WIPO Domain Name Decision D2019-3115 for fireislandnews.com, thefireislandnews.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Fire Island News Inc. v. David Capo, SHF Commerce, LLC Case No. D2019-3115 1. The Parties

Complainant is Fire Island News Inc., United States of America (“United States”), represented by Harold G. Furlow, United States.

Respondent is David Capo, SHF Commerce, LLC, United States, self-represented. 2. The Domain Name and Registrar

The disputed domain names and (the “Domain Names”) are registered with DNC Holdings, Inc. (the “Registrar”). 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2019. On December 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 19, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 20, 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 December 25, 2019. On January 11, 2020, the Center received an email communication from Respondent.

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 January 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 2, 2020. Pursuant to paragraph 5(b) of the Rules, the Response due date was extended to February 6, 2020. The Response was filed with the Center on February 4, 2020. A second Response, filed on behalf of a third party, which had previously owned the Domain Names prior to July 2019, was received by the Center on February 7, 2020.

On February 12, 2020, the Center received a supplemental filing from Complainant and a supplemental filing from Respondent. A second supplemental submission was submitted to the Center by Complainant on February 17, 2020. On February 19, 2020, the Center received a second supplemental filing from Respondent.

The Center appointed Robert A. Badgley as the sole panelist in this matter on February 20, 2020. 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.

On February 26, 2000, the third party sent the Center a supplemental filing which included a supplemental affidavit from its owner.

In its discretion, and notwithstanding Complainant’s request that all submissions by the third party be disregarded, the Panel has considered the submissions of this third party. First, Complainant itself named that third party as the initial respondent in this case before filing an amended Complaint and substituting the current Respondent for the third party. The third party understandably hired a lawyer when it appeared as a respondent in the case. Second, the information provided by the third party has provided useful background information to get to the bottom of this dispute. Third, the actual Respondent by itself could have obtained evidence and affidavits from the third party and submitted such materials into the record. That is not an unusual occurrence in cases filed under the UDRP, particularly where the subject domain name has transferred between parties as part of a larger transaction (as occurred here). 4. Factual Background

Complainant Fire Island News Inc. is a New York corporation in good standing since November 3, 2014. In 2014, Laura Mercogliano (“LM”), current President of Complainant, purchased the business comprising the Fire Island News newspaper in her own name and, on June 14, 2019, transferred her ownership interest in the newspaper to the Complainant corporation.

According to the affidavit of LM annexed to the Complaint, LM acquired the newspaper in a state of “disarray” with the intent to “revitalize” the paper, a “long-standing institution” on Fire Island and greater South Bay on Long Island, New York. Complainant states that the Fire Island News has been a seasonal biweekly newspaper since 1957. In 2018, Complainant asserts, it became a year-round Internet-based newspaper “that includes the local news, current events and future events on Fire Island and the nearby Great South Bay of Long Island.”

On October 15, 2019, Complainant registered on the Supplemental Register of the United States Patent and Trademark Office (“USPTO”) the word mark FIRE ISLAND NEWS, Reg. No. 5,887,459, in connection with newspapers, with a date of first use in commerce of June 27, 1959. Annexed to the Complaint are copies of the front page of various editions of the Fire Island News newspaper from 1959 through 2019. The USPTO registration also disclaims any trademark rights in the word “news” contained in the mark.

Complainant alleges that in October 2018, it became aware that Brendan Smith (“Smith”), through his company Market Ready LLC (“Market Ready”) was the owner of the Domain Names. Complainant’s publisher and manager since 2014, Craig Low (“Low”), asserts in an affidavit that Complainant has operated a website since at least 2014 at the domain name , and that the website serves as the online version of Complainant’s newspaper. The website garnered roughly 7,900 monthly visitors from June 2018 to June 2019. According to Low, the lack of the Domain Names was hindering the expansion of Complainant’s online presence, and therefore on October 20, 2018 Low sent an email to Smith asking whether he was interested in selling the domain name (which Smith owned but which is not at issue in this proceeding). Low made no reference to any asserted trademark rights in this missive.

On November 7, 2018, Smith responded by email, offering to sell Complainant not only the two Domain Names but an entire suite of “Fire Island brand” domain names and Facebook pages, such as the domain names and . In this email, Smith listed the market value of the Domain Names and at USD 1,736 and 933, respectively. The total package was valued at USD 265,000.

