WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Media West-CPI, Inc. and Cape Publications, Inc. v. Space Coast Computer Technologies, Inc.
Case Number D2001-1458
1. The Parties
Complainants are Media West-CPI, Inc. and Cape Publications, Inc. Media West-CPI, Inc. has its principal office in Reno, Nevada, U.S.A., and is a subsidiary of Cape Publications, Inc., which has its principal office in Melbourne, Florida, U.S.A. These two related companies are hereafter referred to collectively as "Complainant". Complainant is represented in this proceeding by counsel, attorneys Suzanne M. Underwald and Michael R. Heath of the law firm Dow, Lohnes & Albertson PLLC. in Washington, D.C., U.S.A.
The Respondent in this proceeding is the entity Space Coast Computer Technologies, Inc., with office at 455 South 4th Street, Danville, Kentucky 40422 U.S.A. There is no specific person listed as administrative contact for the Respondent.
2. The Domain Name and Registrar
The dispute is with respect to the following domain name (hereafter "the domain name") .
The registrar with which this domain name is registered is Network Solutions, Inc., A Verisign Company, 21355 Ridge Top Circle, Lakeside 3, Dulles, Virginia 20166, U.S.A., (hereafter "the Registrar").
3. Procedural History
The procedures for resolving Complaints like this one are governed by the Uniform Domain Name Dispute Resolution Policy (hereafter "The Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, ICANN�s Rules for Uniform Domain Name Dispute Resolution Policy (hereafter "The Rules"), as well as the Supplemental Rules (hereafter "The Supplemental Rules") of the WIPO Arbitration and Mediation Center (hereafter "the WIPO Center").
The current dispute lies within the scope of the Policy, so that this Panel does have proper jurisdiction to hear and decide this dispute. The terms and conditions of the registration agreement between the Registrar and the Respondent clearly incorporate the Policy, so that Respondent was notified of the existence of the Policy�s provisions for domain name dispute resolution. The Policy contains in its Paragraph 4(a) the elements to be pleaded in order for a mandatory administrative proceeding such as this one to be held: Complainant must allege that (i) Respondent�s domain name is identical or confusingly similar to a service mark or service mark in which the Complainant has rights; and (ii) Respondent has no rights or legitimate interests in the domain name; and (iii) Respondent�s domain name has been registered and is being used in bad faith. See the Policy, Paragraph 4(a). In order to successfully make its case, the Complainant must prove each of these three elements.
An electronic copy of the complaint was filed on December 21, 2001. A hardcopy of the complaint was filed on December 14, 2001. A request for Registrar Verification was made to the Registrar on December 21, 2001, and such Verification was made on December 27, 2001. On January 3, 2002, the WIPO Center notified the Registrar of the filing of the complaint with the WIPO Center and commencement of this administrative proceeding. On January 3, 2002, notification of the complaint was also sent to Respondent. The WIPO Center received a signed receipt from the international courier indicating receipt of the Complaint at Respondent�s place of business on January 7, 2002. As no Response to the Complaint was received by the WIPO Center, it issued a Notice of Respondent Default on January 25, 2002.
According to the WIPO Center�s compliance checklist document reviewed by the WIPO Center on January 3, 2002, the Complaint was filed in compliance with the formal requirements of the Rules and the Supplemental Rules.
The Panel consists of a single Panelist pursuant to Complainant�s request. The Panelist was duly appointed by the WIPO Center. A Statement of Acceptance and Impartiality and Independence was submitted to the WIPO Center by the Panelist on February 6, 2002, and the Panelist was appointed on February 7, 2002. A decision on the Complaint is normally due within 14 days of the appointment of the Panel under Paragraph 15(b) of the Rules.
4. Factual Background
Complainant states that for a long time prior to Respondent�s registration of the domain name, Complainant has continuously owned and used a number of registered and unregistered service marks with the name "FLORIDA TODAY" in connection with its newspaper and on-line publications services. These include five "FLORIDA TODAY" registered service marks in international class 16 ("daily newspaper containing news of statewide interest"), with U.S. Patent and Trademark Office registration numbers 1,408,440; 1,394,855; 1,394,856; 1,394,857; and 1,396,808. In addition, Complainant holds U.S. registration number 2,221,209 to the service mark "FLORIDA TODAY" in international class 42 ("for computer services providing information about NASA and the U.S. Commercial Space Program and various international space programs by means of a global computer network"). See Complaint, paragraph V(A) 2.
Paragraph 12 (2) of the Complaint declares that Complainant has created and registered the domain name for its website. A visit to this website by the Panel on February 7, 2002, confirms that it is functioning viably and legitimately in Complainant�s name.
5. Parties� Contentions
Because Respondent has not made any Response to the Complaint, the contentions considered here are those of Complainant only. Although Respondent has technically defaulted by not submitting a Response, this Panel is authorized under the Rules to proceed to hear the case based on the contentions of the Complainant, evaluating these on their own merits.
Complainant alleges the elements of its case as follows:
1. It has legitimate intellectual property interests in the domain name, and that Respondent has no such interests (see Complaint, Section V, paragraphs A(2) and C(ii)(1);
2. The domain name as registered and used by Respondent are confusingly similar or nearly identical to the FLORIDA TODAY marks and "obviously play off of FLORIDA TODAY�s entrance into the Florida market" (see Complaint, paragraph C(i)(1); and
3. Respondent has registered and used the domain name in bad faith, as shown by:
- the similarity of Respondent�s domain name to Complainant�s marks and to Complainant�s own registered domain names using the "FLORIDATODAY" name, such as , , etc.; and by
- the very close similarity of the logo formerly used by Respondent on its webpage resolving from the domain name , to Complainant�s own logo on Complainant�s webpage; and by the fact that Respondent ceased using this similar logo only after written warning from Complainant; and by
- Respondent�s use of its webpage resolving from the domain name for commercial gain in the form of web hosting and similar services for monthly customer fees.
