The McGraw-Hill Companies, Inc. v. junlong zheng
Claim Number: FA0808001222416
Complainant is The McGraw-Hill Companies, Inc. (“Complainant”), represented by Britton
Payne, of Foley & Lardner LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <thedodgereport.com>, registered with Onlinenic, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 27, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 29, 2008.
On August 29, 2008, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <thedodgereport.com> domain name is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 2, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 22, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@thedodgereport.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 29, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <thedodgereport.com> domain name is confusingly similar to Complainant’s DODGE REPORTS mark.
2. Respondent does not have any rights or legitimate interests in the <thedodgereport.com> domain name.
3. Respondent registered and used the <thedodgereport.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, the McGraw-Hill Companies, Inc., is a leading global information services provider in the financial services, education and business information markets. Complainant and its predecessor-in-interest, F.W. Dodge Corporation, have used the DODGE REPORTS mark (Reg. No. 291,900 issued Feb. 23, 1932 by the United States Patent and Trademark Office (“USPTO”)) to publish daily and weekly reports on active construction projects in public and private sectors.
Respondent registered the disputed <thedodgereport.com> domain name on February 27, 2008, and is using the disputed domain name to resolve to a website that feature third-party links to unrelated websites.
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."
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.”).
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.
The Panel finds that Complainant’s long-standing registration of the DODGE REPORTS mark with the USPTO constitutes sufficient evidence of Complainant’s rights in the mark in order to grant standing under the UDRP and Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Respondent’s disputed <thedodgereport.com> domain name includes Complainant’s DODGE REPORTS while omitting the “s” and adding “the” and the generic top-level domain “.com.” None of these alterations sufficiently distinguish the disputed domain name in any meaningful sense, even when taken in aggregate, as the mark is the dominant facet of the disputed domain name. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i).); see also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the <thedodgereport.com> domain name. Once Complainant sets forth a prima facie case supporting its allegations, as it has in this case, the burden shifts to Respondent to prove that it does have rights or legitimate interests under Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent has failed to offer any evidence which suggests
that Respondent is commonly known by the disputed domain. Furthermore, the WHOIS domain name
registration information fails to offer any contrary inference. Therefore, the Panel finds that Respondent
lacks rights and legitimate interests in the disputed domain names pursuant to
Policy ¶ 4(c)(ii). See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat.
Arb. Forum Aug. 29, 2000) (finding that the respondent has no rights or
legitimate interests in domain names because it is not commonly known by the
complainant’s marks and the respondent has not used the domain names in
connection with a bona fide offering of goods and services or for a
legitimate noncommercial or fair use); see
also Wells Fargo & Co.
v. Onlyne Corp. Services11, Inc., FA
198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information
for the disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Respondent’s disputed domain name
merely resolves to a website that features links to unrelated third
parties. The Panel infers material
benefit is received by Respondent due to the accrual of “click-through” fees
for the links provided. The Panel
finds that Respondent’s use of the disputed domain does not constitute a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the
disputed domain name pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA
699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a
domain name to redirect Internet users to websites unrelated to a complainant’s
mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Bank of Am. Corp. v. Nw.
Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003)
(“Respondent’s demonstrated intent to divert Internet users seeking
Complainant’s website to a website of Respondent and for Respondent’s benefit
is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it
is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <thedodgereport.com>
domain name diverts Internet users to a website featuring unrelated third-party
links. Respondent also presumably
receives referral fees from advertisers listed on its website. By incorporating Complainant’s mark within
the disputed domain name, Respondent has created a likelihood of confusion with
Complainant’s mark as to the source and affiliation of the website or the
disputed domain name. The Panel
therefore finds that Respondent has engaged in bad faith registration and use
of the disputed domain name pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14,
2001) (finding bad faith where the respondent used the domain name, for
commercial gain, to intentionally attract users to a direct competitor of the
complainant); see also Allianz of
Am. Corp. v. Bond, FA
680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use
under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users
searching for the complainant to its own website and likely profiting).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thedodgereport.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 9, 2008
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