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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Newsmax Media Inc. v. WhoisGuard Protected / Dave Lister

Case No. D2019-1151

1. The Parties

The Complainant is Newsmax Media Inc., United States of America (“United States”), represented by SafeNames Ltd., United Kingdom.

The Respondent is WhoisGuard Protected, Panama / Dave Lister, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <newsmaxi.com> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2019. On May 17, 2019, 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 Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 20, 2019, 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 May 20, 2019.

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 May 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 10, 2019. The Center received several informal communications from the Respondent, but no formal Response. Accordingly, the Center proceeded to the Panel Appointment on June 11, 2019.

The Center appointed John Swinson as the sole panelist in this matter on June 18, 2019. 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 Newsmax Media Inc., a company incorporated in the United States. According to the Complaint, the Complainant is a digital publishing company and operator of the newspaper “Newsmax”. The Complainant was founded in 1998.

The Complainant owns a number of trade marks for NEWSMAX including United States registered trade mark number 3177090, registered on November 28, 2006 (the “Trade Mark”). The Complainant is also the owner of a registered domain name incorporating the Trade Mark, being <newsmax.com>, registered on July 18, 1998.

The Respondent is Dave Lister, an individual from the United Kingdom. No formal response was received from the Respondent and therefore little information is known about the Respondent. The Disputed Domain Name was registered on October 19, 2016. The Disputed Domain Name does not currently resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions.

Identical or Confusingly Similar

The Disputed Domain Name is confusingly similar to the Trade Mark. The mere addition of one letter does not negate the confusing similarity between the Disputed Domain Name and the Trade Mark.

Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in the Disputed Domain Name because:

- The Respondent is not commonly known by the term NEWSMAX.

- There is no prior business relationship between the parties. The Complainant has not authorised the Respondent to use the Trade Mark in the Disputed Domain Name.

- The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services as the web site previously offered similar services to that of the Complainant, thereby confusing consumers.

- The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name as the Respondent offered similar services to the Complainant as well as advertising on the site. It is reasonable to assume that the Respondent has been making a profit from the website which offers news services and advertising.

Registered and Used in Bad Faith

The Complainant’s earliest trade mark registration predates the creation date of the Disputed Domain Name by 10 years. It is implausible that the Respondent would have no knowledge of the Complainant’s Trade Mark. This is evident by the fact that the Respondent has created a website bearing such similarity to the Complainant’s website.

The Complainant also sent a cease and desist letter to the Respondent on April 8, 2019. The Respondent replied stating that he established the site in memory of his late wife “Freya Maxine” (“Maxi” being a nickname). Irrespective of the validity of this submission, the Respondent has used the Complainant’s Trade Mark and operated a website similar to the Complainant’s which is evidence of bad faith.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

The onus of proving these elements is on the Complainant even though the Respondent failed to reply to the Complainant’s contentions.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.

Generally, the test for identity or confusing similarity involves a side-by-side comparison of the domain name and the trade mark to assess whether the trade mark is recognizable within the domain name (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

The Disputed Domain Name incorporates the entirety of the Trade Mark, with the additions of the letter “i”. A domain name which consists of a common, obvious, or intentional misspelling of a trade mark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.

The Complainant succeeds on the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

The Panel considers the Complainant has made out a prima facie case. This finding is based on the following:

- The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. The Complainant has provided evidence that the website at the Disputed Domain Name has previously offered similar services to that of the Complainant, thereby confusing consumers. Without any response to the contrary, the Panel finds it is likely that the Respondent has used the Disputed Domain Name in order to trade off the reputation of the Complainant. Use that intentionally trades on the fame of another cannot constitute a bona fide offering of goods and/or services (see for example, Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847).

- The Panel accepts the Complainant’s submission that the Complainant has not authorised or otherwise given the Respondent permission to use the Trade Mark in the Disputed Domain Name.

- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or has registered or common law trade mark rights in relation to this name.

- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. The website at the Disputed Domain Name currently resolves to a parking page. However, the Complainant has submitted evidence that the Disputed Domain Name previously resolved to a website which provided services similar to the Complainant. The Panel accepts the Complainant’s submission that it is reasonable to infer that the Respondent has obtained commercial gain from the website.

The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith

The Respondent registered the Disputed Domain Name on October 19, 2016. This is 10 years after the Complainant registered the Trade Mark and 18 years after the Complainant commenced operating its business under the name NEWSMAX.

Previous UDRP panels have found that where the reputation of a complainant in a given mark is significant and the mark has strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012‑1909 and cases cited therein). Given the Complainant’s reputation, and the content displayed on the Respondent’s website, the Panel finds it highly unlikely that the Respondent was not aware of the Trade Mark at the time the Respondent registered the Disputed Domain Name.

The Complainant also sent a cease and desist letter to the Respondent on April 8, 2019. The Respondent replied stating that he established the site in memory of his late wife “Freya Maxine” (“Maxi” being a nickname). The Respondent stated that there is no similarity between “news maxi” and “news max”. The Panel does not find this submission convincing and finds that there is a high likelihood that the Respondent registered the Disputed Domain Name due to its similarity with the Complainant’s Trade Mark and website.

This is reinforced by the Respondent’s use of the website at the Disputed Domain Name. Whilst the website at the Disputed Domain Name does not currently resolve to an active website, the Complainant has provided evidence that the website at the Disputed Domain Name was previously used to provide news services similar to those offered by the Complainant. Given the high similarity between the Trade Mark and the Disputed Domain Name, and the similarity in services offered, the Panel considers that the Respondent has intentionally attempted to attract, for commercial gain, users to its website by creating a likelihood of confusion with the Trade Mark, which is evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy. The fact that the Disputed Domain Name currently resolves to a parking page is further evidence of bad faith.

In light of the above, the Panel finds that the Complainant has succeeded on the third element of the Policy.

7. Decision

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 <newsmaxi.com> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: July 2, 2019

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