WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dow Jones & Company, Inc. and Dow Jones, L.P. v. Powerclick, Inc.
Case No. D2000-1259
1. The Parties
The Complainant is: Dow Jones & Company, Inc., a Delaware corporation with a principal place of business in New York City, and Dow Jones L.P., a Delaware limited partnership with a principal place of business in Chicopee, Massachusetts, USA (sometimes referred to in this Decision as "Dow Jones").
Complainant is represented by Karen L. Abrams, Esq., Patterson, Belknap, Webb & Tyler LLP, 1133 Avenue of the Americas, New York, New York 10036, USA.
The Respondent is: Powerclick, Inc., 6350 Laurel Canyon Blvd., Suite 300, North Hollywood, California 91606-3016, USA.
2. The Domain Names and Registrar
The disputed domain names are four: "", "", "", and "". The Registrar is Network Solutions, Inc. (NSI), 505 Huntmar Park Drive, Herndon, Virginia, U.S.A.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center�s Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).
The Complaint was filed on September 25, 2000. On September 29, 2000, the Center requested that the Registrar, NSI, check and report back on the registrant for the domain names "", "", "", and "". On October 1, 2000, NSI reported to the Center that the registrant was the Respondent: Powerclick, Inc.
On October 17, 2000, the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail, and this Proceeding officially began. Respondent did not file a response, and on November 8, 2000, was declared in default.
The Administrative Panel submitted a Declaration of Impartiality and Independence on November 16, 2000, and the Center proceeded to appoint the Panel on November 17, 2000. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
This Decision is due by December 1, 2000.
4. Factual Background
The Complainant, Dow Jones, probably is best known for publishing the financial newspapers "Barron�s" and the "Wall Street Journal". On January 19, 2000, the Complainant became aware that the Respondent, Powerclick, had registered the four disputed domain names. On several occasions Complainant contacted Respondent to allege trademark infringement and to urge that Respondent transfer the disputed domain names to Complainant. At one point, on March 1, 2000, (Complaint Annex B-3), Respondent replied in writing that it would have the domain names cancelled. But Respondent never did this, and Complainant now seeks to have the disputed domain names transferred to it through this ICANN Administrative Proceeding.
5. The Parties� Contentions
Complainant�s Contentions:
- The disputed domain names registered by Respondent are identical or confusingly similar to Complainant�s family of trademarks that include "", "dow jones" "", "Barron�s", and "Barron�s National Business & Financial Weekly".
- Complainant�s trademarks in the disputed domain names are famous throughout the world.
- Despite the Respondent�s representation that he was attempting to cancel the domain names, Respondent made no effort to cancel or transfer them to Complainant.
- Since at least April 2000, Respondent has linked the "" and "" domain names to a continuously changing array of web sites, most of them involving on-line gambling or on-line financial news services.
- Respondent has tarnished and diluted Complainant�s trademarks by linking them to sites that commercialize gambling.
- Respondent has no rights or interests in the disputed domain names because Respondent is not using the domain names to operate a bona fide business, and Respondent has no license or permission or any connection whatever with Complainant.
- Respondent is in bad faith because it is taking advantage of Complainant�s famous trademarks in order to bring traffic and advertising to Respondent�s websites offering gambling or financial information in competition with Complainant�s financial publications. Respondent carries advertising at the disputed domain names.
- Respondent also is in bad faith because it registered the disputed domain names with actual knowledge of Complainant�s famous trademarks.
- Respondent has engaged in a pattern of registering many other famous domain names in contravention of the Policy.
- Complainant requests that the disputed domain names be turned over to Complainant.
Respondent did not file a Response and has been declared in default in this proceeding.
6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain names transferred to itself, Complainant must prove the following (the Policy, paragraph 4(a)(i-iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith
Identical or Confusingly Similar
The Complainant has produced exemplary copies of its trade and service marks contained in the disputed domain names, "" "" "" "", that have been registered and are still valid in the United States of America and in many countries abroad (the trademark "Dow Jones" on the principal register in the United States, registration no. 1,434,595 dated March 31, 1987; the service mark ""on the principal register in the United States, registration no. 2,119,170 dated December 9, 1997; the service mark "Barron�s" on the principal register, registration no. 1,118,216 dated May 15, 1979; see Complaint Annex E). In registering the disputed domain names, Respondent incorporated Complainant�s trademarks while introducing small typographical changes or deliberate errors. These errors or changes, adding a fourth "w" or leaving out a dot, are generic, and do nothing to change Respondent�s infringement of the core trademarks which Complainant has shown convincingly that it owns.
The Panel finds Respondents� domain names are confusingly similar to Complainant�s trademarks and service marks.
Respondent�s Rights or Legitimate Interests in Respect of the Domain Name
Complainant asserts that Respondent has no license or permission to use any of its trademarks as domain names. Respondent has filed no Response, and the Panel accepts Complainant�s assertion on this issue as true. Nor is it apparent to the Panel that Respondent could assert fair use (the Policy 4 (c) (iii). Even though the Respondent is carrying on a business, in the Panel�s view Respondent�s activity of using Complainant�s trademarks as domain names to connect other commercial websites belonging to Respondent is not a "legitimate business" under the Policy.
The Panel finds the Respondent has no legitimate rights or interests in respect of the disputed domain names.
The Domain Name was registered and is being used in bad faith
As we stated above, Complainant has shown that its trademarks are internationally famous. The Panel has no doubt that Respondent was well aware of Complainant�s rights in the disputed domain names at the time Respondent registered them.
The Panel now turns to the use Respondent made of the disputed domain names. The Panel finds that Respondent�s use of the disputed domain names constitutes bad faith under the Policy in two important respects. First, Respondent has appropriated Complainant�s famous trademarks as domain names in order to pull traffic from Complainant�s websites to Respondent�s websites where Respondent offers financial information in competition with Complainant, and where Respondent derives income from advertising and, apparently, gambling (the Policy 4 (b) (iv). Second, the Panel agrees with Complainant that Respondent�s associating Complainant�s famous trademarks with gambling constitutes trademark tarnishing in contravention of the Policy 4 (c) (iii).
The Panel finds the Respondent has registered and is using the disputed domain names in bad faith.
7. Decision
Therefore, in accordance with ICANN Policy Paragraph 4(i) and Rule Paragraph 15, the Panel orders that the four disputed domain names, "", "", "" and "" be turned over to the Complainant, Dow Jones (i.e., Dow Jones & Company, Inc. and Dow Jones L.P.). The Respondent, Powerclick Inc. registered and used these domain names in bad faith, knowing they were confusingly similar to Complainant�s trade and service marks. In addition, Respondent has no legitimate rights or interests in the disputed domain names.
Dennis A. Foster
Sole Panelist
Dated: December 1, 2000
Full & Egal Universal Law Academy