ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION MediaNews Group, Inc. v. gaza gaz, Solo Toto, Solototo, Inc Case No. D2024-1622 1. The Parties The Complainant is MediaNews Group, Inc., United States of America (“United States”), internally represented. The Respondents are gaza gaz, United States, and Solo Toto, Solototo, Inc, United States. 2. The Domain Names and Registrar The disputed domain names and are registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2024. On April 18, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 18, 2024, 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 Respondents (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 19, 2024, 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 amended Complaint on April 19, 2024. 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 the Respondents of the Complaint, and the proceedings commenced on May 1, 2024. In accordance with the Rules, paragraph 5, the due date for Responses was May 21, 2024. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on May 24, 2024
page 2 The Center appointed William F. Hamilton as the sole panelist in this matter on May 30, 2024. 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 one of the largest media groups in the United States. The Complainant has utilized the trademark MEDIANEWS GROUP (the “Mark”) since 1986. The Complainant publishes over 68 daily newspapers and hundreds of weekly publications throughout the United States. The Complainant owns numerous registrations with the United States Patent and Trademark Office for the Mark. The Complainant’s first registration of the Mark with the United States Patent and Trademark Office is dated October 9, 1990, bearing Registration No. 1,616,671. The disputed domain name was registered on October 18, 2023. The disputed domain name was registered on March 19, 2024. The disputed domain names do not resolve to active websites; however, email addresses associated with the disputed domain names have been used in fraudulent schemes directed at the Complainant’s advertising clients. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names. Notably, the Complainant contends that the disputed domain names are confusingly similar to the Mark because each of the disputed domain names merely omit a single letter of the Mark in addition to omitting the space between the words of the Mark. The Complainant asserts that the Complainant never authorized the Respondents to use the Mark or to register the disputed domain name, that the Respondents are not commonly known by the disputed domain names, and never engaged in any bona fide commercial activity or legitimate noncommercial or fair use in connection with the disputed domain names. The Complainant asserts that the Respondents knew of the Mark and has registered and used the disputed domain names in bad faith to implement an illegal scheme to defraud the Complainant and the Complainant’s advertising clients. B. Respondents The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names were registered and are being used in bad faith. The Panel finds that claims regarding the disputed domain names are properly consolidated in this proceeding. The disputed domain names are similarly composed by omitting a single letter in the Mark: the disputed domain names were registered within a few months of each other; both registrations used privacy services and the same registrar; the disputed domain names have been involved in similar fraudulent
page 3 schemes involving impersonating the same Complainant’s employees; and the names of the Respondents are both apparently nonsensical and suspicious. The Panel further finds that the Respondents will not suffer any prejudice by consolidation and that consolidation will assist in expeditiously resolving the claims in this proceeding. A. Identical or Confusingly Similar It is well-accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in the Mark for the purposes of the Policy by virtue of the Mark’s registration. WIPO Overview 3.0, section 1.2.1. The disputed domain name omits the letter “s” from the Mark, and the disputed domain name omits the letter “a” from the Mark. The disputed domain names also omit the space between the two words of the Mark. These slight alternations between the disputed domain names and the Mark are insufficient to avoid a finding that the disputed domain names are confusingly similar to the Mark. The Panel finds that the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondents may demonstrate rights or legitimate interests in a disputed domain names. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative,” requiring information that is often primarily within the knowledge or control of the respondent. As such, where a makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain name. The Respondents have not rebutted the Complainant’s prima facie showing and have not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise. Moreover, the use of the disputed domain names to implement the fraudulent schemes presented here does not confer rights or legitimate interests on the Respondents. WIPO Overview 3.0, section 2.13.1. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Panels have held that the use of a domain name for illegal activity, such as is the case here where persons impersonating representatives of the Complainant are attempting to defraud the Complainant’s customers into making erroneous payments, constitutes bad faith registration and use. WIPO Overview 3.0, section
page 4 3.4. The annexes attached to the Complaint demonstrate the use of the disputed domain names in fraudulent email addresses used to communicate with the Complainant’s advertisers. The Panel finds that the Complainant has established the third 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 names and be transferred to the Complainant. /William F. Hamilton/ William F. Hamilton Sole Panelist Date: June 12, 2024
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