Dow Jones & Company, Inc. v. John Alias
Claim Number: FA2011001921038
Complainant is Dow Jones & Company, Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is John Alias (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <digitalwallstreetjournal.com>, registered with Key-Systems GmbH.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 17, 2020; the Forum received payment on November 17, 2020.
On November 19, 2020, Key-Systems GmbH confirmed by e-mail to the Forum that the <digitalwallstreetjournal.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 23, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 14, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@digitalwallstreetjournal.com. Also on November 23, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 21, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, Dow Jones & Company, Inc., offers news and information services in print and online under THE WALL STREET JOURNAL brand. Complainant has rights in the THE WALL STREET JOURNAL mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,298,327, registered on March 5, 2013). See Compl. Ex. 7. Respondent’s <digitalwallstreetjournal.com> domain name is confusingly similar to Complainant’s mark because it incorporates virtually the entire THE WALL STREET JOURNAL mark and simply adds the term “digital” and the “.com” generic top level domain (“gTLD”) to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <digitalwallstreetjournal.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the THE WALL STREET JOURNAL mark. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain to host a competing news website.
Respondent registered and uses the <digitalwallstreetjournal.com> domain name in bad faith. Respondent disrupts Complainant’s business and diverts users away from Complainant’s website to Respondent’s own competing news website. Additionally, Respondent uses the disputed domain name to attract users for commercial gain by creating confusion with Complainant as to the source, affiliation, and endorsement of Respondent’s competing news website. Furthermore, Respondent has constructive and/or actual knowledge of Complainant’s rights in the THE WALL STREET JOURNAL mark based on the fame of the mark and Respondent’s use of the disputed domain name to offer a competing service.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that offers news and information services in print and online under the THE WALL STREET JOURNAL brand.
2. Complainant has rights in the THE WALL STREET JOURNAL mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,298,327, registered on March 5, 2013).
4. Respondent registered the disputed domain name on June 23, 2020.
5. Respondent uses the domain name to host a competing news website.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has a trademark or service mark on which it may rely in this proceeding.Complainant submits that it has rights in the THE WALL STREET JOURNAL mark based on registration with the USPTO (e.g., Reg. No. 4,298,327, registered on March 5, 2013). See Compl. Ex. 7. Registration of a mark with the USPTO is a valid showing of rights in a mark. See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the THE WALL STREET JOURNAL mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s THE WALL STREET JOURNAL mark. Complainant argues that Respondent’s <digitalwallstreetjournal.com> domain name is confusingly similar to Complainant’s mark because it incorporates virtually the entire THE WALL STREET JOURNAL mark and simply adds the term “digital” and the “.com” gTLD. The addition of a generic or descriptive term and a gTLD to a mark does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); see also eBay Inc. v. eBay Motors, FA 1731822 (Forum June 26, 2017) (holding that “words like ‘online,’ which pertain to a complainant’s trademark-related activities—fails to sufficiently distinguish domain names from registered marks.”). Complainant notes that the term “digital” heightens the confusing similarity of the disputed domain name because it refers to Complainant’s digital editions of THE WALL STREET JOURNAL newspaper. Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s THE WALL STREET JOURNAL mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
(a) Respondent has chosen to take Complainant’s THE WALL STREET JOURNAL trademark and to use it in its domain name, simply adding the term “digital”, which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the disputed domain name on June 23, 2020;
(c) Respondent uses the domain name to host a competing news website;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <digitalwallstreetjournal.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use Complainant’s THE WALL STREET JOURNAL mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a mark constitutes a further showing that a respondent lacks rights in a mark. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). Here, the WHOIS information lists “John Alias” as the registrant and no information suggests Complainant has authorized Respondent to use the THE WALL STREET JOURNAL mark in any way. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use and instead uses the domain name to offer a competing news website. The use of a disputed domain name to offer competing goods and services does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the resolving website for the disputed domain name that includes articles copied from third-party news websites and directly competes with the news services Complainant offers. See Compl. Exs. 4, 8, 9 & 10. Thus, the Panel agrees with Complainant and finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <digitalwallstreetjournal.com> domain name in bad faith because Respondent disrupts Complainant’s business and diverts users away from Complainant’s website to Respondent’s own competing news website. Under Policy ¶ 4(b)(iii), the use of a disputed domain name to offer competing goods or services that disrupt a complainant’s business and divert consumers is evidence of bad faith. See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products). The Panel notes that Complainant provides screenshots showing the disputed domain name features various news articles copied from third-party sources that directly compete with the news services Complainant offers at its own website. See Compl. Exs. 4, 8, 9 & 10. Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iii).
Secondly, Complainant argues that Respondent uses the disputed domain name to attract users for commercial gain by creating confusion with Complainant as to the source, affiliation, and endorsement of Respondent’s competing news website. Per Policy ¶ 4(b)(iv), the use of a disputed domain name to attract consumers for commercial gain by suggesting an affiliation with a complainant indicates bad faith. See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Complainant provides evidence that Respondent likely profits from attracting Internet users to its competing website through advertisement revenue. See Comp. Ex. 10. Thus, as the Panel agrees with Complainant, the Panel finds bad faith per Policy ¶ 4(b)(iv).
Thirdly, Respondent had constructive and/or actual knowledge of Complainant’s rights in the THE WALL STREET JOURNAL mark prior to registration of the disputed domain name based on the fame of the mark and Respondent’s use of the disputed domain name to offer a competing service. While constructive knowledge is insufficient for a finding of bad faith, actual knowledge may be found when a mark is famous and based on the use made of the disputed domain name. See The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith."); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name"); see additionally Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Therefore, as the Panel finds that Respondent has actual knowledge of Complainant’s rights in the THE WALL STREET JOURNAL mark, the Panel also finds bad faith under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <digitalwallstreetjournal.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 23, 2020
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