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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Macromedia Incorporated v. Totto Cutugno

Case No. D2008-0323

1. The Parties

The Complainant is Macromedia Incorporated, Hackensack, New Jersey, United States of America, represented by Law Offices of David H.E. Bursik, Esq., United States of America.

The Respondent is Totto Cutugno, Shanghai, China.

2. The Domain Name and Registrar

The disputed domain name <northjerseymedia.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2008. On March 7, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On March 7, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 March 13, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 2, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2008.

The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on April 9, 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 a United States company engaged in the media industry, in particular in the northern part of the State of New Jersey in the United States of America. It began using the service mark NORTH JERSEY MEDIA GROUP in its business in January 2001 and registered the service mark on the Supplemental Registry of the United States Patent and Trademark Office (“USPTO”) on September 23, 2003 and on the Principal Registry of the USPTO on July 31, 2007.

The Respondent registered the disputed domain name on July 22, 2007.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the contentious domain name <northjerseymedia.com> should no longer be registered with the Respondent but that it should be transferred to the Complainant.

It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is confusingly similar to the Complainant’s registered service mark NORTH JERSEY MEDIA GROUP, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.

In support of its case on the first of these three elements, the Complainant relies on the registered service mark already referred to and says that the domain name <northjerseymedia.com> is confusingly similar to the NORTH JERSEY MEDIA GROUP mark because the Respondent has incorporated into the domain name the whole of the service mark with the exception of the generic, organisational word “group”, which does not detract from the self-evident confusion between the two expressions.

The Complainant contends, to establish the second element, that the Respondent has no rights or interests in the domain name because:

(a) the Complainant has not granted permission to the Respondent to use its mark;

(b) the Respondent is not using the domain name in connection with a bona fide offering of goods or services, as the website to which the domain name resolves lead to menus of links to other unrelated sites;

(c) the Respondent has not been commonly known by the domain name;

(d) the Respondent is not making a legitimate noncommercial or fair use of the domain name, as clicking on the “North Jersey Media” tab of the Respondent’s website and entering “North Jersey Media Group” in the site’s search box, both lead to menus that include “www.dating-singles-online.info”, giving rise to a reasonable inference that the site generates “click-through” revenues from such advertisers. Moreover, each page of menus is headed by the words “Sponsored Results for . . .”, showing that the domain name is being used for commercial purposes; and

(e) the Respondent’s use of the domain name constitutes false designation of origin, false representation and false description in violation of the United States Lanham Act, Section 43(a), 15 U.S.C. § 1125(a).

Finally, the Complainant contends that the domain name was registered and is being used in bad faith. It contends that this is so because:

(f) the Respondent has intentionally attempted to attract, for commercial gain, internet users by creating a likelihood of confusion with the Complainant’s mark;

(g) Complainant publishes “The Record” newspaper in Bergen County, New Jersey. “The Record” is widely known in the Northern New Jersey area as “The Bergen Record”. The fact that the Respondent has included on his website a link purporting to be to “The Bergen Record” shows that the Respondent uses the domain name with the intention of “misleadingly diverting consumers” by creating confusion with the “The Record” newspaper, published in Bergen County by the Complainant and the contents of the website;

(h) the main page of the Respondent’s website consists of links such as “Classifieds”, “Obituaries” and “Breaking News” which are calculated to create confusion with the Complainant’s mark. They are all common newspaper sections, which taken as a whole are clearly being used by the Respondent to create confusion with the Complainant’s newspaper and local media business;

(i) the search box on the site leads either to, in some cases, irrelevant sites and in others to those of competitors of the Complainant;

(j) the Respondent is using the domain name in violation of the Complainant’s mark for commercial gain, as it is a reasonable inference from the facts that the Respondent is collecting “click-through” revenues from advertisers linked to the “www.northjerseymedia.com” website. This conclusion is also supported by the fact that each page of menus is headed by the words “Sponsored Results for . . .” and clicking through to the various parts of the website leads to pop-up advertisements; and

(k) the Respondent’s use of the domain name constitutes willful dilution of the Complainant’s federally registered trademark in violation of the United States Lanham Act, 15 U.S.C. § 1125(c).

B. Respondent

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

6. Discussion and Findings

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

In that regard, the Panel also notes that the fact that the Respondent has not made a submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the Complainant to make out its case and past UDRP panels have said many times that despite the absence of a submission from a Respondent, a Complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.

It is thereby possible to draw inferences from the evidence that has been submitted and in some cases from silence. Indeed, paragraph 14 of the Rules incorporates both of those notions into the procedures of the Panel.

