WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION News Holdings Limited v. Claude Berger Case No. D2009-1178 1. The Parties
The Complainant is News Holdings Limited of Sydney, Australia, represented by Hogan & Hartson L.L.P., United States of America.
The Respondent is Claude Berger of New York, United States of America. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2009. On September 7, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 8, 2009, the Registrar transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 September 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 5, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 7, 2009.
On October 8, 2009 the Respondent emailed the Center in the following terms:
“I don't have a lawyer and I'm not sure what is happening here. How do I proceed? I've been deluged with documents from News Corp but I have no idea what rights they have to simply take a website that cost us time and money to put up. Please advise.”
On October 9, 2009 the Center acknowledged receipt of the above email and informed the Respondent that it would be drawn to the Panel's attention. No other communication from the Respondent has been received by the Center.
The Center appointed Tony Willoughby as the sole panelist in this matter on October 21, 2009. 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 is a member of the internationally well-known media group, News Corporation, headed by an Australian corporation of that name. The Complainant is a wholly owned subsidiary of News Corporation and is the owner of the trade marks and the domain names of News Corporation
The unchallenged evidence of the Complainant as set out in the Complaint and as supported by the findings of several panels in previous proceedings under the Policy in which the Complainant has featured (e.g., News Holding Limited v. Steve Kerry/ WWW Enterprise, Inc.,WIPO Case No. D2006-1374 and News Holdings Limited, Dow Jones & Company, Inc. and Dow Jones, LP v. noblemay,WIPO Case No. D2008-0220) is that the Complainant has registered and unregistered trade mark rights in respect of, inter alia, the name “News Corp” going back several years. Its domain names include and .
The Domain Name was registered on October 3, 2008.
On October 16, 2008 PR News Corporation (see next paragraph) issued a press release in which it gave as its address 1211 Avenue of the Americas, New York, NY 10036, which is an address of News Corporation.
On November 11, 2008 the Domain Name was connected to a website purporting to be that of PR News Corporation of that same address in New York.
On December 10, 2008 the Complainant's representatives wrote to the Respondent drawing the Respondent's attentions to the Complainant's rights and seeking, inter alia, immediate transfer of the Domain Name. No reply having been received, a follow-up chaser was sent on December 23, 2008.
On December 24, 2008 the Respondent replied in the following terms:
“Hi there --
I'm sorry I've had a health problem and I've been a bit behind on my work, which is why this has waited until christmas eve.
We are a really small company and i haven't had the time or law knowledge to digest what you've sent me. Our intent was for our company to be a ‘news company' as an agent between our clients and the news media. ‘News Corporation' is a huge, all encompassing designation. Granted you do live up to the name, but what about other news companies or corporations? Who is the judge of difference between what is a ‘proprietary name' and simply a string of nouns?
I'm curious how you even heard about us. I will send you our customer survey. That is a joke. But I'm not sure how to proceed from here. What if we were ‘PR News, a Corporation'? Where does one draw the line?
Curiously yours,
Claude Berger”
The Panel has not been provided with the response of the Complainant's representatives. However, the correspondence appears to have petered out with the Respondent stating in an email of January 13, 2009: “Hi all – Letting you know that we've received this and are looking for a way to seamlessly move our site to a new location. We're still working out the details, so please have patience. Thank you, Claude”.
The Domain Name registration expired on October 3, 2009. The Respondent was given an opportunity to renew it, but does not appear to have availed himself of that opportunity. The Complainant has been in touch with the Registrar and “has submitted a snap request to register the subject domain name should the current registrant fail to renew it himself”. The Registrar has confirmed that the Domain Name will not be dropped pending the outcome of the Complaint.
On November 1, 2009 the PR News Corporation website to which the Domain Name was connected featured links to 10 news stories, all being stories from the site of Times-Herald Record, a newspaper owned by the Complainant. The site describes PR News Corporation as follows:
“PR News Corporation is a global leader in news and information distribution services for professional communicators, providing media intelligence communications to a wide variety of clients. We help Fortune 500 companies and small firms, PR agencies, non-profits and governmental organizations in areas of public relations, investor relations, marketing, and corporate communications. With multi-national leverage and the experience that counts, what can PR News Corp do for you?” 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to the Complainant's NEWS CORP trade mark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. On the day following the date by which the Response had to be filed with the Center the Respondent emailed the Center in the terms quoted in Section 3 above. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith. B. Identical or Confusingly Similar
The Domain Name features the Complainant's trade mark NEWS CORP (absent the space) together with the prefix “PR” and the generic “.com” domain suffix. Neither the prefix nor the suffix (alone or in combination) serves to distinguish the Domain Name from the Complainant's well-known NEWS CORP trade mark. The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests
As is apparent from the factual background set out in section 4 above, the Respondent knew of the Complainant when he registered the Domain Name (reference the press release issued a few days after registration, giving the News Corporation's New York address as the address of his business). Moreover he then set out to further associate his business with that of the Complainant not only by continuing to use the name PR News Corporation for his business, but also by (a) featuring the New York address of News Corporation on his website (b) describing his business in terms apt to describe the Complainant, rather than his own, which he acknowledged in correspondence to be a really small business and (c) featuring on his website links to stories exclusively derived from one of the Complainant's journals, Times-Herald Record.
With that factual background, the Respondent cannot conceivably be said to have any rights or legitimate interests in respect of the Domain Name. The Panel notes that in correspondence the Respondent has expressed a willingness to move his website to a new location and appears to have taken no steps to renew the Domain Name registration (see section 4 above).
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
Illustrations of what shall constitute evidence of registration and use in bad faith for the purposes of paragraph 4(a)(iii) of the Policy are set out in paragraph 4(b) of the Policy.
The Respondent, who on his own admission is in the news business, registered the Domain Name with full knowledge of the Complainant. He has been making a business use of the Domain Name, a name confusingly similar to the Complainant's well-known NEWS CORP trade mark, and in a manner calculated to deceive Internet users. His use of News Corporation's New York address as his business address in an early press release and subsequently on his website says it all. He was seeking to build his business on the back of the reputation and goodwill of the Complainant.
The Respondent has not challenged any of the Complainant's allegations. His email of October 8, 2009 (quoted in full in section 3 above) was disingenuous. He had had ample opportunity since receipt of the Complainant's representatives' letter of December 10, 2008 to digest the Complainant's contentions and, if necessary, take the appropriate advice.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) 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 Name, , be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Dated: November 3, 2009
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