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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Media West-ATP, Inc. and Times News Group, Inc. v. Domain For Sale, Appraised at $25,000! a/k/a Brian Thomas

Case No. D2006-0134

 

1. The Parties

The Complainants are Media West-ATP, Inc. and Times News Group, Inc., Nevada , United States of America, represented by Dow, Lohnes & Albertson, PLLC, United States of America.

The Respondent is Domain For Sale, Appraised at $25,000!, a/k/a Brian Thomas, Berkley Springs, West Virginia, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <armytimes.net> is registered with eNom, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2006. On February 2, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On February 3, 2006, eNom transmitted by email to the Center its verification response confirming that the Domain Name was placed under a locked status to prevent any transfers or changes to the registration agreement. eNom also confirmed that any correspondence concerning this case must be in English, that the registrant has consented to the jurisdiction of federal and state courts in Kings County, Washington, and that current contact information for the <armytimes.net> Domain Name can be found using http://whois.enom.com. The Center verified that 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 February 10, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 2, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on March 6, 2006.

The Center appointed Lynda M. Braun as the sole panelist in this matter on March 13, 2006. The Sole Panelist finds that the Administrative Panel (hereinafter referred to as the “Panel”) 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 Media West-ATP, Inc., a company incorporated under the laws of Delaware with a principal place of business in Reno, Nevada, is the owner of a United States federal registration for the trademark ARMY TIMES (U.S. Reg. No. 386,273). This registration was obtained on April 1, 1941, and was renewed for a term of twenty years from April 1, 2001. The Complainant Media West-ATP, Inc. licensed the mark ARMY TIMES, pursuant to a license agreement dated December 29, 1997, to the Complainant Times News Group, Inc. (known at that time and until December 1, 2000 as Army Times Publishing Company). The Complainant Times News Group, Inc., a company incorporated under the laws of Delaware with a principal place of business in Springfield, Virginia, uses the mark ARMY TIMES in connection with a print publication “Army Times” and an online publication located on its website “www.armytimes.com.”. The “Army Times” newspaper services U.S. Army personnel and has been published by the Complainants or their predecessors in interest continuously since at least as early as 1940. The online version of the “Army Times” publication located on the website “www.armytimes.com” has been in continuous operation since 1994. The domain name <armytimes.com> was registered by the Complainant Media West-ATP, Inc. on November 3, 1994.

The Respondent is an individual with a post office box located in Berkley Springs, West Virginia. The Respondent registered the Domain Name <armytimes.net> on May 20, 2003.

On November 14, 2005, counsel for the Complainants wrote to the Respondent, notifying the Respondent that the Complainants are the owners of the ARMY TIMES mark and that the Respondent’s use of the <armytimes.net> Domain Name violates the Complainants’ rights in the mark. Counsel for the Complainants demanded that the Respondent cease all use of the ARMY TIMES mark, including the <armytimes.net> Domain Name, and that the Respondent transfer the <armytimes.net> Domain Name to the Complainants.

The Complainants received no response to the November 14, 2005 letter.

The Respondent subsequently updated the contact information in the WHOIS database for the Domain Name <armytimes.net> to show the name of the registrant as Brian Thomas, with an email address, mail address and facsimile number identical to the previous WHOIS listing.

Currently, users entering the <armytimes.net> Domain Name are transported to a website indicating that the disputed Domain Name is for sale and linking interested users to a website stating “This domain may be for sale!.”

 

5. Parties’ Contentions

A. Complainants

The Complainants claim that the Army Times newspaper is a widely-read publication that provides to U.S. Army personnel news and analysis as well as community information and lifestyle features of interest to Army personnel and their families. The Complainants also claim that the online version of the Army Times newspaper, located on the website “www.armytimes.com” is accessed widely from locations throughout the United States and the world. The Complainants allege that the Army Times newspaper and related website are extremely successful and well known in the military community throughout the United States and around the globe.

The Complainants further claim that they have spent millions of dollars, including $13 million from January 2005 through November 2005 alone, to promote the ARMY TIMES mark, newspaper and website. The Complainants assert that, as a result of their extensive use and promotion of the ARMY TIMES mark, they have developed extremely valuable goodwill and an outstanding reputation. The Complainants claim that their ARMY TIMES mark is well known and an indication of high quality and origin associated exclusively with the Complainants, and that the Complainants have well-established rights in the ARMY TIMES mark.

