ALDIA News v.
Claim Number: FA1004001320501
Complainant is ALDIA
News (“Complainant”), represented by
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <aldianews.com>, registered with Compana, Llc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically April 21, 2010.
On April 22, 2010, Compana, Llc confirmed by e-mail to the National Arbitration Forum that the <aldianews.com> domain name is registered with Compana, Llc and that Respondent is the current registrant of the name. Compana, Llc verified that Respondent is bound by the Compana, Llc registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On April 27, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 2010, 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@aldianews.com. Also on April 27, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 26, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 a Written Notice, as defined in Rule 1. 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. The domain name that Respondent registered, <aldianews.com>, is confusingly similar to Complainant’s AL DIA mark.
2. Respondent has no rights to or legitimate interests in the <aldianews.com> domain name.
3. Respondent registered and used the <aldianews.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, ALDIA News, uses its AL DIA mark in connection with newspapers featuring information, news, and advertisements directed toward the Hispanic community local to Complainant’s business. Complainant has rights in the AL DIA mark due to its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,155,988 issued October 17, 2006; filed May 18, 2003). Complainant has used its mark since 1993 and in commerce since 1994.
Respondent, Texas International Property Associates - NA NA, registered the <aldianews.com> domain name May 23, 2005. The disputed domain name resolves to a website that lists links to third-party websites, which include links in competition with Complainant’s business.
Respondent has been the respondent in prior UDRP
proceedings, resulting in the transfer of the disputed domain names to the
respective complainants. See
CheapCaribbean.com, Inc. v.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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.
Complainant asserts that it has trademark rights in its AL DIA mark through its registration with the USPTO (Reg. No. 3,155,988 issued October 17, 2006; filed May 18, 2003). Although Respondent registered the disputed domain name May 23, 2005, Complainant had filed its trademark registration May 18, 2003. Previous panels have found that the effective date that a Complainant establishes rights in a mark is the registration filing date. See J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal Register is prima facie proof of continual use of the mark, dating back to the filing date of the application for registration); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
The Panel finds that registration with the USPTO is sufficient to establish Complainant’s rights in its mark under Policy ¶ 4(a)(i) as of the date of filing for registration. See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (finding that “Complainant’s timely registration with the USPTO and subsequent use of the BIG TOW mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office).
Complainant asserts that Respondent’s disputed <aldianews.com> domain name is
confusingly similar to Complainant’s AL DIA mark. Complainant supports its
challenge by directing the Panel to Respondent’s addition of a generic term
related to Complainant’s business (“news”), as well as a removal of the space
between the mark’s terms along with the addition of a generic top-level domain
(“gTLD”) (“.com”). The Panel finds that these additions and deletions do not
distinguish the disputed domain name from Complainant’s mark. Respondent’s
disputed domain name is confusingly similar to Complainant’s mark in a Policy ¶ 4(a)(i) analysis. See Bond & Co.
Jewelers, Inc. v.
The Panel finds that Complainant satisfied the elements of
ICANN Policy ¶ 4(a)(i).
Complainant asserts that Respondent has no rights to or legitimate interests in the <aldianews.com> domain name under Policy ¶ 4(a)(ii). The assertion makes a prima facie case sufficient to shift the burden of proof to Respondent to show that it has rights or legitimate interests in the disputed domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.”). Respondent’s failure to respond permits the panel to make an inference that Respondent lacks rights or interests because a failure to respond is an implicit admission under Policy ¶ 4(a)(ii). However, this Panel also elects to review the evidence in support of the allegation using the Policy ¶ 4(c) guidelines before making a final determination that Respondent has no rights to or legitimate interests in the disputed domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
The WHOIS information lists the registrant of the disputed domain name as “Texas International Property Associates - NA NA,” which does not provide evidence to suggest that Respondent is commonly known by the <aldianews.com> domain name. Complainant also has asserted that it never authorized or licensed Respondent to use the AL DIA mark. The Panel finds that, given the lack of supporting evidence, Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4 (c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s disputed domain name resolves to a website that lists links to third-party websites, which include links with those who would compete with Complainant’s business. The Panel is permitted to presume that Respondent receives click-through fees when Internet users click on any of the third-party links on the website resolving from the <aldianews.com> domain name. The Panel finds that this use is not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not in connection with a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Skyhawke Techs., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).”).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s registration and use
of the disputed domain name is for the purpose of preventing Complainant from
developing its own Internet access, pursuant to Policy ¶ 4(b)(ii). Respondent has been
the respondent in prior similar UDRP proceedings that resulted in the transfer
of the disputed domain names to the respective complainants. See CheapCaribbean.com,
Inc. v.
Complainant also asserts that Respondent is using the site to divert Internet users seeking Complainant’s business to the website resolving from Respondent’s disputed domain name. Respondent’s disputed domain name resolves to a website with various links to third-party websites, which include links to those who would compete with Complainant’s business. The Panel finds that Respondent’s conduct is calculated to and does disrupt Complainant’s business through this diversion scheme; the conduct also supports findings of bad faith and registration pursuant to Policy ¶ 4(b)(iii). See Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
In addition to diverting Internet users away from
Complainant’s business, Respondent’s <aldianews.com>
domain name likely creates confusion as to Complainant’s sponsorship
of or affiliation with the disputed domain name. The Panel is permitted to make
an inference that Respondent profits from this
confusion by receiving click-through fees when Internet users click on the
hyperlinks listed on the website resolving from the disputed domain name. The
Panel finds that this practice also supports findings of bad faith registration
and use under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006)
(holding that the registration and use of a domain name confusingly similar to
a complainant’s mark to direct Internet traffic to a commercial “links page” in
order to profit from click-through fees or other revenue sources constitutes
bad faith under Policy ¶ 4(b)(iv)); see
also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For
The Panel finds that Complainant satisfied the elements of
ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aldianews.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 8, 2010
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