The Complainant is Gannett Satellite Information Network, LLC, United States of America, represented by Rankin, Hill & Clark LLP, United States of America.
The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Margare Hilld, India.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2021. On October 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, 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 the Complainant on October 22, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 27, 2021.
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” 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 the Respondent of the Complaint, and the proceedings commenced on October 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 23, 2021.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on November 29, 2021. 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 BackgroundThe Complainant is an American company which operates USA Today, an American daily middle-market newspaper. The newspaper is printed at 37 sites across the United States of America and at five additional sites internationally. The newspaper has been ranked first by circulation on the list of newspapers in the United States of America, with a digital-only subscriber base of 504,000 and an estimated daily readership of 2.6 million. The Complainant also maintains a strong online presence with its official website “www.usatoday.com”.
The Complainant is the owner of the USA TODAY trade mark (Reg. No. 1,332,045) registered in the United States of America on April 23, 1985 for use in connection with “daily newspapers containing news of general interest” in International Class 16, and another USA TODAY trade mark (Reg. No. 3,361,301) registered in the United States of America on January 1, 2008 for use in connection with “providing news, current events and general interest information via the Internet” in International Class 41. As mentioned above, the Complainant also operates and owns the domain name
The Disputed Domain Name was registered on May 18, 2021. The Disputed Domain Name currently resolves to an inactive website. According to the Complaint, as shown from Annex 5 submitted by the Complainant, the Disputed Domain Name previously resolved to a website displaying pornographic material.
5. Parties’ Contentions A. ComplainantThe Complainant’s primary contentions can be summarised as follows:
(a) The Disputed Domain Name is identical to the Complainant’s USA TODAY trade mark, which has been wholly incorporated into the Disputed Domain Name;
(b) The Complainant has never authorised or given permission to the Respondent, who is not associated with the Complainant in any way, to use its USA TODAY trade mark. The website to which the Disputed Domain Name resolves contains pornographic content and therefore has never been used, and has not been put into use, by the Respondent for any bona fide offering of goods or services. The Respondent was also not commonly known by the Disputed Domain Name. Therefore, the Respondent has no rights or legitimate interests in the Disputed Domain Name; and
(c) The Respondent’s registration of the USA TODAY trade mark as a domain name is a clear indication of bad faith as the website to which the Disputed Domain Name resolves publishes pornographic content for commercial gain, which tarnishes the Complainant’s USA TODAY trade mark and damages the Complainant’s goodwill in this mark. The Disputed Domain Name is also clearly allusive of the Complainant’s well-known USA TODAY trade mark and product, and its use by the Respondent, with no connection to the Complainant or the USA TODAY trade mark or product, suggests opportunistic bad faith. As such, the Disputed Domain Name was registered and has been used by the Respondent in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favour of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default.
The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complainant as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403).
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith.
A. Identical or Confusingly SimilarThe Panel accepts that the Complainant has rights in the USA TODAY trade mark, based on its various trade mark registrations.
It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the Top-Level Domain (“.club” in this case) may be disregarded. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
In this case, the Disputed Domain Name wholly incorporates and is identical to the Complainant’s USA TODAY trade mark.
As such, the Panel finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s USA TODAY trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate InterestsOnce a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.
The Panel accepts that the Complainant has not authorised the Respondent to use the USA TODAY trade mark, and there is no relationship between the Complainant and the Respondent, which would otherwise entitle the Respondent to use the USA TODAY trade mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to him of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services;
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence to suggest that the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services, since the Disputed Domain Name resolves to a website that contained pornographic content. The Panel agrees with the Complainant that such use of the Disputed Domain Name does not constitute a bona fide offering of goods and services in this case. The Panel also agrees with the Complainant that, even assuming that the Respondent had been engaged in legitimate business activities related to the marketing and promotion of lawful adult content, there is no apparent or legitimate reason for the Respondent’s selection of a domain name containing the USA TODAY trade mark for a website advertising pornographic material.
In addition, no evidence has been provided to show that the Respondent has trade mark rights corresponding to the Disputed Domain Name, or that the Respondent has become known by the Disputed Domain Name.
Furthermore, the nature of the Disputed Domain Name, being identical to the Complainant’s USA TODAY trade mark, carries a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithUDRP panels have consistently found that the mere registration of a domain name that is confusingly similar to a widely-known trade mark by an unaffiliated entity can already by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.
The Complainant’s USA TODAY trade mark is fairly well-known. A quick Internet search conducted by the Panel shows that the top search results returned for the keywords “usa today” are the Complainant’s websites and third party websites providing information relating to the Complainant’s newspaper business. The Panel therefore finds that the Respondent must have been aware of the Complainant and their rights in the USA TODAY trade mark. As such, the fact that the Disputed Domain Name incorporates the Complainant’s USA TODAY trade mark in its entirety creates a presumption of bad faith.
In addition, the Panel finds that the following factors further support a finding that the Disputed Domain Name has been registered and is being used by the Respondent in bad faith:
(i) the Respondent failed to respond to the Complainant’s contentions and has provided no evidence of any actual or contemplated good faith use by it of the Disputed Domain Name;
(ii) it is difficult to conceive of any plausible use of the Disputed Domain Name that would amount to good faith use, given that the Disputed Domain Name is identical to the Complainant’s USA TODAY trade mark, and that the website to which the Disputed Domain Name resolves contained adult content; and
(iii) any use of the Disputed Domain Name would likely mislead Internet users into believing the Disputed Domain Name is associated with the Complainant, particularly given that the Disputed Domain Name is identical to the Complainant’s domain name
In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.
7. DecisionFor 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
Gabriela Kennedy
Sole Panelist
Date: December 13, 2021