WIPO Domain Name Decision D2006-0790 for dallsnews.com

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Belo Company, Belo Investments II, Belo Corp. v. XC2 / Internet Coordinator

Case No. D2006-0790

 

1. The Parties

The Complainant is The Belo Company, Belo Investments II, Belo Corp., c/o Kathleen G. Storm, Silverside Executive Center, Wilmington, Delaware, United States of America, represented by Dow Lohnes, PLLC, United States of America.

The Respondent is XC2 / Internet Coordinator, Hong Kong, SAR of China.

 

2. The Domain Name and Registrar

The disputed domain name is registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2006. On June 26, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name(s) at issue. On June 27, 2006, eNom 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, billing, 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 June 30, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July�20,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 21, 2006.

The Center appointed Jonas Gulliksson as the sole panelist in this matter on July�21,�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 Belo Company, a Delaware business trust, is wholly owned by Belo Investments II, Inc., which in turn is wholly owned by Belo Corp. (The Belo Company, Belo Investments II, Inc., and Belo Corp. are hereinafter jointly and severally referred to as “Complainant”). Complainant owns the federally registered trademark THE DALLAS MORNING NEWS� (Reg. No. 2,505,952), which it uses in connection with the publication of its The Dallas Morning News newspaper and The Dallas Morning News website. Complainant contends as discussed below that it also owns common law trademark rights in the mark DALLASNEWS.COM, which is the website address for the online version of Complainant’s THE DALLAS MORNING NEWS� newspaper and which the Complainant contends is branded under the mark DALLASNEWS.COM.

 

5. Parties’ Contentions

A. Complainant

Factual Grounds

Complainant is the owner of the federally registered mark THE DALLAS MORNING NEWS�. This mark is used by Complainant primarily to promote its The Dallas Morning News newspaper and its associated website. The mark THE DALLAS MORNING NEWS� uniquely indicates the Complainant’s The Dallas Morning News newspaper, distributed in the Dallas, Texas, demographic market area. Complainant has a United States federal registration for the mark THE DALLAS MORNING NEWS�, Reg. No. 2,505,952, a true copy of which registration is attached to this Complaint as Annex C.

Complainant operates a website, accessed through the domain name , which is the online version of Complainant’s THE DALLAS MORNING NEWS� newspaper and which is branded under the mark DALLASNEWS.COM. Complainant registered the domain name in April 1996. Complainant has continuously and extensively used the DALLASNEWS.COM mark to identify, advertise and promote its news services at the website located at “” since December 1997. Beginning in April�1999 and continuously thereafter, DALLASNEWS.COM has been used as a brand or mark on the website. The “” website is widely recognized as one of the nation’s leading news websites. Among other honors, it has won the Scripps Howard Foundation National Journalism Award for Web Reporting, the National Headliners Award for Online Journalism, the Society of Newspaper Design SNDies Best of New Media Award (twice), an EPpy Award for Best Internet News Service, and the Vivian Castleberry Award from the Association of Women Journalists (twice). The “” website also receives heavy visitor traffic. The website has about 700,000 registered users, and logs about 1 million page views on weekdays and about 550,000 on weekends. True copies of screenshots of Complainant’s “” website are attached to the Complaint as Annex D.

As a result of the foregoing, Complainant contends that it owns common law trademark rights in the mark DALLASNEWS.COM. In addition, Complainant contends it has developed extremely valuable goodwill and an outstanding reputation in its DALLASNEWS.COM mark, which is associated exclusively with Complainant and has contributed to the popularity and fame of Complainant’s news services and website.

Respondent’s Use and Registration of the Domain Name

According to the WHOIS record, Respondent registered the Domain Name on May�27,�2004.

Complainant states that Respondent is not a licensee of Complainant, nor is it authorized to use Complainant’s DALLASNEWS.COM mark. Respondent registered the Domain Name without the authorization, knowledge or consent of Complainant.

Complainant contends that the Domain Name is confusingly similar to Complainant’s DALLASNEWS.COM mark because it is virtually identical, the only difference being the removal of the single letter “a.”

