WIPO Domain Name Decision: D2008-0687

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CanWest Mediaworks Publications Inc. v. Laksh Internet Solutions Private Limited / SA c/o FP

Case No. D2008-0687

1. The Parties

The Complainant is CanWest Mediaworks Publications Inc., Don Mills, Canada, represented by Baker & McKenzie, Canada.

The Respondent is Laksh Internet Solutions Private Limited, Mumbai, India / SA c/o FP, Los Angeles, United States of America.

2. The Domain Name and Registrar

The disputed domain name <theedmontonjournal.com> is registered with Lead Networks Domains Pvt. Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2008. On May 2, 2008, May 5, 2008, May 7, 2008, May 8, 2008 May 9, 2008, May 13, 2008, May 14, 2008 and May 15, 2008, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. repeated requests for registrar verification in connection with the domain name at issue. On May 15, 2008, Lead Networks Domains Pvt. Ltd. transmitted by email to the Center its verification response naming the Respondent as Laksh Internet Solutions Private Limited. This was not the Respondent named in the Complaint, which was SA c/o FP. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 20, 2008. 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”), 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, sending the communications to both SA c/o FP and Laksh Internet Solutions Private Limited in accordance with the respective contact details provided, and the proceeding commenced on May 22, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 11, 2008. No Response was received. Accordingly, the Center notified the Respondent’s default on June 12, 2008, sending the communications to both SA c/o FP and Laksh Internet Solutions Private Limited.

The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on June 20, 2008. 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 is the publisher of the “Edmonton Journal” daily newspaper, which is one of the largest and most popular newspapers in the Province of Alberta, Canada. It has been published since 1903 and is Edmonton’s oldest and longest running daily newspaper, with a total weekly circulation in excess of 850,000. The Complainant owns the registered trademark EDMONTON JOURNAL (Registration No. TMA584829), which was registered in Canada on July 9, 2003, based on, among other things, use in association with newspapers in Edmonton, Alberta, Canada since at least as early as October 2, 1911.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has exclusive rights in the registered trademark EDMONTON JOURNAL. The Complainant also owns the registration for the domain name <edmontonjournal.com>. This is an online edition of the “Edmonton Journal” newspaper that has received, for example, more than 269,000 unique visitors each month between September 2007 and February 2008.

The Complainant contends that the disputed domain name <theedmontonjournal.com> is confusingly similar or essentially identical to its trademark EDMONTON JOURNAL. The gTLD identifier “.com” is of no significance in the Internet context. Neither words such as “the” nor punctuation issues such as spacing detract from confusing similarity.

It is contended that the Respondent has no rights or legitimate interest in the disputed domain name. The Respondent cannot claim in the terms of paragraph 4(c) of the Policy to have been commonly known by a name corresponding to the domain name, made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services, or made a legitimate non-commercial or fair use of it. Such use as the Respondent has made of the domain name for advertising purposes has been commercial use taking unfair advantage of the Complainant’s trademark. The Complainant has not authorised the Respondent to make use of its trademark.

The Complainant contends that the disputed domain name was registered and is used in bad faith. In particular, it resolves to a website, that may be a parking site, from which there are links to other or competing business categories. It may reasonably be inferred that this is done for commercial gain and that some Internet users will be misled to the Respondent’s website by initial interest confusion with the Complainant’s trademark.

The Complainant further contends as evidence of bad faith that the Respondent has previously concealed its address behind a privacy service, that cease and desist letters sent by email and courier have not elicited any response through the purported contact details of the Respondent as they then were, and that attempts to communicate with the Respondent have precipitated cyberflight.

Several WIPO domain name cases, many of them concerning newspaper trademarks, are cited in support of the Complainant’s case.

The Complainant requests that the disputed domain name be transferred.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the Respondent is required:

“to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable provider, in compliance with the Rules of Procedure, that:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.”

The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.

Identity of Respondent

The words “you” and “your” in paragraph 4(a) of the Policy refer to the Respondent. The Respondent is defined in paragraph 1 of the Rules as follows: “Respondent means the holder of a domain-name registration against which a complaint is initiated”.