The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.

For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:

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 in respect of the domain name; and

iii. The domain name has been registered and is being used in bad faith.

It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn.

A. Identical or Confusingly Similar

The Panel finds that the domain name <northjerseymedia.com> is confusingly similar to the Complainant’s registered service mark NORTH JERSEY MEDIA GROUP.

That is so because the whole of the service mark has been incorporated into the domain name with the exception of the word “group”, which is a generic word that does no more than describe the corporate structure of the Complainant and does not detract from the dominant impression given by the domain name, namely that it relates to a media organization in North Jersey. A reasonable bystander would therefore conclude that the domain name is in fact referring to the Complainant and its service mark.

The domain name also consists of the gTLD suffix ‘.com’. In that regard, it has been held many times that suffixes and minor spelling differences of this sort may not be used to negate a finding of confusing similarity that is otherwise present on the evidence, as it is in the present case.

Accordingly, the Complainant has made out the first of the three elements that it must establish.

B. Rights or Legitimate Interests

Under paragraph 4(a) (ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.

But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.

Thus, if the Respondent proves any of these elements or indeed anything else that shows he has a right or interest in the domain name, the Complainant will have failed to discharge its onus and the complaint will fail.

The Panel’s task in deciding if a registrant has any rights or legitimate interests in a domain name is made more difficult when, as in the present case, the registrant is in default and does not file a Response or any other form of submission. The Respondent was given notice that he had until April 2, 2008 to send in his Response, that he would be in default if he did not do so and that, by virtue of paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.

It is also well established that, as it is put in the Overview of WIPO Panel Views on Selected UDRP Questions (‘the Overview’) that “…a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a) (ii) of the UDRP”.

The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name.

That finding is based on the facts that the Respondent chose for his domain name a name virtually identical to the Complainant’s service mark, the Complainant has never given the Respondent permission to use its service mark in a domain name or anywhere else and the website to which the domain name resolves lead to a series of sponsored sites, which, it is a reasonable inference, has been done to generate “click through” revenue.

The Respondent has not made any attempt to rebut this prima facie case, and the Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain name.

The Complainant has therefore made out the second of the three elements that it must establish.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:

(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s 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 the respondent’s website or location or of a product or service on the site or location.

The Complainant relies on paragraph 4(b)(iv). The Panel finds that the Complainant has made out its case under this paragraph for the following reasons.

The evidence shows that the Respondent has used the domain name to establish a website on the main page of which are links such as “Classifieds”, “Obituaries” and “Breaking News”, which are words commonly used to describe sections of newspapers and which are taken by the public at large to have such meanings. Accordingly, it is a reasonable inference to draw that such links have been included on the Respondent’s website in part to create confusion with the Complainant’s newspaper and media business.

In particular, the evidence is that the Complainant publishes “The Record” newspaper in Bergen County, New Jersey and that “The Record” is widely known in the Northern New Jersey area as “The Bergen Record”. It is therefore a reasonable inference to draw that the Respondent has included that link on his website with the intention of misleadingly diverting consumers by creating confusion with the “The Record” newspaper that is published in Bergen County by the Complainant. The confusion so intended to be created is confusion as to the “source, sponsorship, affiliation, or endorsement” of the website, bringing the present case squarely within the provisions of paragraph 4(b)(iv) of the Policy.

Furthermore, the evidence is that the search box on the Respondent’s site leads inter alia to those of competitors of the Complainant. This fact brings the present case within the circumstances described in the decision relied on by the Complainant, namely Danaher v. DYNPAR.COM c/-Whois Identity Shield, WIPO Case No. D2006-1395, where it was said that: “A search box is provided that, according to the Complainant’s evidence, may divert enquirers to either irrelevant businesses or to competitors of the Complainant, and to this extent the Respondent has set itself in competition with the Complainant as a primary purpose.”

Moreover, as the Complainant has shown from its extensive evidence annexed to the Complaint, clicking through the Respondent’s website leads to a series of sponsored links and pop-up ads.

It can reasonably be concluded that the Respondent is engaging in this activity to generate “click-through” revenue from advertisers and hence for commercial gain.

The Panel therefore concludes that the Respondent has used the domain name in bad faith within the meaning of paragraph 4(b)(iv).

The totality of the evidence is such that the Panel also finds that the Respondent registered the domain name in bad faith and with the intention of using it for the purpose described above.

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 <northjerseymedia.com> be transferred to the Complainant.

The Honourable Neil Anthony Brown QC
Sole Panelist

Dated: April 19, 2008