As of April 25, 2006, the Domain Name resolved to a website containing a list of sponsored links relating to news, jobs, sports, and weather in the Dallas, Texas, metropolitan area. The site also generated a “pop up” advertisement that appeared when users first entered the site, whenever users selected the “Back” button, or when users attempted to leave the site. True copies of screenshots of the website located at www. are attached as Annex E.

On May 5, 2006, counsel for Complainant sent a letter to Internet Coordinator, who was then the listed Administrative and Technical Contact for . This letter was sent to the address listed in the WHOIS database (P.O. Box No. 71826, KCPO; Central, 00000; HK). Counsel for Complainant received no response to this letter. A true copy of the letter is attached to the Complaint as Annex F. On May 5, 2006, counsel for the Complainant also sent a copy of the above letter via e-mail to the address listed for Internet Coordinator in the WHOIS database (22@). Counsel for Complainant never received a response to the letter sent via e-mail. A true copy of this e-mail is attached to the Complaint as Annex G.

Legal Grounds

Under Paragraph 4(a) of the Policy, a domain name registration may be cancelled or transferred upon a showing 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 registrant 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.

The Complaint makes the following arguments in relation to each of these elements:

The Domain Name is Virtually Identical and Confusingly Similar to the DALLASNEWS.COM Mark in which Complainant has Rights.

Complainant argues that it has common law trademark rights in the DALLASNEWS.COM mark. Complainant has established common law rights in the DALLASNEWS.COM mark through continuous and extensive use of this mark online. Complainant has owned the “” domain name since April 1996 and has used the mark DALLASNEWS.COM as the website address for the online version of Complainant’s THE DALLAS MORNING NEWS� newspaper since December 1997. By April 1999, “” appeared on the website, and by December 2000, “” prominently branded the website. In addition, Complainant has made significant marketing expenditures in the form of advertising and website content using the term “.” Thus, Complainant has established common law trademark rights in the DALLASNEWS.COM mark. See, e.g., Bennett Coleman & Co. Ltd. v. Lalwani, WIPO Case No. D2000-0014 (the mark THE ECONOMIC TIMES, used to identify complainant’s newspaper The Economic Times and its associated website, also identifies the producer of the newspaper, and is not merely descriptive because the complainant has a very substantial reputation in the newspaper title due to the mark’s daily use in hard-copy and electronic publication); Bennett Coleman & Co. Ltd. v. Long Distance Telephone Company, WIPO Case No. D2000-0015 (the mark THE TIMES OF INDIA, used to identify complainant’s newspaper The Times of India and its associated website, also identifies the producer of the newspaper, and is not merely descriptive because the complainant has a very substantial reputation in the newspaper title due to the mark’s daily use in hard-copy and electronic publication); The Chip Merchant, Inc. v. Blue Star Electronics, WIPO Case No. D2000-0474 (the complainant, a seller of computer memory and other computer-related hardware and software products, has trademark rights in the mark THE CHIP MERCHANT, due to the complainant’s long use of the mark THE CHIP MERCHANT, and continuous significant sales and marketing efforts involving the mark THE CHIP MERCHANT, the mark acquired distinctiveness and is not merely descriptive); Bayerische Motoren Werke AG (BMW) v. MC Company, WIPO Case No. D2000-1694 (the complainant established trademark rights in the mark THE ULTIMATE DRIVING MACHINE through continuous use in the United States since 1975, registration in the United States in 1983, use in connection with complainant’s well known goods and services, and association with important advertising costs).

Complainant contends that the Domain Name is confusingly similar to Complainant’s mark because it is virtually identical to Complainant’s DALLASNEWS.COM mark, the only difference being the removal of the single letter “a.” This difference is inconsequential because the term “” can easily be misspelled as “,” and users seeking Complainant’s website may mistype the term “” as “.” See, e.g., CimCities, LLC v. John Zuccarini d/b/a Cupcake Patrol, WIPO Case No. D2002-0491 (domain name is confusingly similar to the ACCESS ATLANTA mark); Microsoft Corporation v. M aka Tarek Ahmed, WIPO Case No. D2000-0548 (domain name is very similar to MICROSOFT in its visual impression and pronunciation); Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, WIPO Case No. D2000-0578 (domain names and are virtually identical to THE WALL STREET JOURNAL mark).

