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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Belo Company v. ZJ

Case No. D2006-1004

 

1. The Parties

The Complainant is The Belo Company, Wilmington, Delaware, United States of America, represented by Dow Lohnes, PLLC, United States of America.

The Respondent is ZJ of Zhangyang, Shanghai, China.

 

2. The Domain Name and Registrar

The disputed domain name <dalasmorningnews.com> is registered with Intercosmos Media Group, Inc. d/b/a directNIC.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2006. On August 8, 2006, the Center transmitted by email to Intercosmos Media Group, Inc d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On August 8, 2006, Intercosmos Media Group, Inc d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. 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 August 10, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 30, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2006.

The Center appointed David Taylor as the sole panelist in this matter on September 11, 2006. 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 owns and publishes ‘The Dallas Morning News’, a daily newspaper published in Dallas, Texas under that name since 1885.

The Complainant owns the following United States federal trademark registrations:

- THE DALLAS MORNING NEWS (Stylized) (Registration Number 175,933), registered on November 13, 1923 by A.H. Belo and subsequently assigned to the Complainant.

- THE DALLAS MORNING NEWS (Registration Number 2,505,952), registered on November 13, 2001 by the Complainant.

The domain names <dallasnews.com> and <dallasmorningnews.com> were registered by ‘The Dallas Morning News’ in 1996 and point to an online version of the Complainant’s newspaper.

The disputed domain name <dalasmorningnews.com> was registered on October 29 2002, and is owned by the Respondent.

 

5. Parties’ Contentions

A. Complainant

The Complainant states that ‘The Dallas Morning News’ newspaper is among the most widely read and recognizable publications in the Dallas, Texas area. For the six months ending March 31, 2006, it had a daily weekday circulation of more than 480,000 average daily paid subscribers.

The Complainant contends that it has continuously and extensively used its THE DALLAS MORNING NEWS trademarks to identify, advertise and promote its news services on its website since December 1997. According to the Complainant, The Dallas Morning News website is the most visited news site in the Dallas area, and logged about 36 million page views in June 2006, making it one of the leading news websites in the United States.

The Complainant states that it has spent millions of dollars promoting The Dallas Morning News newspaper, website and trademarks. It has consequently developed extremely valuable goodwill and an outstanding reputation in its trademarks.

The Respondent registered the disputed domain name without the consent of the Complainant. The disputed domain name points to one of three similar portal websites, each of which display the legend “dalasmorningnews.com” in the top left hand corner and display sponsored links in a format designed to replicate the types of information found in the Complainant’s newspaper and website, including links to categories such as “News”, “Classifieds” and “Obituaries”. Links to third-party products and services that are directly competitive with the contents of the Complainant’s newspaper and website are also included. The websites also generate “pop-up” advertisements.

On May 8, 2006, the Complainant’s lawyers sent a cease and desist letter to the registrant and administrative contact of the disputed domain name, requesting that it be transferred. The letter was returned marked “insufficient address”, but no response to the email was received.

The Complainant contends that:

(i) The disputed domain name is confusingly similar to the marks in which the Complainant has rights.

The disputed domain name is virtually identical to the Complainant’s trademarks as the only difference is the removal of the “l”, the addition of the generic top level domain “.com” and the deletion of the generic word “the”. The removal of the “l” is inconsequential because the term “Dallas” is often misspelled as “Dalas”, and users seeking the Complainant’s website may easily mistype the Complainant’s domain name. The addition of the generic top level domain “.com” to a trademark to create a domain name is irrelevant when considering the similarity of a domain name to a trademark, as is the deletion of a generic word such as “the”. The potential for confusion is exacerbated because the disputed domain name is pointing to a website containing links relating to news, jobs, obituaries and classifieds in the Dallas, Texas area. Users are therefore extremely likely to be confused into thinking that the disputed domain name is somehow associated with the Complainant.

(ii) The Respondent has no rights or legitimate interests with respect to the disputed domain name.

The Respondent has never been authorised by the Complainant to use the Complainant’s trademarks. Furthermore, the Respondent cannot establish that it falls into any of the categories set out under paragraph 4(c) of the Policy. It has never made any use of, or demonstrable preparations to use, the disputed domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of services, as referred to at paragraph 4(c)(i) of the Policy. The Respondent cannot establish rights under paragraph 4(c)(ii) as it has never been commonly known by the domain name. Finally, the Respondent has made no legitimate non commercial or fair use of the disputed domain name without intention to misleadingly divert consumers for commercial gain, as referred to at paragraph 4(c)(iii).

(iii) The domain name has been registered and used in bad faith.

The Respondent has used and registered the domain name in bad faith under the criteria set forth in paragraph 4(b) of the Policy. Its use of the disputed domain name to display pop-up advertising and to misdirect potential visitors to the Complainant’s website to other commercial websites demonstrates that the Respondent has intentionally attempted to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks, as referred to at paragraph 4(b)(iv) of the Policy. In addition, the Respondent has a well established track record of registering domain names that are identical to or based on typographical errors of well-known trademarks and then using these domain names to deceptively misdirect visitors to other third party websites. The Respondent has been ordered to transfer domain names to Complainants under the Policy on at least three prior occasions, and the Complainant cites the decisions concerned. Finally, the Complainant contends that typosquatting is of itself evidence of bad faith registration and use under the Policy.

The Complainant therefore seeks the transfer of the disputed domain name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Finding

Paragraph 15 of the Rules states that the Panel shall decide a Complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In the case of default by a party, Rule 14 states that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom at it considers appropriate. In this case the Respondent has not submitted any Response and consequently has not contested any of the contentions made by the Complainant. The Panel is therefore obliged to make its decision on the basis of the factual statements contained in the Complaint and the documents made available by the Complainant to support its contentions.

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following

(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in the domain name; and

(iii) the domain name has been registered and is being used in bad faith

Taking each of these issues in turn, the Panel decides as follows:

A. Identical or Confusingly Similar

Based on the evidence put forward by the Complainant, the Panel finds that the Complainant has rights in the trademark THE DALLAS MORNING NEWS.

The Panel considers that, as previously held in numerous Panel decisions, the generic top level domain suffix “.com” is without legal significance and has no effect on the issue of similarity. Numerous prior Panels have also held that confusing similarity is established by registrants who try to capitalise on common misspellings made by internet users, and the Panel finds that this is the case here as far as the missing “l” is concerned. Similarly, the Panel is of the opinion that the omission of a generic word such as “the” from a domain name does not alter the impression of confusing similarity with the trademark in question.

On the basis of these considerations, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). The Policy (paragraph 4(c)) sets out various ways in which a Respondent may demonstrate rights or legitimate interests in the domain name, as follows:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial 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 Panel has considered the evidence put forward by the Complainant and considers that the Complainant has presented a clear prima facie showing of the Respondent’s lack of rights or legitimate interest in the disputed domain name. As a result of its default, the Respondent has failed to rebut that showing.

In particular the Panel is of the view that redirecting internet users to a web directory offering various hyperlinks linking to services that are competitive with the Complainant’s services using a confusingly similar domain name to the Complainant’s trademark cannot be considered to be a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy referred to above. Nor can such use be said to be a legitimate non-commercial or fair use of the domain name within the meaning of paragraph 4(c)(iii), as, in the Panel’s opinion, the Respondent is undoubtedly earning revenue via “click-through” links and pop-up advertisements.

The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The third element that the Complainant must prove is that the disputed domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy sets out various circumstances which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith, as follows:

“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, 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.”

It should be noted at this point that although paragraphs (i) to (iii) above refer primarily to the act of registration of a domain name and paragraph (iv) refers to use, according to the wording of the Policy, conduct falling into any one of these four circumstances is evidence of bad faith registration and use.

On the basis of the evidence put forward by the Complainant, the Panel is satisfied that the Respondent’s conduct falls within paragraph 4(b)(iv) of the Policy. By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website.

The Complainant has also highlighted the fact that the Respondent has been ordered to transfer domain names to Complainants under the Policy on at least three prior occasions. Although this does not automatically mean that the Respondent should be condemned in this instance, it is a further indication of the Respondent’s state of mind in registering the disputed domain name, particularly as the Respondent has not provided the Panel with any indication of its reasons for registering the disputed domain name in this instance.

The Panel, therefore, concludes that the Complainant has succeeded in proving that the disputed domain name has been registered and is being used 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 <dalasmorningnews.com> be transferred to the Complainant.

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David Taylor
Sole Panelist

Dated: September 25, 2006