Complainant is Newsmax Media Inc., United States of America (“United States” or “U.S.”), represented by SafeNames Ltd., United Kingdom.
Respondent is WhoisGuard, Inc., Panama / Michael Luckette, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2019. On May 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 16, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 17, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 17, 2019. The Center received a communication from Respondent on May 17, 2019.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2019. On May 30, 2019, Respondent requested an extension of time for filing the Response in accordance with the Rules, paragraph 5(6). Respondent was granted an automatic four calendar day extension for the Response, and the due date for the Response was updated to June 20, 2019. The Response was filed with the Center on June 19, 2019.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on July 12, 2019. 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, Newsmax Media Inc., is a multi-media, broadcasting and digital publishing company that is based in the in the state of Florida, United States. Complainant uses the name and mark NEWSMAX in connection with its news services and for an online conservative newspaper. Complainant owns trademarks registrations for its NEWSMAX mark for its services in the United States, the earliest of which issued to registration on November 28, 2006 (Registration No. 3177090) and in the European Union, which issued to registration on October 24, 2012 (Registration No. 010951102). Complainant also owns the domain name which it has used since 1998 for an online news website.
Respondent, Michael Luckette, is an individual residing in the United States in the state of Florida, United States. Respondent registered the disputed domain name on May 1, 2018. Respondent has used the disputed domain name for a website that contains news articles on various topics along with advertisements for various third party products and services.
Complainant’s representative sent Respondent a demand letter on June 4, 2018. Respondent apparently did not respond to the letter and a further letter was sent to Respondent on June 13, 2018. Respondent replied that day to the demand letter and advised as follows: “I own the domain name free & clear. Your client can buy the domain from me at my asking price if they wish.” Complainant responded to Respondent on June 15, 2018 reasserting its demands. Respondent did not respond and there were no further communications between the parties. The disputed domain name does not currently resolve to an active website or web page. 5. Parties’ Contentions A. Complainant
Complainant asserts that its NEWSMAX political news website, print magazine and cable television news channel are well-known and influential news sources. Complainant maintains that the NEWSMAX mark is distinctive and suggestive of Complainant and its news related services and has acquired widespread consumer goodwill.
Complainant argues that the disputed domain name is identical to Complainant’s NEWSMAX mark as it fully and solely consists of the identical NEWSMAX mark with the non-distinguishing generic Top-Level Domain (“gTLD”) “.site.”
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) has no trademark rights in the NEWSMAX mark, (ii) is not commonly known by the term “newsmax,” and (iii) has used the disputed domain name with a website that has posted news articles taken from a competitor of Complainant. In that regard, Complainant asserts that Respondent is using the disputed domain name to misleadingly divert consumers to a website that contains competing news articles and links to third party products or services for Respondent’s profit.
Lastly, Complainant argues that Respondent has registered and is using the disputed domain name in bad faith as Respondent was likely aware of Complainant when he registered the disputed domain name that is identical to Complainant’s NEWSMAX mark in order to offer competing services. Complainant maintains that this is particularly so in view of the fact that Respondent posted articles on the website at the disputed domain name that were pulled from a competing conservative online newspaper. Complainant further argues that Respondent has acted in bad faith as Respondent failed to provide any substantive response to Complainant’s demand letters and instead only sought a payment from Complainant for the disputed domain name. Finally, Complainant contends that Respondent’s bad faith is established by the fact that Respondent registered the disputed domain that is based on Complainant’s NEWSMAX to divert consumers to Respondent’s website for purposes of generating advertising revenue for the benefit of Respondent. B. Respondent
Respondent contends that he purchased the disputed domain name in 2018 as part of a domain name package that consisted of several domain names through an auction website at . Respondent maintains that an individual who is not a party to this proceeding provided the domain names and the set-up and hosting of the associated websites for a fee. Respondent asserts that his goal for the domain names he purchased is to run websites at the domain names in order to build their viewership and monetize them as an income source.
Respondent contends that it would be a hardship for him to make any changes at this time and that his goal is to maintain the disputed domain name as his primary domain name. Respondent argues that he has not acted in bad faith and did not register the disputed domain name as part of a plot to resell the disputed domain name at a high price or to take advantage of the NEWSMAX brand. Respondent asks that the proceeding be suspended so that the parties can enter into settlement talks to find a mutually satisfactory resolution.
