Sun-Times Media IP, LLC v. Manager Domain / WUITAS, Inc. d/b/a ABILICOM / PrivacyProtect.org
Claim Number: FA1402001542793
Complainant is Sun-Times Media IP, LLC (“Complainant”), represented by Glenn A. Rice of Funkhouser Vegosen Liebman & Dunn Ltd., Illinois, USA. Respondent is Manager Domain / WUITAS, Inc. d/b/a ABILICOM / PrivacyProtect.org (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chicagasuntimez.com> and <chicagosumtimez.com>, registered with GoDaddy.com, LLC, and Friends Marketing,Inc.(0101Host.com).
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 February 7, 2014; the National Arbitration Forum received payment on February 7, 2014.
On February 10, 2014, GoDaddy.com, LLC, confirmed by e-mail to the National Arbitration Forum that the <chicagosumtimez.com> domain name is registered with GoDaddy.com, LLC, and that Respondent is the current registrant of the name. On February 19, 2014, Friends Marketing,Inc.(0101Host.com) confirmed by e-mail to the National Arbitration Forum that the <chicagasuntimez.com> domain name is registered with Friends Marketing,Inc.(0101Host.com) and that Respondent is the current registrant of the name. GoDaddy.com, LLC, and Friends Marketing,Inc.(0101Host.com) have verified that Respondent is bound by the respective registration agreements 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 February 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 17, 2014 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@chicagasuntimez.com, postmaster@chicagosumtimez.com. Also on February 25, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 21, 2014, 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" 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 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <chicagasuntimez.com> and <chicagosumtimez.com> domain names, the domain names at issue, are confusingly similar to Complainant’s CHICAGO SUN-TIMES mark.
2. Respondent does not have any rights or legitimate interests in the domain names at issue.
3. Respondent registered and used the domain names at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses the CHICAGO SUN-TIMES mark in connection with its news service. Complainant’s CHICAGO SUN-TIMES mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g. Reg. No. 1,442,078 registered on June 9, 1987). Respondent’s <chicagasuntimez.com> and <chicagosumtimez.com> domain names are confusingly similar to the CHICAGO SUN-TIMES mark. Minor substitutions are made to the spelling of the mark but the impression is the same. The omission of the hyphen and the addition of the generic top-level domain (“gTLD”) are irrelevant alterations.
Respondent has never been known by the domain names and Complainant has never approved of Respondent’s use of the mark in the domain names. Respondent has made both domain names resolve to websites that include hyperlink advertisements to third-party businesses. Respondent “translates” Complainant’s own copyrighted material so that many of the words appear as American slang terms, and/or are intentionally misspelled, and Respondent has no right to appropriate Complainant’s own materials in such a manner. Respondent’s typosquatting behavior undermines its rights and interests.
Respondent is a serial cybersquatter who has engaged in such activities. See Sun-Times Media IP, LLC v. WUITAS, Inc. d/b/a ABILICOM / Manager Domain, FA 1525208 (Nat. Arb. Forum Nov. 24, 2013) (ordering <chicagasuntimes.com> domain transferred based on Respondent WUITAS’ bad faith registration and use of domain). Respondent profits from the likelihood that Internet users will associate the disputed domain names with Complainant’s official news services. Respondent profits each time an Internet user visits the site and views the hyperlinks. Respondent’s typosquatting behavior evidences bad faith.
Respondent had constructive and/or actual knowledge of Complainant’s interest in the CHICAGO SUN-TIMES mark when registering the domain name.
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.”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. Complainant contends, and it appears to the Panel, that both domain names are hosted on the same servers, use similar websites, and were both registered on the exact same day. Both domain names are associated with the servers located at “ivy.ns.cloudflare.com and igor.ns.cloudflare.com.” Respondent “WUITAS” is believed to ultimately control all of the domain names.
Complainant uses the CHICAGO SUN-TIMES mark in connection with its news service and this mark has been registered with the USPTO (e.g. Reg. No. 1,442,078 registered on June 9, 1987). The finds that Complainant has established Policy ¶ 4(a)(i) rights in the mark through United States Patent and Trademark Office ("USPTO") registration. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Respondent’s <chicagasuntimez.com> and <chicagosumtimez.com> domain names are confusingly similar to the CHICAGO SUN-TIMES mark. Minor substitutions are made to the spelling of the mark but the impression is the same. The omission of the hyphen and the addition of the generic top-level domain are irrelevant alterations. The replacement of various letters in the CHICAGO SUN-TIMES mark in forming the <chicagasuntimez.com> and <chicagosumtimez.com> domain names does not negate a finding of confusing similarity. See, e.g., Am. Online, Inc. v. Triple E Holdings Ltd., FA 281584 (Nat. Arb. