Complainant is Palm Beach Newspapers, L.L.C., Cox Enterprises, Inc. of Atlanta, Georgia, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
Respondent is Gossip Extra Inc. of Vero Beach, Florida, United States of America. 2. The Domain Names and Registrar
The disputed domain names and (the “Domain Names”) are registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2013. On May 29, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On May 31, 2013, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on June 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for the Response was June 12, 2013. Respondent requested for an extension of time to file the Response on June 24, 2013. The Response due date was extended until July 12, 2013. The Response was filed with the Center on July 10, 2013.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on August 6, 2013. 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
Complainant is publisher of The Palm Beach Post newspaper with related online news services. Complainant is the owner of several United States and Florida trademarks including THE PALM BEACH POST, PB PULSE, MYPALMBEACHPOST and PBPULSE. LOG ON. LIVE IT UP. Complainant also claims common law rights in these marks as well as in the marks PB POST and PBPOST. Complainant first used its mark, THE PALM BEACH POST, as early as 1916 in connection with newspaper publications distributed throughout the Palm Beach, Florida area.
Complainant is also the owner of the domain names , , and . Complainant operates a website at “www.”, to which its domain name points. Complainant has also introduced websites located at “www.” and “www.my”.
Respondent registered the domain name on July 21, 2011.
Respondent registered the Domain Names in dispute on July 11, 2012. 5. Parties’ Contentions A. Complainant
Complainant states that over the decades, it has expended millions of dollars marketing and promoting goods and services under its trademarks. It has spent tens of millions of dollars of advertising under the marks and has distributed millions of copies of their publications. In addition, due to extensive promotion, popularity and success, Complainant’s website at “www.” currently averages 1.25 million visits and 8 million page views each week.
(1) The Domain Names are identical or confusingly similar to Complainant’s marks
Complainant states that it has valid rights in its trademarks for use in connection with newspaper publications and online newspaper services, and that it acquired these rights long before the date on which Respondent registered the Domain Names.
Complainant contends that consumers who see the Domain Names will associate them with Complainant, as each Domain Name incorporates Complainant’s PBPOST mark in its entirety. In such cases, Complainant argues that confusing similarity must be presumed. The only differences between the mark PBPOST and the Domain Names are the addition of the generic terms “my” and “extra.” Complainant urges it is well established that likelihood of confusion between a mark and a domain name is not eliminated, or even necessarily reduced, by the addition of such generic terms. Moreover, the Domain Names incorporate components, abbreviations, or an imitation of Complainant’s other marks, and Respondent uses the Domain Names to offer the exact type of online news service as Complainant.
(2) Respondent has no rights or legitimate interests in the Domain Names
Complainant states that the first use and registration of all of its trademarks, THE PALM BEACH POST, PBPOST, PBPULSE, and PBPULSE. LOG ON. LIVE IT UP., predates any use Respondent might have made of the Domain Names as trade names, domain names, marks, or common names. Respondent’s Domain Names were registered on July 11, 2012, almost a century after Complainant first used THE PALM BEACH POST mark, years after Complainant first registered its trademark, years after Complainant began promoting THE PALM BEACH POST online, and years after Complainant first used its remaining marks, including Complainant’s PBPOST mark. Complainant urges that because Complainant has trademark registrations and common law rights that predate Respondent’s Domain Name registrations, Respondent should be charged with constructive knowledge of Complainant’s trademark rights. Additionally, Complainant alleges that Respondent had actual knowledge of Complainant’s trademark rights, because Respondent’s principal, Jose Lambiet, is a former employee of Complainant and therefore, was aware of Complainant’s longstanding use of its marks. Respondent was also aware because Complainant’s websites were operational and accessible to Respondent at the time of Respondent’s registrations.
Complainant argues that since Complainant’s rights in its trademarks long predate Respondent’s registration of the Domain Names, the burden is on Respondent to establish rights or a legitimate interest in the Domain Names. According to Complainant, Respondent cannot demonstrate or establish any such rights or legitimate interest. Complainant has not authorized Respondent to use any of the trademarks nor given Respondent permission to register or use either of the Domain Names. There is no relationship between Complainant and Respondent giving rise to any license, permission, or other right by which Respondent could own or use any of the Domain Names incorporating Complainant’s trademarks. Respondent is not a distributor, dealer, or representative of Complainant’s products or services. Complainant also does not sponsor or endorse Respondent’s activities.
