WP Company LLC v. Jestin Coler / DisInfoMedia Inc
Claim Number: FA1509001636671
Complainant is WP Company LLC (“Complainant”), represented by Monica Riva Talley of Sterne, Kessler, Goldstein & Fox PLLC, District of Columbia, USA. Respondent is Jestin Coler / DisInfoMedia Inc (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <washingtonpost.com.co>, registered with GoDaddy.com, LLC.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 4, 2015; the Forum received payment on September 4, 2015.
On September 9, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <washingtonpost.com.co> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 September 15, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 5, 2015 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@washingtonpost.com.co. Also on September 15, 2015, 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 October 13, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the THE WASHINGTON POST trademark (e.g., Reg. No. 1,665,831, registered Nov. 26, 1991), as well as the WASHINGTONPOST.COM trademark (Reg. No. 2,346,367, registered May 2, 2000). The marks are used in connection with the sale of Complainant’s newspaper “The Washington Post.” The <washingtonpost.com.co> domain name is confusingly similar to the THE WASHINGTON POST trademark because the domain name contains the dominant portion of the mark, differing only by the removal of article “THE,” the addition of the generic top-level domain (“gTLD”) “.com,” and the country code top-level domain (“ccTLD”) “.co.” The domain name is also confusingly similar to the WASHINGTONPOST.COM trademark because the domain name contains the entire mark and differs only by the addition of the ccTLD “.co.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known as the domain name, nor is Respondent a licensee of Complainant. Further, because Respondent is operating a competing website with fake news content, the domain name is not being used in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has engaged in bad faith registration and use. Respondent is
disrupting Complainant’s business and attempting to commercially profit off of
the creation of a likelihood of confusion by including fake news articles on
its site that serve as “click bait” to drive Internet users to third-party
sites. Respondent’s activities also constitutes typosquatting.
B. Respondent
Respondent failed to submit a formal Response in this proceeding.
Preliminary Issue: Consent to Transfer
Although Respondent consents to transfer the <washingtonpost.com.co> domain name to Complainant, Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel. See Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Nat. Arb. Forum July 17, 2008)(“Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.”). The “consent-to-transfer” approach is a way for cybersquatters to avoid adverse findings against them. Therefore, the Panel will analyze the case under the elements of the UDRP.
Complainant, WP Company LLC, owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the THE WASHINGTON POST trademark (e.g., Reg. No. 1,665,831, registered Nov. 26, 1991), as well as the WASHINGTONPOST.COM trademark (Reg. No. 2,346,367, registered May 2, 2000). The marks are used in connection with the sale of Complainant’s newspaper “The Washington Post.”
Respondent, Jestin Coler / DisInfoMedia Inc, registered the <washingtonpost.com.co> domain name on November 21, 2014. Respondent is using the <washingtonpost.com.co> domain name for a fake news and fake topical content website that is similar in appearance and layout to the news and other content on <washingtonpost.com>.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has rights in THE WASHINGTON POST and the WASHINGTONPOST.COM trademarks under Policy ¶ 4(a)(i) through registration with the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
The <washingtonpost.com.co> domain name is confusingly similar to both the THE WASHINGTON POST and WASHINGTONPOST.COM trademarks. The domain name contains almost the entire THE WASHINGTON POST mark, differing only by the removal of article “THE,” the addition of the gTLD “.com,” and the ccTLD “.co.” The domain name contains the entire WASHINGTONPOST.COM mark, with the only difference consisting of the “.co” ccTLD.
Respondent is not commonly known by the <washingtonpost.com.co> domain name under Policy ¶ 4(c)(ii). Complainant has not authorized Respondent use Complainant’s marks. “Registration Private” is listed as the registrant of record for the disputed domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent’s use of the <washingtonpost.com.co> domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). Respondent’s <washingtonpost.com.co> domain name resolves to a website containing fake news and fake topical content similar in appearance and layout to the news and other content on <washingtonpost.com>. The use of a confusingly similar domain name in competition with a complainant cannot give the respondent rights or legitimate interests. See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services).
Respondent has engaged in bad faith registration and use of the <washingtonpost.com.co> domain name. Respondent has displayed bad faith under Policy ¶ 4(b)(iii) by disrupting Complainant’s business through a website that competes with Complainant through the use of fake news. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
The fake news content misleads readers and serves as “click bait” to drive readers to other sites, or to share the fake news content with others on social networking websites, to generate advertising revenue. Therefore, Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to profit from a likelihood of confusion. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <washingtonpost.com.co> domain name be TRANSFERRED from Respondent to Complainant..
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 26, 2015
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