The Complainants assert that the Respondent is not a licensee of the Complainants and did not receive any authorization from the Complainants to use the Complainants’ ARMY TIMES mark. The Complainants claim that the Respondent’s <armytimes.net> Domain Name is identical to the Complainants’ ARMY TIMES trademark, regardless of the fact that the Respondent has altered the mark by adding the generic TLD “.net.”

The Complainants allege that, from at least November 8, 2005, to around January 8, 2006, and starting again on or around January 30, 2006, when a visitor typed in the <armytimes.net> Domain Name, the visitor was directed to the website “www.BriansPrediction.com,” containing an individual’s predictions of future events. The Complainants claim that the “www.BriansPrediction.com” website is “monetized” through its participation in the “Google AdSense” program, which the Complainants allege generates revenues by placing a Google search box and contextual advertising links on the bottom of the site. The Complainants claim that, at the time the Respondent used the <armytimes.net> Domain Name to redirect visitors to the “www.BriansPrediction.com” website, the site also featured, in a prominent location above the scroll, the logos of several famous newspaper and media outlets, including a copy of the logo of USA Today, a newspaper publication that is owned and operated by the Complainants’ parent company, Gannett Co., Inc., without authorization. The Complainants further claim that the “www.BriansPrediction.com” website does not include any information or commentary related to the Army or the military.

The Complainants assert that, beginning on or around January 9, 2006, until on or around January 30, 2006, the Respondent began redirecting the Domain Name <armytimes.net> to one of three directory websites, which provide links to general news and information services, including links related to credit reports, travel, business, finance, entertainment and gaming. The Complainants allege that these directory websites also trigger pop-up advertisements for various businesses. Among the links, the Complainants claim that each of the three directory sites contains between one and three links that use the word “Army.”

The Complainants argue that the Respondent has no rights to, or any legitimate interest in, the <armytimes.net> Domain Name for several reasons:

- The Respondent has never been authorized by the Complainants to use the Complainants’ ARMY TIMES mark in any way, including as part of the <armytimes.net> Domain Name.

- The Respondent is infringing the Complainants’ trademark rights.

- The Respondent’s registration of the <armytimes.net> Domain Name, which not only uses the term “Army” but also includes the term “Times” to duplicate the Complainants’ mark in its entirety, appears specifically geared towards trading off of the goodwill the Complainants have worked to develop in their ARMY TIMES mark.

- The Respondent has never made any use of, or demonstrable preparations to use, the <armytimes.net> Domain Name or any name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute.

- The Respondent is currently using the <armytimes.net> Domain Name to misdirect visitors to one of three directory websites, which contains links to third-party websites and subjects users to various pop-up advertisements.

- The Respondent’s use of the Complainants’ well-known ARMY TIMES mark as part of the <armytimes.net> Domain Name is likely to create customer confusion and infringes upon the Complainants’ rights in their ARMY TIMES mark because visitors to the Respondent’s website are likely to believe the Complainants’ ARMY TIMES mark is associated with, or that the Complainants sponsor, the third-party goods and services promoted on the site, when they do not.

- The Respondent’s inclusion in its generic directory websites of between one and three links that use the word “Army” does not legitimize its use of the Complainants’ ARMY TIMES mark, which has been used since 1940 and registered since 1941 and has unquestionably acquired secondary meaning under U.S. trademark law. Moreover, the fact that these links did not appear on the Respondent’s websites until after the Respondent received notice of the dispute from the Complainants shows that the Respondent only included these links as a pretext to try to create an association between the <armytimes.net> Domain Name and the Respondent.

- The Respondent, a U.S. resident, was on constructive notice of the Complainants’ rights in their federally-registered ARMY TIMES trademark at the time the Respondent registered the <armytimes.net> Domain Name.

- The Respondent has never been commonly known under by the Domain Name <armytimes.net> and has not acquired trademark or service mark rights in the <armytimes.net> Domain Name. To the best of the Complainants’ knowledge, the Respondent has never been called by, affiliated with, or commonly known by the <armytimes.net> Domain Name or by the ARMY TIMES mark, or any reasonable facsimile thereof, and the Complainants are not aware of any trademark rights or any other rights owned by the Respondent to the <armytimes.net> Domain Name.

