Sun-Times Media IP, LLC v. WUITAS, Inc. d/b/a ABILICOM / Manager Domain
Claim Number: FA1310001525208
Complainant is Sun-Times Media IP, LLC (“Complainant”), represented by Glenn A. Rice of Funkhouser Vegosen Liebman & Dunn Ltd., Illinois, USA. Respondent is WUITAS, Inc. d/b/a ABILICOM / Manager Domain (“Respondent”), represented by Brian Brown, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chicagasuntimes.com>, registered with 0101 INTERNET, 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 17, 2013; the National Arbitration Forum received payment on October 17, 2013.
On October 21, 2013, 0101 INTERNET, INC. confirmed by e-mail to the National Arbitration Forum that the <chicagasuntimes.com> domain name is registered with 0101 INTERNET, INC. and that Respondent is the current registrant of the name. 0101 INTERNET, INC. has verified that Respondent is bound by the 0101 INTERNET, INC. 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 October 22, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 2013 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@chicagasuntimes.com. Also on October 22, 2013, 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.
A timely Response was received and determined to be complete on November 12, 2013.
A timely Additional Submission by Complainant was received and determined to be complete on November 15, 2013.
On November 19, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in CHICAGO SUN-TIMES and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent broadly denies those assertions. In particular, Respondent submits that Complainant has not adequately shown that the disputed domain is confusingly similar to the trademark.
Respondent argues that it has a right to, or legitimate interest in, the disputed domain name. Respondent says it is commonly known by the disputed domain name because the domain name resolves to a parody website entitled “Chicaga Sun-Times” where content from Complainant’s newspaper is translated into Ebonics.
C. Complainant’s Additional Submissions
Complainant retorts that Respondent’s use of the disputed domain name is not protected as a parody website because Respondent is using the disputed domain name for commercial purposes. In particular, the resolving website displays pop-up advertising from “Ad Choices,” with click-through links to third-party websites.
Moreover, Complainant argues, Respondent’s use of the domain name does not amount to parody since for the most part the resolving website merely translates matter from Complainant’s website into Ebonics.
The factual findings pertinent to the decision in this case are that:
a. Complainant has since 1948 used the trademark to identify its daily newspaper.
b. Complainant owns, inter alia, United States Trademark Reg. No. 1,442,078 registered June 9, 1987 for the word mark CHICAGO SUN-TIMES.
c. The disputed domain name was registered on March 12, 2013.
d. The domain name resolves to a website that is entitled “Chicaga Sun-Times” which publishes matter, some of which is taken directly from Complainant’s newspaper and website, in Ebonics.
e. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its United States Patent and Trademark Office trademark registration, the Panel is satisfied that it has trademark rights in CHICAGO SUN-TIMES. See State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
Panel is also satisfied that the disputed domain name is confusingly similar to Complainant’s trademark. But for the addition of the non-distinctive gTLD, “.com”, and the trivial omission of hyphenation, the disputed domain name differs from the registered trademark by one letter. Panel disagrees entirely with Respondent’s submission that “a reasonable person with even a de minimis amount of intelligence would have no difficulty distinguishing the two.” Taken as wholes, the likelihood that an average person paying an ordinary level of attention to the domain name would confuse it for the trademark is more than significant. See generally, Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to the complainant's mark); Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”).
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests. See Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The publicly available WHOIS information identifies Respondent as “WUITAS, Inc. d/b/a ABILICOM / Manager Domain” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.
This is no compelling evidence that the disputed domain name has been used in connection with a bona fide offering of goods or services prior to notice of the dispute. The resolving website is headed:
“CHICAGA SUN-TIMES: Nuze, Sperts, Weetha, an’ Bitcharys translerated inta Chicaga Gangsta.”
The evidence is that the website displays pop-up advertising from “Ad Choices,” with click-through links to third-party websites including those of Amtrak, Charles Schwab, Xfinity, and Dell.
The evidence is that the domain name resolves to a commercial website that uses a name almost identical to Complainant’s trademark which takes material directly from Complainant’s newspaper or online location.
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name.
Respondent submits, (i) that it has made a bona fide offering of goods or services prior to the dispute, (ii) that it is commonly known by the domain name, and (iii) that in any case the resolving website is for parody purposes and so is fair use of the domain name.
Panel does not find those submissions compelling. Respondent states that it is “merely a holding organization for domain names.” Even accepting that to be so, the Response does not contain the sort of information that might ordinarily lead Panel to acceptance of a claim that a respondent has been commonly known by the domain name. There is no indication for precisely how long the “Chicaga Sun-Times” has been published. Panel notes that the domain name was only registered earlier this year. There are no figures as to circulation, readership or online following. In short, there are none of the usual indicia required to show that a domain name registrant might be commonly known by another name. Paragraph 4(c)(ii) of the Policy does not assist Respondent.
Moreover, as Complainant rightly points out in its additional submissions, the enquiry as to whether the use of the domain name is for parody or some other fair use for the purposes of paragraph 4(c)(ii) of the Policy is unnecessary since the evidence is that the use of the disputed domain name is for commercial gain and has a clear capacity to mislead consumers who are aware of Complainant’s trademark. Paragraph 4(c)(iii) of the Policy does not assist Respondent.
Finally, for reasons partly given already, Panel does not find that there has been use of the domain name in connection with a bona fide offering of goods or services for the purposes of paragraph 4(c)(i) of the Policy. The disputed domain name and the resolving website deliberately imitate Complainant’s trademark. The resolving website lifts material from Complainant’s newspaper and renders it in Ebonics. Whether that is done for parody or not (and whether or not that action could properly be described as parody) is, for the purposes of a bona fide offering analysis, irrelevant since without Complainant’s permission it is not good faith behavior to mimic Complainant’s trademark, take copyright or other material originating with Complainant and translate it, and then offer that translated material at a revenue generating location.
Panel finds that Complainant has established the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Panel finds that Respondent’s actions fall squarely under paragraph 4(b)(iv) above. Panel has already found the disputed domain name to be confusingly similar to Complainant’s trademark. Complainant submits evidence of screenshots of the web page corresponding with the disputed domain name. Panel notes banner advertisements to various commercial websites. Panel accepts as more likely than not to be true Complainant’s allegation that Respondent receives revenue from this website associated with the disputed domain name. In terms of paragraph 4(b)(iv) of the Policy, Panel finds that it is more likely than not that Respondent is using the domain name to attract, for commercial gain, internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chicagasuntimes.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: November 24, 2013
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