Respondent’s use of the Domain Names draws on the commercial magnetism of Complainant’s trademarks to entice consumers to Respondent’s website located at . Specifically, the site linked to one of the Domain Names in dispute, , has nothing on it but a link to the website for the domain name , while the second Domain Name in dispute, , automatically directs Internet users directly to the “www.” website. This site is operated by Respondent’s principal, J. Lambiet, and offers directly competing goods and services -- newspaper publication and/or online news services. Complainant asserts that in such cases, previous UDRP panels repeatedly have held that use of another’s mark in a domain name creates, at minimum, initial interest confusion, luring unsuspecting Internet users to the infringer’s website offering related or competing products or services.
Complainant states that in view of the extensive use and widespread recognition of its trademarks, and the fact that Respondent has no rights or legitimate interests in these marks, Respondent is not using the Domain Names for any legitimate noncommercial or fair use purpose, but instead for profit. Such use of the Domain Names does not constitute a legitimate, bona fide offering of goods or services. As explained below, Respondent registered and is using the Domain Names with the intent to reap commercial gain by using the Domain Names to lure prospective newspaper customers to the commercial website located at and receiving revenues from advertisements, as shown by ads published on the website for . In addition, according to Complainant the fact that at Respondent registered the Domain Names well after Complainant had made extensive use of its trademarks, and on information and belief, with actual knowledge of Complainant’s marks, establishes that Respondent has no rights or legitimate interest in the Domain Names.
(3) Domain Names were registered and are being used in bad faith
Complainant contends that Respondent intentionally registered and is using the Domain Names in bad faith, for commercial gain and to benefit from the goodwill associated with Complainant’s trademarks. As noted above, Respondent’s principal, and technical and administrative contact, J. Lambiet, is a former employee of Complainant. He worked on publications and allegedly was well aware that the public recognized Complainant’s marks and strongly associated them with Complainant and its publications and websites. Further, the Domain Names were registered in July 2012, when it became known in the Palm Beach, Florida area that Complainant was preparing to launch a new digital website and considering new domain names for it. In fact, Complainant considered and conducted consumer testing on the domain names and . According to Complainant, Respondent’s bad faith registration and use of the Domain Names is thus made clear by the fact that the Domain Names purposefully incorporate Complainant’s PBPOST mark, which is an abbreviation of Complainant’s THE PALM BEACH POST mark, and were registered long after Complainant’s mark became well-known to consumers. Such registration and use of the Domain Names should be considered opportunistic bad faith.
Moreover, Complainant alleges that Respondent uses the Domain Names to divert consumers seeking Complainant’s website to Respondent’s own website linked to , which offers the same type of services as Complainant offers. Respondent diverts consumers by deceiving them and creating confusion as to source or affiliation and to reap commercial benefits by advertising, including click-through advertising, on its website. According to Complainant, this practice has been viewed repeatedly as evidence of bad faith. By registering and using the Domain Names for the purpose of directing Internet users to a competing site, Respondent has intentionally attempted to attract Internet users to its websites for commercial gain by creating a likelihood of confusion with Complainant’s trademarks as to source, sponsorship, affiliation, or endorsement of Respondent’s sites. The Policy specifically identifies such conduct as evidence of bad faith under Paragraph 4(b)(iv). Additionally, as further evidence of bad faith and knowledge of Complainant’s trademarks, Complainant alleges that Respondent is using the Domain Names to tarnish and disparage Complainant by posting unflattering and unfavorable articles about Complainant and its goods and services. B. Respondent
Respondent states that Gossip Extra Inc. was incorporated in Florida on August 8, 2011 and employs one full time employee: J. Lambiet is publisher of Gossip Extra, a news website that covers the area of West Palm Beach, Florida, and receives between 300-400,000 visitors a month for nearly 900,000 page views.
(1)
Respondent states that since Complainant filed its Complaint, Respondent has offered twice to surrender voluntarily to Complainant one of the Domain Names in dispute, . On June 14, 2013, Respondent requested via email that Complainant communicate the procedure for surrender of this Domain Name, but Complainant allegedly failed to do so. Respondent re-states in its Response that this offer continues and it will not renew registration of this Domain Name. However, Respondent urges that the lack of response from Complainant, and the slow pace, shows that this case was filed to harass and place undue pressure on a competitor. If Complainant was worried about this Domain Name, it showed no urgency on claiming it. Respondent states that it now considers ownership of the Domain Name, , to be a moot point, as Respondent would have surrendered it to Complainant without invoking UDRP proceedings.
