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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Cox Newspapers, Inc. d/b/a Dayton Daily News v. PabloPalermao

Case No. D2008-0372

 

1. The Parties

The Complainant is Cox Newspapers, Inc. d/b/a Dayton Daily News, Atlanta, Georgia, United States of America, represented by Dow Lohnes, PLLC, United States of America.

The Respondent is PabloPalermao, San Isidro, Peru.

 

2. The Domain Name and Registrar

The disputed domain name <daytondailynew.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 7, 2008, naming Moniker Privacy Services as the Respondent. On March 11, 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 19, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response stating that PabloPalermao is listed as the registrant and providing the contact details.

On March 26, 2008, having noted that the domain name was set to expire on May 23, 2008, the Center transmitted by email to the registrar a request for confirmation, in accordance with ICANN’s Expired Domain Deletion Policy paragraph 3.7.5.7, that the domain name would be placed in locked status to remain in such status after the lapse of the expiry date until the UDRP proceedings were concluded, and enquired whether any action were required by the parties. The registrar replied on March 27, 2008 confirming that the domain name would be placed in locked status to remain in such status after the lapse of the expiry date until the UDRP proceedings were concluded, and advising that the Complainant was responsible for contacting the registrar to renew the domain name.

On March 26, 2008, the Center advised the Complainant that the registrant of record had been identified by the registrar as being different from the entity named as Respondent in the Complaint, and that the recorded registrant was PabloPalermao of San Isidro, Peru. The Center invited the Complainant to amend the Complaint to add, as a minimum, the additional information provided by the Registrar.

On March 27, 2008, the Complainant filed an Amendment to the Complaint requesting that PabloPalermao be added as a Respondent, with consequential amendments to the body of the Complaint. The Complainant noted that the only information available to the Complainant about the initial Respondent’s identity was from the Moniker WHOIS database which indicated on March 7, 2008, that the initial Respondent was the registrar’s “privacy service”, and that according to the same database on March 27, 2008, the registrant was indicated to be PabloPalermao.

The Center verified that the Complaint together with the Amendment to 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 April 2, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 22, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 23, 2008.

The Center appointed Joan Clark as the sole panelist in this matter on May 5, 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

According to the registrar Moniker Online Services, LLC, the domain name <daytondailynew.com> was created on May 23, 2002, to expire on May 23, 2008, and the registrant of the domain name is PabloPalermao.

The Complainant is the owner of DAYTON DAILY NEWS, a mark registered in the United States Trademarks Office on June 19, 1990 for a newspaper.

The Complainant also declares it is the owner of a website accessed at the domain name <daytondailynews.com>.

 

5. Parties’ Contentions

A. Complainant

(a) Identical or confusingly similar

The Complainant states it owns and publishes Dayton Daily News, a daily newspaper, which has been continuously published and promoted under the DAYTON DAILY NEWS mark since at least as early as 1898.

The Complainant avers that it is the owner of the DAYTON DAILY NEWS mark and currently owns United States federal trademark registration for same, registered on June 19, 1990, that this mark was originally registered in the name of Dayton Newspapers, Inc. for a “newspaper”, and on April 16, 2003 was assigned to its corporate parent the Complainant Cox Newspapers, Inc.

The Complainant states that it owns and operates a website accessed at the domain name <daytondailynews.com>, which is an online version of the Complainant’s Dayton Daily News newspaper. The Complainant states that the <daytondailynews.com> domain name has been registered by the Complainant’s Dayton Daily News newspaper since July 1997. The Complainant also states that the DAYTON DAILY NEWS mark has been used continuously and extensively to identify, advertise and promote its news services at the Dayton Daily News website since at least as early as December 6, 1998.

The Complainant states that the Dayton Daily News website has over 11,500,000 page views per month.

The Complainant maintains that the Dayton Daily News newspaper and website are extremely successful and well-known in the Dayton, Ohio region and throughout the United States, that this newspaper is among the most widely read and recognizable publications in the Dayton, Ohio area, with a daily weekday (Monday-Friday) circulation of more than 460,000 average daily page subscribers.

The Complainant further states that it has spent millions of dollars to promote the Dayton Daily News newspaper, website and mark. This newspaper is said to have won many journalistic awards, as cited by the Complainant.

The Complainant concludes that it has developed extremely valuable goodwill and an outstanding reputation in its mark, which is well-known and is indicative of high quality and origin associated exclusively with Cox Newspapers, Inc.