- The Respondent’s use of the <armytimes.net> Domain Name is not a non-commercial or fair use, without intent for commercial gain. Since the Complainants have been aware of the Respondent’s use of the <armytimes.net> Domain Name, the Respondent’s only use of the <armytimes.net> Domain Name has been to misdirect potential visitors, who intended to visit the Complainants’ “www.armytimes.com” website, to the Respondent’s generic directory websites or to the Respondent’s website, “www.BriansPrediction.com,” for which the Respondent appears to receive compensation through placement of advertising.

- The Respondent’s current registration of the <armytimes.net> Domain Name under the name “Domain For Sale, Appraised at $25,000!” and its previous registration of the <armytimes.net> Domain Name under the name “GreatDomainsOnSale.com” create an inference that the Respondent intended to extract pecuniary gain from its registration of the <armytimes.net> Domain Name. The Respondent is trying to solicit users to purchase the Domain Name. In fact, the top right hand corner of each of the Respondent’s generic directory websites contains a link that invites visitors to “Inquire about this domain”. When a user clicks on the link, he or she is transported to a website located at DomainSponsor.com that informs users that “This domain may be for sale!” and provides a box for users to enter to try to purchase the <armytimes.net> Domain Name.

The Complainants assert that the Respondent registered and is using the <armytimes.net> Domain Name in bad faith for the following reasons:

- The Respondent’s registration of a Domain Name that is identical to the Complainants’ ARMY TIMES mark, its use of the <armytimes.net> Domain Name to divert potential visitors to unrelated websites, and its announcement in its contact information for the registration that the <armytimes.net> Domain Name is “For Sale, Appraised at $25,000!” establishes the Respondent’s bad faith.

- The Respondent’s registration of a Domain Name that is identical to the Complainants’ federally-registered ARMY TIMES mark and its use of the <armytimes.net> Domain Name in a manner that deliberately prevents the Complainants from using their mark as a domain name is evidence of the Respondent’s bad faith.

- The Respondent has no legitimate business connection with the <armytimes.net> Domain Name; the only evident reason that the Respondent registered and has used the <armytimes.net> Domain Name is to increase traffic to the Respondent’s own websites by creating confusion with the Complainants’ ARMY TIMES mark.

- The fact that the Respondent is currently using the <armytimes.net> Domain Name to misdirect visitors to generic directory websites, and to subject Internet users to a scheme of display and pop-up advertising, and has previously used the <armytimes.net> Domain Name to attract traffic to the Respondent’s own commercial website “www.BriansPrediction.com,” for which the Respondent is paid based on directing traffic to other, third-party websites through its participation in the Google AdSense program, establishes that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainants’ mark.

- The Respondent’s use of the business names “Domain For Sale, Appraised at $25,000!” and “GreatDomainsOnSale.com” infers that the Respondent registered the <armytimes.net> Domain Name for the ultimate purpose of sale in excess of the Respondent’s reasonable costs of registration. The Respondent registered the <armytimes.net> Domain Name primarily for the purpose of selling, renting or otherwise transferring its registration for consideration in excess of its documented out-of-pocket costs related to the registration. The Respondent has included the <armytimes.net> Domain Name’s “appraised” $25,000 value as part of its registration information, and is currently using the Domain Name to link visitors to a location where they can submit bids to purchase the Domain Name.

B. Respondent

The Respondent has failed to respond to the Complaint or to any other communications from the Complainants.

 

6. Discussion and Findings

As an initial matter, the Panel notes that there are two Complainants in this proceeding. A complaint may be submitted by multiple related parties with common interests in a single domain name, including two parties that are the owner and licensee, respectively, of a mark at issue. See Mucos Emulsions, GmbH v. Enamecorp.com and Kim Taeho, WIPO Case No. D2000-1513 (April 24, 2001). The Complainants here have clearly identified their respective interests in the ARMY TIMES mark and have unambiguously stated to which of the Complainants they request the disputed <armytimes.net> Domain Name be transferred (i.e., the Complainant Media West-ATP, Inc.) See id. Accordingly, the Panel finds that the fact that there are two Complainants in this proceeding does not bar relief.