(2)
With respect to the Domain Name , Respondent contends that it is the aggrieved party, not Complainant. According to Respondent, Complainant is using the Panel’s time and resources to correct the incompetence of Complainant’s web employees, and to harass Respondent, a well-known competitor. Complainant has allegedly undergone deep budget cuts over the past several years and failed to secure this Domain Name despite its parent company, Cox Communications, being well-versed in website ownership with more than 14,000 domain names. Respondent argues that the Domain Name cannot be that important to Complainant if Complainant failed to register it, and noticed only in May 2013 that Respondent had registered it.
Respondent alleges that it has received no revenue from the Domain Name . The name “pbpostextra” does not necessarily refer to Complainant’s The Palm Beach Post. Rather, the abbreviation “pb” refers to Palm Beach and is not trademarked. Many domain names owned by Palm Beach locals use the letters “pb,” including that of county government, such as . Further, “post” signifies a posting on a news website; technology has changed the meaning of the word “post,” which no longer refers only to newspapers. And the word “extra” in the Domain Name is in line with Respondent’s “gossip extra” name.
Respondent states that it purchased the Domain Name legally after learning in July 2012 that Complainant considered using the word “extra” in its new website. The purchase was to protect Respondent from another local news website using a similar word pattern, something that would have confused visitors. While no one owns the word “extra,” making its use open to anyone, Respondent contends that Complainant’s use of the word would undercut Respondent, which is owned by a former loyal employee of Complainant who was one of Complainant’s best known columnists from 2004-2011.
Respondent states that the West Palm Beach media market includes fewer than 500,000 potential readers and is thus limited in scope. Respondent was first in purchasing a domain name with the word “extra” used for a local news outfit. That was on July 12, 2011, more than a year before Complainant considered . Complainant’s consideration of using the word “extra” was a bullying tactic with no goal other than stealing readership for an already established news website of Respondent in a limited market.
Respondent is not a cybersquatter and has not sought compensation from Complainant for the Domain Names. Respondent currently owns four other domain names, all related to the purpose of its existing website located at the domain name . According to Respondent, the Complaint in this case was filed after a number of actions by Complainant designed to make it more difficult for Respondent to operate in West Palm Beach. Since J. Lambiet left Complainant’s employ in April 2011, these actions have allegedly included the “loss” of nearly one year of online news stories and articles authored by Lambiet, which lowered Lambiet’s footprint on the web as he launched Respondent; the unwillingness of Complainant to take down the website at , which continued to use Lambiet’s name and photo for more than a year after Lambiet’s departure, thus confusing local audiences; the use by Complainant of exclusive news stories broken by Respondent, breaching the company’s ethics; instructions by Complainant’s managers to reporters to attempt to bar Lambiet from covering news events; and, despite the filing of this Complaint, Complainant’s failures to respond in a timely manner to emails and attempts by Respondent to communicate, causing Respondent’s request to the Center for an extension of the response deadline.
Respondent argues that this is Complainant’s first complaint of this type, and that Complainant has shown no attempt in the past to file similar complaints against other entities. Complainant filed this Complaint after allegedly making no attempt to discuss the situation with Respondent, thereby unnecessarily placing burden on the Panel. This Complaint is nothing more than an attempt by Complainant to distract Respondent and waste the Panel’s time. Complainant currently runs two operations in West Palm Beach that, according to Respondent, are losing readers and revenues. Complainant has previously faced little or no competition. In the new media landscape, Complainant finds itself under pressure from smaller local media after cutting its staff to a minimum.
Finally, Respondent urges that the Policy was not created to help large corporations like Complainant to undercut, bully and prevent small competitors from flourishing. By filing this Complaint, Complainant is using the Policy to send a message to others like Respondent trying to compete, that going against Complainant is not a good idea. Respondent hopes that the Panel will see through Complainant’s ploy and allow Respondent to keep the Domain Name . 6. Discussion and Findings
The required elements of the Policy are well understood and have been discussed in many prior UDRP decisions. In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar
Complainant has demonstrated trademark rights in its registered marks, THE PALM BEACH POST, PBPULSE, MYPALMBEACHPOST and PBPULSE. LOG ON. LIVE IT UP, all of which pre-date registration of the Domain Names by Respondent. Complainant has also established common law trademark rights in the marks, PB POST and PBPOST, through widespread usage of these terms as abbreviations of Complainant’s full name, both online and off-line, and through use of PBPOST in Complainant’s domain name, , which was registered in 1994. It is the combination of the abbreviation “pb” with the word “post” that is protected, not these terms standing alone.