As a result, Complainant asks this Panel to issue a decision to the effect that the domain name be transferred to Complainant, in accordance with Paragraph 4(i) of the Policy.
6. Discussion and Findings
Based on the facts and contentions referenced above, the Panel finds as follows:
I. As regards proof of element (1) above, intellectual property rights, the Panel finds:
a. Complainant has adequately demonstrated its own intellectual property rights in the service marks using the name "FLORIDA TODAY" in the relevant service mark product/service international classes.
With regard to its website logo which Complainant claims was illegitimately copied by Respondent on Respondent�s webpage, the Panel agrees with Complainant that legal protection for a logo as a mark can be established by continuous usage, without registration, under relevant U.S. trademark law.
b. As regards the lack of legitimate interest or rights in the domain name, Respondent has failed to assert any such interest or right of its own.
II. As regards proof of element (2) above, confusion between Complainant�s service marks and the domain name as registered and used by Respondent:
a. This Panel agrees with Complainant that the mere use by Respondent of a different general top-level domain name (gTLD) suffix - in this case ".net" - to distinguish Respondent�s domain name from Complainant�s registered marks and registered domain names - is insufficient to prevent the issue of confusion from arising.
b. Respondent has not attempted to mitigate possible confusion by using disclaimers on its website to the effect that it is not affiliated with Complainant.
III. As regards proof of element (3) above, the bad faith registration and use elements:
In general, this Panel has not accepted in its prior UDRP cases, and does not accept in this case, evidence of success or failure in negotiations between the parties as evidence of good or bad faith on the part of any party. Admitting into this proceeding evidence taken from settlement negotiations runs contrary to public policy adopted by all courts in the U.S. at least, to encourage parties to settle their disputes amicably by keeping confidential between them all evidence of their settlement negotiations.
a. On Complainant�s claims of bad faith, the Panel finds:
(1) Similarity of domain name to Complainant�s marks: this is a separate element from bad faith and therefore does not in and of itself establish bad faith;
(2) Website logo similarity: this is the core of Complainant�s case - see Complaint, Section V, paragraph C(ii)(3) where Complainant alleges that "The intentional copying and infringement of Complainant�s FLORIDATODAY.COM logo shows that Respondent was clearly aware of the Complainant�s FLORIDA TODAYÒMarks when it registered the domain name, and provides strong evidence that Respondent chose the Domain Name in an effort to attract users to its web hosting services by trading on the goodwill Complainant�s [sic] has built up in its FLORIDA TODAYÒMarks." Reviewing Exhibits D and F to the Complaint which illustrate the respective logos at the top of Complainant�s and Respondent�s websites in June 2001, this Panel agrees with Complainant that they are substantially similar. Both logos use a similarly-styled globe for the dot in ".com".
Respondent has not replied or denied the allegation of copying of the logo, which was removed from Respondent�s webpage apparently only after receiving a demand letter from Complainant to this effect.
(3) Commercial aspect of Respondent�s website: In an independent visit on February 7, 2002, to Respondent�s website resolving from the domain name, this Panel confirmed the assertion of Complainant that Respondent is using the site to offer commercial, for-profit services such as web hosting.
IV. A valid defense by a Respondent, even if bad faith is proven, is legitimate business activity where the domain name plays an integral part, which is not in competition with Complainant. This was the situation in the AOL case, America Online, Inc. v. Frank Albanese, WIPO Case No. D2000-1604, January 25, 2001, where the Panel declined to transfer the domain name to Complainant America Online, Inc. because in that case, the Respondent was engaging in a legitimate, non-competing business in which this domain name was an essential part � the brokerage of AOL shares of stock.
However, Respondent has not made out a similar case here. On the contrary, Respondent�s website indicates a sphere of commercial activity not particularly related to the FLORIDATODAY name - the offering of web hosting and similar services to anybody, anywhere, anytime.
Summary of Findings:
(1) Complainant�s intellectual property rights in the marks containing the name "FLORIDA TODAY", have been proven to the Panel. Respondent has not demonstrated any rights of its own in these marks or names.
(2) Respondent�s domain name and corresponding websites can easily be confused with the marks of Complainant by a reasonable internet user, which could create a likelihood of confusion regarding the sponsorship and affiliation of these sites.
(3) Respondent has shown a degree of bad faith by having copied Complainant�s logo and posting it prominently on its website, and by trading on Complainant�s legally protected marks in order to offer commercial services to the public. Respondent has failed to make the case for a legitimate business need for the domain name, as described in Section 6, Paragraph IV. of this Decision above.
Paragraph 4(b) of the Policy cites, without limitation, various examples of bad faith. Paragraph 4(b)(iv) of the Policy provides one such example of bad faith by a respondent:
"(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location."
The Panel finds that this situation occurs in the present case. While it is often difficult to prove a Respondent�s actual intent, the Panel may clearly infer such intent by the use of domain name that include the well-known mark "FLORIDA TODAY" on Respondent�s website.
7. Decision
Based upon the Panel�s Findings from Section 6 above, and under its authority vested by Paragraph 4(i) of the Policy, the Panel hereby issues its order to transfer the domain name registration to the Complainant of the domain name .
Paul E. Mason
Sole Panelist
Dated: February 16, 2002
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