The Complainants are The Hearst Foundation, Inc. of New York, New York, United States of America (“United States”) and Hearst Communications, Inc., New York, New York, United States, internally represented.
The Respondent is Name Redacted.1
The disputed domain name <hearsttfdn.org> is registered with eNom, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2016. On December 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent2 and contact information in the Complaint. The Center sent an email communication to the Complainant on December 12, 2016 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 amended Complaint on December 20, 2016.
The Center verified that the Complaint together with the amended 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 December 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2017.
The Center appointed William R. Towns as the sole panelist in this matter on January 19, 2017. 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.
The Complainant The Hearst Foundation, Inc. (“Hearst Foundation”) is a well-known philanthropic organization founded by William Randolph Hearst in 1945, active in the fields of culture, education, health and social services. The Complainant Hearst Communications, Inc. (“HCI”), a media information and services company, is a subsidiary of the Hearst Corporation, founded by William Randolph Hearst in 1887. Hearst Foundation and HCI are hereinafter collectively referred to as the “Complainants”.
Since as early as 1887, the “Hearst” name has been used by the Hearst Corporation, its subsidiaries and affiliated entities. The Complainant HCI is the owner of trademark registrations for the HEARST mark in Russia and China, registered on July 6, 2013 and May 28, 2016, respectively. Since its inception more than 70 years ago, the Complainant Hearst Foundation has made over 20,000 grants totaling more than USD one billion. The Hearst Foundation since 1997 has used the domain name <hearstfdn.org> with its website at “www.hearstfdn.org”.
The disputed domain name was registered on October 12, 2016. On October 13, 2016, the disputed domain name was used to send an email impersonating an employee of the Complainant Hearst Foundation. The email was directed to the Complainant’s custodian bank, and included an attached letter on Hearst Foundation letterhead with the forged signature of the Hearst Foundation’s Chief Investment Officer, requesting the transfer of USD 2 million from the Complainant’s cash account to a foreign account. The Hearst Foundation learned of this suspicious activity in time to prevent the fraudulent scheme from succeeding.
The Complainants submit that the disputed domain name is confusingly similar to the HEARST mark, in which the Complainants assert rights based on registration and use. The Complainants assert that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainants maintain that the Respondent obviously was aware of the Complainants and the Complainants’ HEARST mark when registering the disputed domain name, as evidenced by the Respondent’s use of the disputed domain name within a day of its registration with a fraudulent scheme seeking access to the Complainants’ bank accounts. In view of the foregoing, the Complainant contends that the Respondent registered and has used the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
Neither the Policy nor the Rules expressly provide for the consolidation of multiple complainants, and generally speak in singular terms of a “complainant” when referring to proceedings under the Policy. See MLB Advanced Media, The Phillies, Padres LP v. OreNet, Inc., WIPO Case No. D2009-0985. A number of previous UDRP panels nonetheless have concluded that consolidation of multiple complainants in a single complaint is permissible if the complainants have a truly common grievance against one or more respondents, and it would be equitable and procedurally efficient to do so. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.16 and decisions cited therein.
The Complainants are affiliated companies, and the Complaint makes out a common grievance against the Respondent – namely, the Respondent’s attempt to perpetrate a fraud using the HEARST mark, used by both Complainants. In the attendant circumstances, the Panel finds it would be both equitable and procedurally efficient to allow the Complainants to proceed with a single consolidated complaint.
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the 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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Panel finds that the disputed domain name <hearsttfdn.org> is confusingly similar to the Complainants’ HEARST mark, in which the Complainants have established rights through registration and use. In considering this issue, the first element of the Policy serves essentially as a standing requirement.3 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.
The Complainants’ HEARST mark is clearly recognizable in the disputed domain name. The additional letters “ttfdn” in the disputed domain name do not dispel the confusing similarity of the disputed domain name to the Complainants’ mark. Moreover, the Panel notes that the disputed domain name <hearsttfdn.org> would be identical to the Hearst Foundation’s domain name <hearstfdn.org> but for the addition of a second “t”.
Accordingly, the Panel finds the Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy.
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainants’ mark. The record reflects the use of the disputed domain name in furtherance of a fraudulent scheme targeting the Complainants.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the 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 has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
It is apparent that the Respondent was aware of the Complainants and the Complainants’ HEARST mark when registering the disputed domain name. The record before the Panel clearly reflects that the Respondent registered the disputed domain name with the aim of exploiting and profiting from the Complainants’ mark. The record evinces the Respondent’s use the disputed domain name within 24 hours of its registration to impersonate the Complainant in furtherance of attempted fraud and theft. Having regard to all of the relevant circumstances in this case, the Panel concludes that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and is not making a legitimate noncommercial or fair use of the disputed domain name. Further, there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainants have satisfied the requirements of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (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) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent was aware of the Complainants and had the HEARST mark when registering the disputed domain name. It is clear from the record that the Respondent’s motive in relation to the registration and use of the disputed domain name was to capitalize on the Complainants’ trademark rights by creating a likelihood of confusion with the Complainants’ mark, with the ultimate aim to profit from the perpetration of a fraudulent scheme.
Accordingly, the Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(iii) of 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 <hearsttfdn.org> be transferred to the Complainant The Hearst Foundation, Inc.4
William R. Towns
Sole Panelist
Date: February 2, 2017
1 As it appears, the Respondent has fraudulently used a name of the Complainant’s employees when registering the disputed domain name, The Panel has decided that no purpose can be served by including the named Respondent in this decision, and has therefore redacted the Respondent’s name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published due to exceptional circumstances. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.
2 The original Complaint was filed against a privacy shield through which the disputed domain name was registered.
3 See WIPO Overview 2.0, paragraph 1.2.
4 The Complainants’ jointly requested that the disputed domain name be transferred to The Hearst Foundation, Inc.