Complainant has not sought a suspension of the matter and there does not appear to have been any settlement negotiations between the parties. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Complainant has provided evidence that it owns and uses the NEWSMAX mark in connection with its news related services. Complainant has also provided evidence that it owns trademark registrations for the NEWSMAX mark in the United States, where Respondent is located, well before Respondent registered the disputed domain name.
With Complainant’s rights in the NEWSMAX mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the gTLD such as “.com” or “.site”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally UDRP panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, the disputed domain name is identical to Complainant’s NEWSMAX mark as it incorporates and solely consists of the NEWSMAX mark in its entirety in the disputed domain name with the non-distinguishing gTLD “.site.” The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s NEWSMAX mark and in showing that the disputed domain name is identical or confusingly similar to that trademark. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
Based on the evidence submitted in this proceeding, it appears that Respondent has only used the disputed domain name in connection with a website that included links to third-party news articles and advertising for third party products and services. While Respondent maintains that the website at the disputed domain name was set up by another party on his behalf, the fact remains that Respondent as the owner of the disputed domain name is responsible for what appears at the disputed domain name. Respondent has made clear in its submissions that his purpose in registering and using the disputed domain name is to monetize the traffic that flows through the website at the disputed domain name to create an income source for the benefit of Respondent. Consequently, it seems apparent to the Panel that Respondent was well aware of what was posted at the disputed domain name and likely approved of such.
Based on the evidence submitted it seems more likely than not that Respondent registered the disputed domain name in order to attract web users to his website for profit based on its relation to Complainant’s mark and website which features its own news articles.
Although Respondent may believe that his actions are legitimate insofar as he “aggregates” news links and maintains that his “purchase of the NEWSMAX.SITE domain was in NO WAY an unscrupulous plot to resell for a high price using the name of NewsMax unfairly,” it is well established that registering and using a domain name that fully and solely consists of another’s trademark to offer the very service associated with that trademark for profit is simply not a bona fide use nor one that would support a legitimate interest. WIPO Overview 3.0 at section 2.5.3. This is particularly so, where as here Complainant has used its NEWSMAX mark for some 20 years in connection with online, television and print news services and has developed a reputation in the NEWSMAX mark as a source of news services.
Given that Complainant has established with sufficient evidence that it owns rights in the NEWSMAX mark, and given Respondent’s above-noted actions, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case. C. Registered and Used in Bad Faith
Given that Respondent has registered the disputed domain name that fully incorporates Complainant’s NEWSMAX mark, and then used the disputed domain name for a competing website that included third-party news articles and advertisements, it is easy to infer that Respondent was likely well aware of Complainant’s mark when Respondent registered the disputed domain name. Given Complainant longstanding prior use of the NEWSMAX mark for an online news website, print magazine and cable channel, the disputed domain name is likely to be viewed by consumers as linked to Complainant and/or to a news website operated by or somehow connected to Complainant. This is particularly so given that the gTLD extension “.site” in connection with the NEWSMAX mark suggests a website connected to Complainant’s NEWSMAX mark. That association is actually strengthened by the fact that the website at the disputed domain name competes with the very service provided by Complainant, particularly as Complainant owns the domain name , which it has used with its news services since 1998.
Based on the evidence before the Panel, Respondent’s actions make it more likely than not that Respondent opportunistically registered and used the disputed domain name, which is based on Complainant’s NEWSMAX mark, to intentionally and misleadingly attract Internet users to Respondent’s website for Respondent’s own profit. The Panel notes Respondent’s attempt to claim that his actions were undertaken in good faith to create an income source, suggests that Respondent may not fully understand the import of his own actions, or indeed of UDRP and trademark law principles. It is well established that registering and using a domain name that is identical to another’s pre-existing trademark to attract web users to a website that offers the very same services associated with another’s trademark constitutes bad faith. WIPO Overview 3.0 at section 3.1.4 (and case cited therein).
Accordingly, the Panel finds that Complainant succeeds under this element of the Policy. 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 disputed domain name be transferred to Complainant.
Georges Nahitchevansky
Sole Panelist
Date: July 29, 2019
Full & Egal Universal Law Academy