Shortly after the Complaint was received, the Center made the usual enquiry to the named registrar asking for verification of the registrant details. The registrar, some 13 days later, informed the Center of registrant details different from those provided by the Complainant.

Accordingly the Center sent to the Complainant a Deficiency Notice, providing new registrant details and asking for the Complaint to be amended. The amended Complaint named the Respondent as before (SA c/o FP) and added: “Since the illegitimate domain name transfer which occurred after the Complaint was initiated, the Registrant is now listed in the WHOIS database as follows: LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, contact@lakshinternetservices.com, Room No.30, Fatima Bibi Chawl, Gulshan Nagar, Behram Baug, Jogeshwari (W), Mumbai, Maharashtra, 400102, IN. Tel. +91.9322160169”. The Complainant also submitted that it was correct for it to name the Respondent and the place of Mutual Jurisdiction as those prevailing at the time the Complaint was initially filed.

Relevant references in the Rules include:

“1. Definitions

Mutual Jurisdiction means a court jurisdiction at the location of either (a) the principal office of the Registrar (provided the domain-name holder has submitted in its Registration Agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) or (b) the domain-name holder's address as shown for the registration of the domain name in Registrar's Whois database at the time the complaint is submitted to the Provider.”

and:

“3. The Complaint

(b) The complaint shall be submitted in hard copy and (except to the extent not available for annexes) in electronic form and shall:

(vii) Identify the Registrar(s) with whom the domain name(s) is/are registered at the time the complaint is filed;

(xiii) State that Complainant will submit, with respect to any challenges to a decision in the administrative proceeding canceling or transferring the domain name, to the jurisdiction of the courts in at least one specified Mutual Jurisdiction;”

The Panel is satisfied that the Center, by sending communications to both the original and subsequent addresses made available through the registrar, has at the least fulfilled its responsibility under paragraph 2 of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon the Respondent. The Panel is also satisfied that the place of Mutual Jurisdiction is California, USA, in accordance with the Respondent’s stated address at the time when the Complaint was submitted to the Center.

Paragraph 8(a) of the Policy states that a registrant may not transfer a domain name during a pending administrative proceeding. The question of which date marks the start of a proceeding (the initial filing or the Notification of Complaint and Commencement of Administrative Proceeding) was addressed as long ago as 2000 in British Broadcasting Corporation v. Data Art Corporation / Stoneybrook, WIPO Case No. D2000-0683, in which the Panelist said:

“The question then may be asked whether a proceeding is considered pending following its initiation by the filing of the complaint or only following commencement of the proceeding in the formal sense, as when the service provider, satisfied that the complaint meets all formal requirements of the Policy and Rules, notifies the complaint and the commencement of the administrative proceeding to the respondent.

To interpret section 8(a) of the Policy in such a way as to permit transfers of registration after notice of the complaint to the respondent but before official commencement of the proceedings by way of notification from the provider would not do justice to complainants who have initiated complaints in accordance with the Policy and the Rules. Moreover such an interpretation would appear to permit, if not encourage the phenomenon cyberflying, where a registrant of a domain name, when named as the respondent in a domain name dispute case, systematically transfers the domain name to a different registrant to disrupt the proceeding.”

The Panel agrees that for the purposes of paragraph 8(a) of the Policy, a proceeding may be considered to be pending “following its initiation by the filing of the complaint”. Significant dates are that on May 1, 2008 the Complaint was sent by the Complainant to (1) the Center, (2) the Respondent at the presumably fictitious email address “none@none.com”, and (3) the email address of the registrar in India (which the records show was a good address). The Center’s first notification to the registrar was on May 2, 2008. The registrant was SA c/o FP according to the WhoIs on May 6, 2008, but was stated to be Laksh Internet Solutions Private Limited when the registrar eventually responded on May 15, 2008. Thus the period of critical interest is from May 2, 2008, when the registrar was notified, through May 6, 2008 when the registrant had not changed, to May 15, 2008, when the registrar named a different registrant.