Smith followed up with two chaser emails over the next two months. On December 27, 2018, Smith emailed Low and indicated that he would be open to selling just the Domain Name , and stated further that he had another “entrepreneur” interested in that Domain Name and other of Smith’s online assets. On January 7, 2019, Smith emailed Low again, reiterating his willingness to sell just the Domain Name since was likely too expensive. Smith repeated that he was in discussions with another party interested in purchasing the Domain Names and most if not all of Smith’s other assets in the “Fire Island brand.”

On January 9, 2019, after conferring with LM, Low sent an email to Smith offering to buy the two Domain Names for USD 1,300 cash and USD 1,000 in “advertising” consideration. Low stated that this was the best that Complainant could offer.

Negotiations continued for several weeks, with Complainant increasing its offer to USD 3,500 for . The record submitted by Complainant appears incomplete, as a January 21, 2019 email from Low to Smith makes reference to “our preliminary agreement” for the purchase of for USD 3,500. The (presumably) prior communication reflecting that “preliminary agreement” is not in the record. In addition, the January 21, 2019 email from Low states that Complainant might, after all, be interested in the purchase of the domain name (despite the fact that the value Smith had put on that domain name in his November 7, 2018 email was USD 46,000).

That same day, January 21, 2019, Smith emailed Low and stated that the other prospective purchaser had offered him USD 50,000 in cash plus a 50% share of the profits in its operation. Smith added that, despite his efforts to “separate” the Domain Names and from the portfolio being offered to this other party, the latter was being insistent on those domain names being included in the global transaction.

On March 6, 2019, Low emailed Smith for a status update, and asked whether he could send Low a USD 3,500 check for the Domain Names.

On March 25, 2019, Smith cut off discussions with Complainant, indicating that he had found another party willing to purchase, for consideration approaching USD 100,000, the Domain Names and the other online assets he had tried to sell to Complainant.

According to the Low affidavit, Low was not aware of Smith publishing any newspaper (online or otherwise) about Fire Island, though Low was aware that Smith did post online informational content regarding Fire Island. It also bears noting that the entire exchange between Smith and Low, described above, was exceedingly friendly and transparent, and that at no time did Complainant assert its trademark rights or claim that Smith was acting in bad faith.

On April 5, 2019, Complainant’s counsel sent an email to Smith, noting that Fire Island News had been published since 1957 and reiterating Complainant’s “reasonable” offer to buy the two Domain Names for USD 3,500. No mention of trademark rights was made.

On May 8, 2019, Complainant’s counsel sent a letter to Smith, this time asserting Complainant’s common law trademark rights to FIRE ISLAND NEWS dating back to 1957. On May 10, 2019, Complainant’s counsel sent an email to Smith demanding a response by May 15, 2019. On May 10, 2019, Smith’s counsel introduced herself to Complainant’s counsel and promised to respond by the end of the month. It is unclear from the record in this case whether Smith’s counsel submitted a formal response by the end of May 2019 or at all.

According to the WhoIs database, the Domain Name was first registered on July 13, 2001, and the Domain Name was first registered on May 27, 2016. Curiously, throughout the Complaint, Complainant states its belief that Smith owned both Domain Names since approximately 2006. Smith contends that he, and later his company Market Ready, owned the Domain Names since 1996. Smith also asserts that he and, later, Market Ready, first registered the domain name in 1997.

Since the 1990s and through mid-2019, Smith, who now lives in California but grew up in the Fire Island area, has been providing on his website (accessible via the Domain Names and via ) “fresh, topical, and helpful information.” Smith asserts that over these years he “has taken thousands of photographs and written thousands of pages of articles and content about Fire Island, which were published on the Domains and also featured” in various online or physical periodicals, such as Travel and Leisure Magazine, The Village Voice, the New York Times, and the New York Daily News. Smith claims to have been a member of the Fire Island surfing community for 30 years. He also claims to have spent “hundreds of thousands of dollars on the Domains and related sites.” He describes his activities vis-à-vis the Domain Names and related websites as a “labor of love.” For a period from 2017 to 2019, he sold tee-shirts at the website, but otherwise has not made commercial use of the site.