An independent basis for finding that a domain name is confusingly similar to a trademark is that, by virtue of the domain name itself, the domain name may confuse Internet users as to whether the site is associated or affiliated with, or sponsored by, the trademark holder. See Nicole Kidman v. John Zuccarini, d/b/a CupcakeParty, WIPO Case No. D2000-1415. In this case, Respondent’s registration of the Domain Name may confuse Internet users because it is merely one keystroke away from , which connects visitors to Complainant’s website that promotes its DALLASNEWS.COM services.

The potential for confusion the Complainant contends is exacerbated in this case because, as of April 25, 2006, the Domain Name resolved to an active website that contained links relating to news, jobs, sports, and weather in the Dallas, Texas, metropolitan area. Complainant publishes a newspaper and operates a website that both provide news, jobs, sports, and weather information as main components of the services provided to readers and Internet users in the Dallas, Texas, metropolitan area. Given the close approximation of the Domain Name to Complainant’s mark and the inclusion of links on topics similar to services offered by Complainant, an Internet user seeking Complainant’s website may become confused into believing that the Domain Name is somehow associated, affiliated with, or sponsored by the Complainant.

Respondent Has No Rights or Legitimate Interests With Respect to the Domain Name

Under Section 4(c) of the Policy, Respondent’s rights or legitimate interests in the domain name can be demonstrated by establishing that “(i) before any notice of the dispute, [respondent’s] use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services; (ii) [respondent] has been commonly known by the domain name, even if [respondent has] acquired no trademark or service mark rights; or (iii) [respondent is] 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.”

Complainant contends that Respondent has never been authorized by Complainant to use its DALLASNEWS.COM mark in any way and therefore cannot claim to have rights or legitimate interests in the Domain Name on that basis. See, e.g., Guerlain S.A. v. SL, Blancel Web, WIPO Case No. D2000-1191 (considering lack of authorization or license to use complainant’s marks in finding complainant established prima facie evidence that respondent had no legitimate rights to domain name); Nilfisk-Advance A/S v. Leong Tak Lang, WIPO Case No. D2000-1299 (concluding respondent had no rights or legitimate interest in domain name based upon fact that respondent is not an authorized agent or licensee of complainant).

In addition, Respondent has not established rights or legitimate interests in the Domain Name by establishing use or preparations to use the Domain Name for any bona fide purpose. As of April 25, 2006, the Domain Name directed Internet users to a website that contained a list of sponsored links. Thus, Respondent’s use of the domain cannot be considered to be made in connection with a bona fide offering of goods or services. See Tercent Inc. v. Lee Yi, Claim No. FA0301000139720 (NAF February 10, 2003) (“the Panel is unwilling to find that Respondent’s use of the disputed domain name, which features nothing other than a series of hyperlinks and a banner advertisement equates to a bona fide offering of goods or services as contemplated by [Section 4(c)(i) of the Policy]”); Bilfinger Berger AG v. eService Finance Dept., WIPO Case No. D2003-0827 (finding that the respondent, who registered a domain name identical to the complainant’s registered mark and who used the domain to provide directory offerings, did not have rights or legitimate interests in the domain name because “[a]lthough services are offered in the form of a directory, the services do not correspond to a bona fide offering by Respondent. The domain name [] is only used as a link to a generic directory. There is no indication that the links contained on the website are related to the Respondent or to the “bilfinger” name.”).

Complainant contends that there is no evidence or indication that Respondent has ever been commonly known as “Dallsnews” or “D.” Therefore, it cannot establish rights or legitimate interests in the Domain Name under Section 4(c)(ii) of the Policy.