For ease of reference, the Panel refers herein to the ARMY TIMES mark as the “Complainants” mark, while noting that any relief granted herein will be provided to the Complainant Media West-ATP, Inc.

A. Identical or Confusingly Similar

First, the Complainants must prove that the <armytimes.net> Domain Name is identical or confusingly similar to a mark in which the Complainants have rights. (Policy, paragraph 4(a)(i)).

The Complaint shows, and the Respondent does not dispute, that the Complainants have valid and well-established exclusive rights in their ARMY TIMES mark, for which they possess a valid federal trademark registration, which they have used continuously since 1940 through the publication of print and online materials relating to the U.S. Army, and which they have expended significant resources to promote. See MSNBC Cable LLC v. Tysys.com, WIPO Case No. D2000-1204 (December 14, 2000). The Complainants have also registered the domain name <armytimes.com>, through which they have made continuous use on the Internet of their ARMY TIMES mark since 1994.

The Panel finds that the Respondent’s <armytimes.net> Domain Name is identical or confusingly similar to the Complainants’ ARMY TIMES mark. The disputed domain name includes the entirety of the Complainants’ mark. The only difference between the disputed domain name and the Complainants’ mark lies in the addition of the generic TLD “.net”. For purposes of analyzing whether a disputed domain name is identical or confusingly similar to a complainant’s mark, the addition of “.net” does not distinguish a domain name which otherwise wholly incorporates another’s trademark. See Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046 (March 23, 2001).

The Panel therefore concludes that the disputed Domain Name <armytimes.net> is identical or confusingly similar to the Complainants’ ARMY TIMES mark, in which the Complainants have valid rights.

B. Rights or Legitimate Interests

The Complainants are also required to prove that the Respondent has no rights or legitimate interest in respect of the <armytimes.net> Domain Name. (Policy, paragraph 4(a)(ii)).

Once a complainant establishes that a respondent’s domain name is identical or confusingly similar to the complainant’s mark, and that the complainant has not authorized the respondent to use the mark, the burden shifts to the respondent to establish some right or legitimate interest in respect of the domain name. Sony Kabushiki Kaisha a/t/a Sony Corporation v. Sony.net, WIPO Case No. D2000-1074 (December 12, 2000). In light of the Respondent’s default, the Panel presumes that the Respondent has no such rights or legitimate interest.

The Respondent’s default notwithstanding, there is no evidence in the record that the Respondent is in any way associated with the Complainants, that the Respondent is now or was ever known by <armytimes.net>, that the Respondent possesses any trademark or service mark rights in the <armytimes.net> Domain Name, or that the Respondent has other authority or permission to use the Complainants’ ARMY TIMES mark. Furthermore, by not submitting a response, the Respondent has failed to invoke any other circumstance that might demonstrate, pursuant to paragraph 4(c) of the Policy, that it holds some right or legitimate interest in the disputed domain name. Ahead Software AG v. Leduc Jean, WIPO Case No. D2004-0323 (June 29, 2004); see also Nintendo of America, Inc. v. Tasc, Inc. and Ken Lewis, WIPO Case No. D2000-1563 (January 25, 2001).

Moreover, the Respondent’s use of the <armytimes.net> Domain Name, which is identical or substantially similar to the Complainants’ mark and is likely to create customer confusion with the Complainants’ mark, to misdirect unsuspecting Internet users to the Respondent’s own website, through which it has offered domain names for sale, as well as to directory websites containing services that have no connection whatsoever with the Complainants , does not constitute a bona fide commercial offering of goods or services under the domain name at issue. MSNBC Cable LLC v. Tysys.com, WIPO Case No. D2000-1204 (December 14, 2000); see also Bilfinger Berger AG v. eService Finance Dept., WIPO Case No. D2003-0827 (December 18, 2003). Such use further does not constitute a legitimate non-commercial or fair use without any intent either for commercial gain or to mislead or divert consumers or tarnish the trademark at issue. See MSNBC Cable, LLC v. Tysys.com, WIPO Case No. D2000-1204 (December 14, 2000).