Market Ready and Respondent, SHF Commerce, LLC (“SHF” or “Respondent”) entered into an “Asset Purchase and Sale Agreement” (the “Asset Agreement”) effective July 15, 2019, pursuant to which SHF paid USD 85,000 to purchase from Market Ready numerous domain names and other online assets (websites and Facebook pages), including the two domain names at issue in this proceeding. Paragraph D.1.b of the Asset Agreement states in part: “Buyer is aware of a potential legal claim by a third party for solely the domain, FireIslandNews.com.”

Respondent SHF’s owner, David Capo (“Capo”), is also a longtime resident in the Fire Island area. Capo states that he was aware of a physical newspaper called Fire Island News, and that he was aware of several other local periodicals and news sources (such as “www.fireislandtide.net” and “www.shipsholefarm.com”) providing news about Fire Island, including the website that Smith had been operating for years via and the Domain Names. According to SHF, is “the largest news and information source for Fire Island related news in the digital realm.” 5. Parties’ Contentions A. Complainant

Complainant contends that it has established all three elements required under the Policy for a transfer of the Domain Names. B. Respondent

Respondent disputes Complainant’s allegations for various reasons, some of which will be discussed below in the context of one or more of the three elements of the Policy. 6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent 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. A. Identical or Confusingly Similar

The Panel concludes that Complainant has rights in the mark FIRE ISLAND NEWS through use of that mark in commerce as demonstrated in the record for purposes of the Policy. The strength of that mark, which, as noted above, is registered on the USPTO Supplemental Register and not the Principal Register, is not particularly relevant for purposes of this element of the Policy. There is enough evidence in the record to establish that FIRE ISLAND NEWS has been used by Complainant (or its predecessors) in commerce for several decades to identify and distinguish its newspaper.

The Panel concludes further that the Domain Name is identical to Complainant’s mark, and that the Domain Name is confusingly similar to Complainant’s mark. The additional word “the” in this context is of little or no consequence.

Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests

For each of the Domain Names, pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial 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.

The Panel need not address this issue, given its conclusion with respect to bad faith as set forth below. C. Registered and Used in Bad Faith

For each of the Domain Names, paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that Respondent 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 Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Complainant has not carried its burden of proving that Respondent registered and used the Domain Names in bad faith within the meaning of the Policy.

The UDRP is intended to address clear cases of cybersquatting. This is not such a case. The record here demonstrates that Respondent SHF was aware that a physical newspaper Fire Island News existed at the time Respondent acquired the Domain Names in July 2019. At that time, there was no registered trademark for FIRE ISLAND NEWS (on the USPTO Principal Register or otherwise). Respondent also knew at that time that Market Ready, the party from whom it acquired the Domain Names and related online assets, had been providing news and other information related to Fire Island for 20 years, primarily at the website located at the domain name (which domain name was also acquired by Respondent in the Asset Agreement).

It is not unreasonable for Respondent to have concluded that there was some sort of “peaceful coexistence” of Complainant’s newspaper and the established online news source purveyed by Market Ready. It is also not unreasonable for Respondent to have doubted whether Complainant had any viable trademark rights to the mark FIRE ISLAND NEWS, given its inherent weakness – it refers to a newspaper on Fire Island. It bears noting that, throughout most of the communication between Complainant and Market Ready regarding a possible sale of the Domain Names, Complainant did not even assert any trademark rights. When counsel became involved, a tepid assertion of trademark rights was made, and was followed up with a USPTO application to register FIRE ISLAND NEWS on the Supplemental Register.

Thus, although Respondent was aware of the Fire Island News newspaper at the time it acquired the Domain Names, it is not clear from this record that Respondent targeted any trademark and sought to engender consumer confusion through future use of the Domain Names. Indeed, it appears that Respondent’s goal was to carry on the news and information activities of Market Ready and Smith, who had been using the Domain Names for that purpose for many years. This conduct does not add up to bad faith registration and use.

It is entirely possible that, in a trademark infringement lawsuit, where discovery, witnesses, and cross‑examination are available to round out the evidentiary record, and where the elements to be proven differ from those required under the UDRP, Complainant may have a colorable claim against Respondent. Under the UDRP’s “bad faith” standards, however, where “bad faith” is essentially tantamount to “abusive registration and use” of a domain name, the Panel finds that this Complaint falls short.

Complainant has not established Policy paragraph 4(a)(iii). 7. Decision

For the foregoing reasons, the Complaint is denied.

Robert A. Badgley
Sole Panelist
Date: March 5, 2020

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