It has not escaped the Panel’s notice that Laksh Internet Solutions Private Limited, according to the WhoIs submitted, owns 20,431 other domain names and may have more than a little corporate knowledge of registration techniques. Having regard to all the circumstances, the Panel finds on the balance of probabilities that the late change in registrant details, between 5 and 14 days after the filing of the Complaint and in the period between May 6, 2008 and May 15, 2008, whilst the Center was awaiting the registrar’s reply, was a device by the Respondent to evade proceedings, constituting cyberflight.

The Panel expresses grave concern over the delay of 13 days through which the registrar did not reply to repeated requests from the Center for verification and locking of the registration, during which time the registrant was able to change its recorded details. Since this could form the basis of an issue between ICANN and the registrar, beyond the remit of this Panel, it is recommended that the facts of this case should be communicated to ICANN for its attention.

A. Identical or Confusingly Similar

The Complainant has proven by documentary evidence that it has since July 9, 2003 been the owner of the registered trademark EDMONTON JOURNAL. The Panel accepts that the Complainant also has long standing common law rights in the same trademark founded upon extensive usage. The disputed domain name is <theedmontonjournal.com>. In the analysis of the domain name in terms of confusing similarity with a trademark under the Policy, the gTLD discriminator such as “.com” may be disregarded as an inevitable part of a domain name. The presence of spaces may be disregarded since Internet domain names cannot contain them. The prefix word “the” is found, on the facts, not to be a point of distinction between the trademark and the domain name, and indeed may reflect the way in which the name of the newspaper is generally mentioned. The Panel finds the disputed domain name to be confusingly similar to the trademark EDMONTON JOURNAL in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant proceeds to assert a prima facie case to this effect by certifying that it has not authorized the Respondent to use its trademark and furthermore that the Respondent cannot claim in the terms of paragraph 4(c) of the Policy to have been commonly known by a name corresponding to the domain name, made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services, or made a legitimate non-commercial or fair use of it. Such use as the Respondent has made of the domain name for advertising purposes has been commercial use taking unfair advantage of the Complainant’s trademark.

The Respondent has not refuted the Complainant’s assertions either in the terms of paragraph 4(c) of the Policy or otherwise, and has not replied at all. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant must prove that the disputed domain name was registered and is used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

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

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.”

The Complainant alleges bad faith registration and use of the domain name on several grounds.

A screen print of the website corresponding to the disputed domain name contains token content including a search facility. With reference to paragraph 4(b)(iv) of the Policy, there can be no reasonable purpose in displaying the website other than to attract by deception users who seek a website related to the “Edmonton Journal”. The Complainant operates its legitimate website at the address <edmontonjournal.com>. It can be anticipated that a proportion of intending users will wrongly guess or wrongly remember the Complainant’s domain name and arrive at the Respondent’s website, or may be directed there by erroneous word of mouth or by search techniques. The Respondent has traded on the Complainant’s well known name and goodwill and a proportion of users so misdirected are likely to be confused initially into thinking that the Respondent’s website is in some way endorsed by the Complainant. It is not plausible that the Respondent has set up this diversion other than for commercial gain, the standard and likely technique being to collect revenue from advertisers at sites to which users are redirected by links or through the search engine provided. The Panel finds bad faith registration and use proven in the terms of paragraph 4(a)(iii) of the Policy.

The Complainant’s trademark is well known in context and it is clear from the flavour of the Respondent’s website that the Respondent knew that it was a newspaper in Edmonton. The registration of a well known trademark as a domain name by a respondent who must have been aware of it and has no conceivable rights to do so is in and of itself evidence of bad faith (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).

As discussed above, the registration details changed shortly after the filing of this proceeding. The Panel draws the conclusion on balance that the Respondent has deliberately tried to evade proceedings by changing its registration and contact details, or by what is known as cyberflight, thereby constituting further evidence of bad faith registration and use.

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 <theedmontonjournal.com> be transferred to the Complainant.

Dr. Clive N.A. Trotman
Sole Panelist

Dated: July 4, 2008