Furthermore, that the Respondent’s “www.BriansPrediction.com” website appears to have generated revenue through the placement of advertising indicates that the Respondent is not making a legitimate non-commercial or fair use through its use of the <armytimes.net> Domain Name. Similarly, the Respondent’s current registration of the <armytimes.net> Domain Name under the name “Domain For Sale, Appraised at $25,000!,” along with the fact that users entering the <armytimes.net> Domain Name are currently transported to a website indicating that the <armytimes.net> Domain Name is for sale and linked to a website indicating “This domain may be for sale!” shows that the Respondent intends to make a commercial use through the sale of the <armytimes.net> Domain Name. See Euromarket Designs, Inc. d/b/a Crate & Barrel v. Domain For Sale VMI, WIPO Case No. D2000-1195 (November 1, 2000).

Finally, the Respondent’s failure to respond to the Complainants’ cease and desist letter is an indication of the Respondent’s lack of legitimate interest in the <armytimes.net> Domain Name. Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256 (May 6, 2005); see also Euromarket Designs, Inc. d/b/a Crate & Barrel v. Domain For Sale VMI, WIPO Case No. D2000-1195 (November 1, 2000).

As such, the Panel finds that the Respondent has no rights or legitimate interest in the disputed domain name. Accordingly, the Complainants have proven paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainants must additionally establish that the disputed <armytimes.net> Domain Name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)). Based on the record presented, the Panel concludes that the Complainants have proffered sufficient evidence of bad faith.

First, the Respondent’s knowledge of the Complainants’ mark when the Respondent registered the <armytimes.net> Domain Name, as the record evidence demonstrates, supports a finding of registration in bad faith. As the undisputed evidence set forth in the Complaint shows that the Complainants’ print newspaper reflecting the ARMY TIMES mark has been in publication for over 60 years and the online edition of their newspaper (located on its website “www.armytimes.com”) has been in continuous publication since 1994, the Panel infers that the Respondent was well aware of the Complainants’ mark but chose, in spite of such knowledge, to register the <armytimes.net> Domain Name with the intent of causing consumer confusion and financially benefiting from the goodwill inherent in the Complainants’ well known mark. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210 (April 20, 2001).

The Panel further infers the Respondent’s bad faith intent from the Respondent’s lack of Response to the Complaint. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210 (April 20, 2001).

Moreover, the fact that the Respondent uses the <armytimes.net> Domain Name to subject Internet users to a scheme of display and pop-up advertising, and has previously used the <armytimes.net> Domain Name to attract traffic to the Respondent’s own commercial website “www.BriansPrediction.com,” for which the Respondent is paid based on directing traffic to other, third-party websites, indicates that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to websites that are unaffiliated with the Complainants by creating a likelihood of confusion with the Complainants’ mark. The Respondent’s behavior in this regard is indicative of the Respondent’s bad faith. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256 (May 6, 2005).

Furthermore, that the Respondent’s “www.BriansPrediction.com” website features logos of prominent newspapers and publications to which the Respondent has no affiliation, and at least in the instance of the Respondent’s use of the USA Today logo, has no authorization, indicates that the Respondent is attempting to create the inference that it is affiliated with such entities while seemingly infringing on third party trademarks. Such is further evidence of the Respondent’s bad faith.

Finally, the Respondent’s bad faith can be inferred by the Respondent’s inclusion of language in its registration of the <armytimes.net> Domain Name indicating that the Domain Name is for sale. See Parfums Christian Dior S.A. v. QTR Corporation, WIPO Case No. D2000-0023 (March 10, 2000). Here, the Respondent’s registration is listed under the name “Domain For Sale, Appraised at $25,000!,” indicating that the Respondent intends to sell the <armytimes.net> Domain Name for an amount in excess of reasonable costs related to the Domain Name. The Respondent’s intent is further evidenced by its current use of the <armytimes.net> Domain Name to link visitors to a location where they can submit bids to purchase the Domain Name. The Panel thus is able to infer bad faith on the part of the Respondent (Paragraph 4(b)(i) of the Policy).

Given the above facts and circumstances, the Panel finds that the Respondent has registered and is using the Domain Name at issue in bad faith.

 

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 <armytimes.net> be transferred to the Complainant Media West-ATP, Inc.

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Lynda M. Braun
Sole Panelist

Dated: March 27, 2006