WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dow Jones & Company Inc. v. Ms. Sorokin
Case No. D2008-0027
1. The Parties
The complainants are Dow Jones & Company, Inc., New York, United States of America, and Dow Jones LP, Massachusetts, United States of America (the complainants are collectively referred to as “Complainant”), represented by the Law Offices of Martin Schwimmer, United States of America.
The Respondent is Ms. Sorokin, having addresses of Walmut [sic] Creek, California and San Antonio, Texas, United States of America.1
2. The Domain Names and Registrar
The disputed domain names and (the “Disputed Domain Names”) are registered with GoD, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2008. On January 21, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the domain names at issue. On January 22, 2008, GoD, Inc. transmitted by email to the Center its verification response denying that Domains by Proxy, Inc. is the registrant, stating that the registrant is in fact Ms. Sorokin, and providing the contact details for Ms. Sorokin. In response to a notification by the Center of a change in registrant information, the Complainant filed an amendment to the Complaint on January 24, 2008. 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 January 25, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 14, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2008.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on February 20, 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 has used the mark THE WALL STREET JOURNAL (the “Mark”) since 1889, and has grown to become one of the country’s largest daily national newspapers, with a global paid circulation of more than 2.9 million in print and online subscriptions. The Complainant has registered the Mark, and marks incorporating the Mark, in 56 countries around the world. The Complainant holds registrations of the Mark in the Principal Register of the United States Patent and Trademark Office, including the following incontestable registrations: 0,408,379 (August 8, 1944); 1,368,347 (October 29, 1985); 1,498,049 (July 26, 1988); and 1,960,159 (March 5, 1996).
The Complainant sells advertising for its online newspaper and employs salespeople who solicit advertising for its online and print editions.
5. Parties’ Contentions
A. Complainant
The following allegations are summarized from the amended Complaint.
The Disputed Domain Names are confusingly similar to the Mark. Each of the Disputed Domain Names incorporates the Mark in its entirety, and adds a descriptive element (“Adonline” and “Advertising”) and the “.com” TLD suffix. The addition of a relevant descriptive term does not distinguish a domain name from a trademark.
The Respondent has no rights or legitimate interest in the Disputed Domain Names and is using the Domain Names to send fraudulent solicitations purportedly originating from the Complainant. The Complainant has the exclusive interest in the Mark and has not given the Respondent permission to utilize it. Further, the Disputed Domain Names have been used to send email solicitations to the Complainant’s customers for ad sales in non-existent special features of the Complainant’s newspapers. These fraudulent email solicitations purport to be from persons identifying themselves as advertising managers of the Complainant. However, neither the individuals nor their identified positions exist at the Complainant. Further, the Disputed Domain Names redirect to the Complainant’s website, having the effect of supporting the deception that the solicitations originate from the Complainant. Such fraudulent solicitations do not constitute a bona fide use of the Disputed Domain Names.
The Respondent registered and is using the Disputed Domain Names in bad faith. The Respondent registered the Disputed Domain Names for the express purpose of defrauding the Complainant’s customers by sending emails soliciting ad sales by masquerading as Complainant’s employees.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service in which the Complainant has rights;
(2) that the Respondent has no rights or legitimate interests in respect to the disputed domain name; and
(3) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is indisputable that the Disputed Domain Names incorporate the Mark in its entirety. The Complainant is engaged in the business of selling advertising in its publications, both print and online. Thus, the addition of the descriptive suffixes “Adonline” (read as “ad online”) or “Advertising” does nothing to reduce the confusingly similar nature. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (November 6, 2001). It is also well established that the addition of a gTLD such as .com does not significantly diminish the confusing similarity. Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Panel notes the following in relation to any possible rights or legitimate interests of the Respondent in the Disputed Domain Names: (i) there is no evidence that the Respondent has been commonly known by the Disputed Domain Names; (ii) the Complainant has not authorized or licensed the Respondent to use the Disputed Domain Names or the Mark; (iii) there is no evidence that the Respondent has any proprietary or contractual rights in any registered or common law trademark consisting of or containing the terms “wallstreetjournaladonline” or “wallstreetjournaladvertising”; (iv) there is no evidence of legitimate, non-commercial or fair use of the Disputed Domain Names.
For these reasons, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the Complainant has satisfied its burden of proof in establishing the Respondent’s bad faith registration and use. Paragraph 4(b)(iv) states that evidence of bad faith may include a respondent’s use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to the respondent’s online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of a product or service offered at said online location.
Due to the undisputed renown of the Mark, it is inconceivable that the Respondent registered the Disputed Domain Names without knowledge of them. Further, the Complainant has shown that the Disputed Domain Names are configured to redirect Internet users to the Complainant’s website. Other panels have found the Mark to be “famous.” See e.g. Dow Jones & Company, Inc. and Dow Jones L.P. v. John Zuccarini, d/b/a Cupcake Patrol,WIPO Case No. D2001-0302 (May 18, 2001).
The Complainant has shown that the Respondent attempted to defraud Internet users by sending email solicitations originating from the Disputed Domain Names and posing as employees of the Complainant. Thus, it is clear that the Respondent attempted to lure, for unlawful commercial gain, Internet users to the Respondent’s fraudulent scheme by creating a likelihood of confusion with the Mark as to the source and affiliation of the emails.
Accordingly, the Panel concludes that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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 names, and be transferred to the Complainant.
Maxim H. Waldbaum
Sole Panelist
Dated: March 5, 2008
1 Although Complainant recites Domains by Proxy, Inc. as an additional respondent, a Whois database inquiry provided by the registrar has clearly established that Domains by Proxy, Inc. is no longer the registrant. Therefore, Domains by Proxy, Inc. is not a proper respondent to this proceeding.
Full & Egal Universal Law Academy