On their face, the Panel finds that the Domain Names, and , are not identical to Complainant’s trademarks. Instead, the relevant question is whether these Domain Names, which include the common words “my” and “extra”, respectively, in combination with “pbpost”, are confusingly similar to Complainant’s trademark.
The threshold test for confusing similarity under the Policy involves a comparison between the trademark and the domain name itself to determine the likelihood of user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of the common or descriptive term typically being regarded as insufficient to prevent the likelihood confusion. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. Moreover, the addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. UDRP panels have usually found the incorporated trademark to constitute the dominant component of the domain name. See WIPO Overview 2.0, paragraph 1.9, and also F. Hoffmann-La Roche AG v. George McKennitt,WIPO Case No. D2005-1300 (finding that “online” in the domain name is descriptive and that the addition of a descriptive term does not eliminate the confusing similarity between the complainant’s VALIUM trademark and the domain name).
In this case, particularly with the relevant consuming public in mind – news readers in the Palm Beach media market – the Panel finds that confusingly similarity exists. Consumers who see the Domain Names will likely associate them with Complainant, as each Domain Name incorporates Complainant’s PBPOST mark in its entirety while adding the descriptive terms “my” and “extra”. See PepsiCo, Inc. v. PEPSI SRL (a/k/a P.E.P.S.I.) and EMS Computer Indus. (a/k/a EMS),WIPO Case No. D2003-0696 (“incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark”). By contrast and for example, if Respondent had registered a domain name consisting only the abbreviation “pb” and the word “extra” confusing similarity might not have existed, particularly as Respondent’s own website uses the domain name and operates under the title, “Jose Lambiet’s Gossip Extra.”
Accordingly, the Panel finds Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests
A complainant is normally required to make out a prima facie case that respondent lacks rights or legitimate interests in a disputed domain name. Once such prima facie case is made, respondent faces the burden of demonstrating rights or legitimate interests. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
In this case, the Panel finds that Complainant has made a prima facie showing that Respondent has no right or legitimate interests in the Domain Names. First, the Panel observes that Complainant has prior rights in the marks THE PALM BEACH POST, PBPULSE, MYPALMBEACHPOST and PBPOST. At the time when the Domain Names were registered by Respondent, these marks were well established in the Palm Beach area and Respondent’s principal, a former employee of Complainant, has acknowledged in the Response that he was aware of them. Since Complainant’s rights in its trademarks long predate Respondent’s registration of the Domain Names, the burden is on Respondent to establish rights or a legitimate interest in the Domain Names. See PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor,WIPO Case No. D2003-0174.
Respondent’s principal states he was concerned that Complainant might register a domain name with the word “extra” in it, such as , as an unfair tactic in competition with Respondent, who has registered and uses the domain name for its website. It is apparently for this reason that Respondent registered one of the Domain Names in dispute, . Respondent also has listed several other allegations of unfair business practices on the part of Complainant to justify its concerns. The Panelist makes no findings concerning these alleged tactics. Even assuming one or more of these allegations were true, they do not justify in the Panel’s view Respondent’s registration of the Domain Names containing Complainant’s mark, PBPOST, along with the descriptive terms “my” or “extra,” respectively. Respondent must use other valid means of recourse should it have concerns of unfair business practices on the part of Complainant. Indeed, Respondent acknowledges in its Response that, at least with respect to the Domain Name , it is willing to surrender this Domain Name to Complainant and would not, in any case, renew its registration. Respondent contends that Complainant has not cooperated in facilitating this transfer, instead choosing to continue with these UDRP proceedings as a means of harassing Respondent. While the Panel does not doubt Respondent’s offer to transfer, the Panel determines that Complainant was within its rights to continue with this case, rather than negotiate a transfer with Respondent.
The Panel also observes that Respondent is not generally known by the Domain Names, there is no existing relationship between Complainant and Respondent giving rise to any license, permission, or other right by which Respondent could use either of the Domain Names incorporating Complainant’s PBPOST trademark, nor has Respondent made legitimate noncommercial or fair use of the Domain Names. Respondent has argued that should not be viewed as impinging on Complainant’s trademark rights, since “pb” refers to Palm Beach and “post” signifies posting on a website. However, the combination of “pb” with the word “post” in one word is a distinctive aspect of Complainant’s PBPOST trademark. Moreover, the fact that Respondent registered a Domain Name that encompasses not only Complainant’s PBPOST mark, but also the word “extra” which is part of Respondent’s own name, “GossipExtra”, does not lessen the concern over improper use of Complainant’s mark. In addition, the evidence shows that Respondent’s Domain Names are used in connection with a website offering news services that are in competition with Complainant’s offerings. Registering and using the Domain Names in this manner does not constitute use of the Domain Names in connection with a bona fide offering of goods or services, and does not give Respondent rights or legitimate interest in the Domain Names.