Furthermore, Complainant contends that Respondent cannot establish rights in the domain name under Section 4(c)(iii) because it has made no legitimate non-commercial or fair use of the Domain Name without intent to misleadingly divert consumers for commercial gain. There is no evidence that Respondent was ever legitimately known as “Dallsnews” or “D.” Moreover, as stated above, connecting with Respondent’s “www.” website as of April 25, 2006, caused a “pop up” advertisement to appear when users first entered the site, whenever users selected the “Back” button, or when users attempted to leave the site. The “pop up” advertisements invited users to click on the ad so that the users would be re-directed to another site. Respondent thus attempted to misleadingly divert users to another website for commercial gain. Such actions are not legitimate uses of domain names. See OfficeMax, Inc. and OMX, Inc. v. Yong Li, WIPO Case No. D2003-0060 (holding that there can be no legitimate rights or interests in a domain name where registrant deliberately uses a confusingly similar domain name on a site displaying “pop up” advertisements from which the registrant likely generates revenues); America Online, Inc. v. John Zuccarini, WIPO Case No. D2000-1495 (holding that there can be no legitimate rights or interests in a domain name where registrant uses the domain name to redirect users to unrelated sites or in bad faith).

In sum, Complainant contends that Respondent is unable to show any of the factors set forth in Section 4(c) of the Policy to rebut the prima facie showing that Respondent has no rights or legitimate interests in the Domain Name.

The Domain Name Has Been Registered and Used in Bad Faith

As noted above, Paragraph 4(a)(iii) of the Policy requires that the domain name has been registered and used in bad faith. Under Paragraph 4(b) of the Policy, the following circumstances shall be evidence of the use and registration of a domain name in bad faith:

(ii) the registrant 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 it has engaged in a pattern of such conduct; or

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

Complainant contends that the circumstances described above establish that Respondent has used and registered the Domain Name in bad faith under the criteria set forth in Paragraph 4(b)(iv) of the Policy. The only evident reason for Respondent to have registered the Domain Name for a website was to attract users looking for Complainant’s website for its own commercial gain. See, e.g., A. H. Belo Corp. v. King TV and 5 Kings, WIPO Case No. D2000-1336 (“By using the domain names and , Respondents intentionally attempted to attract for financial gain Internet users to the Respondents’ websites and other on-line locations, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondents’ websites and/or the goods or services offered therein”); Bennett Coleman & Co. v. Lalwani; Bennett Coleman & Co. v. Long Distance Telephone Co., WIPO Case Nos. D2000-0014 and D2000-0015 (where respondent used domain names that were slight variations of complainant’s marks for a commercial website, it is inevitable that many visitors would go to respondent’s websites because of complainant’s reputation; use and registration were in bad faith because respondent engaged in an intentional attempt to attract users by creating a likelihood of confusion); Talk City, Inc. v. Robertson, WIPO Case No. 2000-0009 (bad faith use and registration found where respondent used domain names to attract traffic to his website).

Indeed, the fame and use by Belo of its DALLASNEWS.COM mark also support the conclusion that Respondent’s use thereof is an opportunistic effort to trade on Belo’s goodwill, further evidencing use and registration in bad faith under Paragraph 4(b)(iv) of the Policy. Belo Corp. v. George Latimer, WIPO Case No. D2002-0329.

As stated above, as of April 25, 2006, visitors were subjected to “pop up” advertisements that appeared when users first entered the site, whenever users selected the “Back” button, or when users attempted to leave the site. Such activity is additional evidence of bad faith under Paragraph 4(b)(iv) of the Policy. See Nicole Kidman v. John Zuccarini, d/b/a CupcakeParty, WIPO Case No. D2000-1415 (holding that diversion of Internet traffic to profit from fees paid by “pop up” and other advertisers demonstrated bad faith). In addition, Respondent’s bad faith is established by its attempts to divert users to another website through this “pop up” advertisement. See Infospace, Inc. v. Dominion Hill, Inc., WIPO Case Nos. D2000-1475 and D2000-1477 (holding that the nature of the domain names and the clear intention of the respondent to use those names to divert people to respondent’s gambling sites demonstrated bad faith).

