it highly likely that the disputed domain name was originally registered in September, 2004, with the same and/or some other bad faith intent. The Complainants were already publishing their online edition at “www.newarkadvocate.com” by this date and there seems to be no plausible reason for a third party to register the disputed domain name other than to cause confusion with the Complainants’ website.

This inference is reinforced by the evidence that the disputed domain name was registered by Forum LLC which has been found to have registered domain names in bad faith on a number of previous occasions.

In any case, the disputed domain name has recently been registered in the name of the Respondent, evidently with the intent of using it in bad faith as described above.

The Panel concludes that the disputed domain name was registered and is being used in bad faith and accordingly that the third requirement of the Policy is satisfied.

7. Decision

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, <thenewarkadvocate.com>, be transferred to the First Complainant, Media West-GMP, Inc.

Jonathan Turner
Sole Panelist

Dated: April 11, 2007