The Complainant states that when a visitor types in the domain name <daytondailynew.com>, he or she is directed to a website branded with the mark DAYTONDAILYNEW.COM at the top of the page that provides a directory of Internet links under categories that include, among other things, “classified”, “personals”, and “local news”. This site also generates “pop-up” advertisements that appear when the user first enters the site.

The Complainant states that, on January 23, 2008, counsel for the Complainant sent a demand letter to the Respondent, demanding that the Respondent cease its use of the domain name and voluntarily agree to transfer same to the Complainant. This letter also asked the Respondent to provide the identity of the entity shielded by the MONIKER WHOIS privacy service to allow the Complainant to contact such entity directly to attempt to arrange for transfer of the domain name, and to forward a copy of the letter to the entity shielded by the MONIKER WHOIS privacy service.

The Complainant asserts that, as of the date of the Complaint, counsel for the Complainant has not received a Response from the actual registrant and that, as of said date, the Respondent had refused to unmask the WHOIS information or provide the Complainant with the identity of, or contact information for, the actual registrant.

The Complainant asserts that the domain name in dispute is confusingly similar to the Complainant’s DAYTON DAILY NEWS mark, the only difference being the removal of the single letter “s”, which is a common misspelling or typographical error for the word “news”, and the addition of the generic “TLD.com”.

The Complainant asserts that the deletion of the single letter “s” in the disputed domain name is inconsequential because the term “News” is commonly misspelled or mistyped as “New”, and that users seeking the Complainant’s website may easily mistype the Complainant’s domain name <daytondailynews.com> as <daytondailynew.com>.

The Complainant also asserts that the addition of the generic “TLD.com” to a trademark to create a domain name is irrelevant when considering the similarity of a domain name (which must have a “gTLD”) to the trademark.

The Complainant asserts that the potential for confusion is exacerbated in this case because, as of March 7, 2008, the domain name resolved to an active website that contained links relating to “personals”, “local news” and “classified”.

The Complainant publishes a newspaper and operates a website that both provide “news”, “personals” and “classified” information, as main components of the services provided to readers and Internet users.

The Complainant avers that an Internet user seeking the Complainant’s website is likely to be confused into thinking that the disputed domain name and the associated website are somehow associated, affiliated with or sponsored by the Complainant.

(b) Rights or legitimate interests in respect of the domain name

The Complainant asserts that the Respondent registered the domain name in dispute, <daytondailynew.com>, without the authorization, knowledge or consent of the Complainant, that the Respondent is not a licensee of the Complainant and is not authorized to use the Complainant’s DAYTON DAILY NEWS mark.

The Complainant further states that the Respondent has never made any use of or demonstrable preparations to use the domain name, or any name corresponding to the domain name, in connection with a bona fide offering of goods or services, and that the Respondent’s use of a domain name to trade on the well-known marks of others to lure Internet users to the Respondent’s directory of third-party websites that offer services that are competitive with a trademark owner’s services does not constitute a bona fide offering of goods or services.

Further, the Complainant asserts that the Respondent has never been commonly known by the disputed domain name and has not acquired trademark or service mark rights in the disputed domain name.

Furthermore, the Complainant states that the Respondent has made no legitimate non commercial or fair use of the domain name without intent to misleading divert consumers for commercial gain.

The Complainant states that the Respondent uses the disputed domain name to misdirect potential visitors to the Respondent’s commercial website and to serve pop-up advertisements for third-party goods and services to visitors, for which the Respondent presumably receives compensation in the form of “click-through” or web page impression revenues from the third parties to whom visitors are redirected.

(c) Registration and use in bad faith

The Complainant asserts that the disputed domain name has been registered and used in bad faith.

The Complainant maintains that the Respondent’s registration of the <daytondailynew.com> domain name which is confusingly similar to the Complainant’s DAYTON DAILY NEWS mark, its use of the domain name to divert potential visitors to its own and other third-party commercial websites and to serve pop-up advertisements, and its shielding of its actual identity through use of a registrar’s WHOIS privacy service, clearly establishes that the Respondent has used and registered the disputed domain name in bad faith.

The Complainant asserts that the Respondent’s activity establishes that it has intentionally attempted to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with the Complainant’s DAYTON DAILY NEWS mark.

The Complainant further asserts that the use of a proxy or privacy service, particularly where the Respondent’s conduct amounts to bad faith under the Policy’s other factors, is also indicative of bad faith.

In addition, the Complainant states that the Respondent is engaged in the practice of “typo-squatting” on the Complainant’s mark, which itself evidences bad faith registration and use under the Policy.