Further, Respondent has used and registered the Domain Name in bad faith as part of a pattern of conduct as set forth in Paragraph 4(b)(ii) of the Policy. In at least two prior instances, a WIPO Panel found that Respondent had registered and had used domain names in bad faith and ordered Respondent to transfer the domain names to the complainants. See Emirates Corporation v. 2220 Internet Coordinator, WIPO Case No. D2005-1311 (ordering Respondent 2220 Internet Coordinator, located in Hong Kong, to transfer domain name to complainant Emirates Corporation); Aktiebolaget Electrolux v. 2220 Internet Coordinator, WIPO Case No. D2005-1184 (ordering Respondent 2220 Internet Coordinator, located in Hong Kong, to transfer domain name to complainant Aktiebolaget Electrolux).

B. Respondent

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

 

6. Discussion and Findings

According to paragraph 15(a) of the Rules the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

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

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

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

(iii) that the domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is the owner of a trademark registration for the mark THE DALLAS MORNING NEWS. Further, the Complainant alleges that it owns common law trademark rights in the mark DALLASNEWS.COM.

A fundamental principle of trademark law is that rights in a trademark can be acquired through use, and such rights exist even though the trademark may not be registered. Therefore, given that the Complainant has provided evidence to the effect that he has been using the mark DALLASNEWS.COM in association with its business for a number of years prior to the domain name being registered, the Panel is of the opinion that the Complainant has provided adequate grounds for a finding that he holds rights in the mark DALLASNEWS.COM.

The Panel is of the opinion that the domain name at issue is confusingly similar to both the registered mark THE DALLAS MORNING NEWS and the mark DALLASNEWS.COM in which the Complainant has rights. The domain name at issue comprises the characteristic elements of the registered trademark, namely the words “Dallas” and “news”. Further, the domain name at issue is either a misspelling of the mark DALLASNEWS.COM or an intentional deviation in order to obtain a confusingly similar domain name.

The “.com” suffix denoting second-level domain status in Respondent’s domain name does not affect the fact that the name is confusingly similar to Complainant’s mark pursuant to Policy � 4(a)(i).

B. Rights or Legitimate Interests

Given the Respondent’s failure to submit a Response, the Respondent has not proven that it has any prior rights or legitimate interests in the domain name. The Complainant has asserted that it has not authorized the Respondent’s activities, nor does it have any control over these activities.

Based on the prima facie case which the Panel finds has been established by the Complainant that the Respondent has no rights or legitimate interest in the disputed domain name, and that this has not been rebutted by the Respondent, the Panel finds that the prerequisites in the Policy, paragraph 4(a)(ii) are fulfilled.

C. Registered and Used in Bad Faith

Noting the Respondent’s failure to file a Response, the Panel accepts as credible in the circumstances the allegations of the Complaint in relation to bad faith. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Respondent’s default does not, however, translate into an automatic ruling for the Complainant. To the contrary, the Complainant still must establish that, under the Policy, the Respondent has registered and used the disputed domain name in bad faith.

The circumstances mentioned in paragraph 4(b)(i)-(iv) of the Policy, if found by the Panel to be present, are examples of facts, which constitute evidence of the registration and use of a domain name in bad faith.

The Respondent is using the Complainant’s trademarks on its website at the disputed domain name. Said website appears to be designed to present a list of sponsored links relating to news, jobs, sports, and weather in the Dallas, Texas, metropolitan area.

This conduct would correspond to the circumstances set out in paragraph 4(b)(iv) of the Policy. In order for this paragraph to be applicable the Respondent must have intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.

Furthermore, Respondent in all likelihood has no other relations with Dallas or by conducting business activities in Dallas than by using the domain name and designing the website for visitors in the Dallas, Texas, metropolitan area in view of the fact that no such activities (other than those alleged by the Complainant) have been observed and the fact that Respondent is not a resident or citizen or has any commercial place of business in the area.

The Panel finds that it is difficult to see what the purpose of the Respondent’s registration and use of the domain name would be in this case other than being for commercial gain.

Consequently, the Panelist concludes that the contested domain name has been registered and used in bad faith in accordance with paragraph 4(a)(iii) of the Policy. Therefore, all the prerequisites for cancellation or transfer of the domain name of paragraph 4(i) of the Policy are fulfilled.

 

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 be transferred to the Complainant.

Jonas Gulliksson
Sole Panelist

Dated: August 4, 2006

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