For all these reasons, the Panel finds that Respondent has no rights or legitimate interests with respect to the Domain Names under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that Complainant has established bad faith registration and use of the Domain Names by Respondent under paragraph 4(b) of the Policy, based on several factors. First, Respondent incorporated Complainant’s PBPOST trademark into the Domain Names generating confusing similarity, without any justifiable reason for doing so and with knowledge of Complainant and its trademarks. Moreover, Respondent registered the Domain Names on July 11, 2012, years after Complainant commenced using its trademarks – THE PALM BEACH POST, PBPULSE, MYPALMBEACHPOST and PBPOST – in commerce in the Palm Beach area. These circumstances suggest that Respondent intentionally targeted Complainant when it registered the Domain Names.
Second, the Panel finds that Respondent has been using the Domain Name to attract, for commercial gain, Internet users to Respondent’s website linked to the Domain Names in a manner that confuses and misleads Internet users into thinking there is an association between Respondent and Complainant. Moreover, Respondent offers competing new services on its website. See Freedom Flag, Inc., d/b/a Falls Flag & Banner Co. v. Flags Unlimited,WIPO Case No. D2002-0478 (finding bad faith on a showing that respondent used the domain name at issue to redirect the Internet users to its own website where it sold goods competing with those of complainant).
Respondent has urged that the Panel should not, through its decision in this case, provide support to Complainant’s alleged efforts to pressure small competitors such as Respondent, and therefore, should allow Respondent to keep one of the Domain Names in dispute, .
The Panel has decided, however, for all of the reasons discussed above, that both of the Domain Names have been registered and are being used in bad faith, thereby satisfying paragraph 4(a)(iii) of the Policy.
Complainant has requested that both of the Domain Names be transferred to it. The Panel notes that one of the Domain Names in dispute, , contains not only Complainant’s PBPOST common law mark, but also the word “extra”, which draws upon the name Respondent has used for its own business and website, located at “www.”. Respondent registered its domain name in July 2011, approximately one year before it registered the Domain Names. Respondent has not asserted that its name, GossipExtra, has acquired common law trademark rights, nor need this Panel make such a finding. However, the Panel is aware that by addressing Complainant’s concerns in the PBPOST mark through transfer of the Domain Name to Complainant, new concerns might arise regarding the word “extra”, particularly as Complainant and Respondent operate in the same marketplace and within the same region of Florida.
In several prior cases where a complainant has requested the remedy of transfer, and the domain name in question implicated the trademark rights of a third-party, prior UDRP panels have considered this issue and nonetheless ordered transfer of the domain name, without prejudice to any rights that may be asserted by a third party. See NVT Birmingham, LLC d/b/a CBS 42 WIAT-TV v. ZJ,WIPO Case No. D2007-1079; Parrot S.A. v Whois Service, Belize Domain Whois Service,WIPO Case No. D2007-0779; and Société Air France v Domain Park Limited,WIPO Case No. D2007-0818. This approach ensures that the rights of the third party trademark owner are preserved, while the superior rights of the complainant vis-a-vis the respondent who has acted in bad faith are more appropriately vindicated by an order for transfer than by an order for cancellation (which would simply have the effect of putting the domain name back on the open market, available to be registered on a “first come first served” basis by anyone, including potentially the respondent).
The Panel considers that under the circumstances described above, it is proper that the Domain Name be transferred to Complainant. Complainant has satisfied the three elements of the Policy and is therefore entitled to its requested transfer remedy. Any concerns that Respondent might have had do not justify its abusive registration of the Domain Name incorporating Complainant’s PBPOST trademark. However, given the history between the parties and the nature of the Domain Name , if Complainant would elect to use this Domain Name at all, the Panel trusts it would do so in a way that would minimize any perceived interference with third-party interests. To the extent that further disagreements were to arise between the parties in this regard, and depending on the circumstances, the resort to local court options would remain available. 7. Decision
For 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.
Christopher S. Gibson
Sole Panelist
Date: September 22, 2013
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