The Complainant requests that the Administrative Panel issue a decision that the domain name <daytondailynew.com> be transferred to the Complainant.

B. Respondent

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

 

6. Identity of the Respondent

The Complainant initially described the Respondent to be Moniker Privacy Services, according to the information available to the Complainant from the WHOIS search report available under Moniker.com. The registrar subsequently identified the registrant of the disputed domain name to be PabloPalermao, and the WHOIS search report of Moniker.com also subsequently changed its records to indicate the registrant was PabloPalermao. By an Amendment to the Complaint and at the suggestion of the Center the Complainant requested that PabloPalermao be added as a Respondent. The Rules state that “Respondent means the holder of a domain-name registration against which a complaint is initiated”. Since it appears Moniker Privacy Services was merely providing a Whois privacy shield dervice for the holder of the domain name registration, and the registrar has identified PabloPalermao to be the registrant, the Panel has determined that this is the proper identity of the Respondent without including the name of Moniker Privacy Services. This is not a case of a proxy or nominee registrant.

 

7. Discussion and Findings

Paragraph 4(a) of the Policy states that, in order to be successful with respect to a disputed domain name, Complainant has the burden of proving that all three elements are present in the Complaint, namely:

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

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

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

Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith but are not limitative.

Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate Respondent’s rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar

The Complainant is the registered owner of the mark DAYTON DAILY NEWS which has been registered on the TradeMarks Register since June 19, 1990 and, according to the Complainant, has been in use since the 19^th century.

The Panel concludes, on the basis of the statements in the Complaint, which have not been refuted by the Respondent, that the Complainant has rights in the above-mentioned registered trademark. The difference between this trademark and the disputed domain name is merely the removal in the disputed domain name of the letter “s” and the addition of “.com”. The addition of such a generic TLD is not to be considered in assessing the question of identity or confusing similarity. The removal of the letter “s” is so minor, at the very end of the principal part of the domain name, that it would not prevent the likelihood of confusion between the Complainant’s mark and the disputed domain name.

The Panel finds that the disputed domain name is confusingly similar to the mark DAYTON DAILY NEWS in which the Complainant has rights, and the first criterion for a successful challenge to the disputed domain name has been satisfied.

B. Rights or Legitimate Interests

The Complainant has provided strong arguments and persuasive evidence to indicate that the Respondent has no rights or legitimate interests in the disputed domain name. Against this the Respondent has remained silent, not having filed a Response.

Since the Respondent has failed to answer the case presented by the Complainant, namely that the Respondent has no rights or legitimate interests in the disputed domain name, the Panel is amply justified in accepting the evidence provided by the Complainant.

There is in fact no evidence in the record to indicate to the Panel that the Respondent has any rights or legitimate interests in the disputed domain name, such as an indication that it has been commonly known by the domain name, or has made demonstrable preparations to use it or has made a legitimate non commercial or fair use of it.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the second criterion for a successful challenge to the disputed domain name has been satisfied.

C. Registered and Used in Bad Faith

The choice of the domain name <daytondailynew.com> and the omission of an “s” which would normally appear in such a term, is an indication that this domain name was chosen intentionally to be as close as possible to the Complainant’s trademark and the name of its newspaper.

The most likely purpose for such a choice would have been an attempt to attract for commercial gain Internet users to the Respondent’s website.

A screenshot of <daytondailynew.com> on March 7, 2008 which shows the inclusion of links on topics similar to the services offered by the Complainant, in fact refers the visitors to “Dayton daily news”, further compounding confusion for the reader.

It is obvious to the Panel, in the absence of any explanation from the Respondent as to the justification for its choice of a domain name confusingly similar to the Complainant’s mark and the name of its newspaper, that the disputed domain name was chosen for the purpose of creating confusion, luring readers to its website in the belief they were accessing a site related to the Complainant’s mark and newspaper, and then diverting them to pop-up advertisements for third-party goods and services.

This Panel has no hesitation in finding that the domain name in dispute was registered and is being used in bad faith.

The third criterion for a successful challenge of the domain name registration has been satisfied.

 

8. 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 <daytondailynew.com> be transferred to the Complainant. The Panel notes that the registrar has advised that the Complainant is responsible for contacting the registrar to renew or restore, under the same commercial terms as the registrant, the domain name which was set to expire during the administrative proceeding.

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Joan Clark
Sole Panelist

Dated: May 19, 2008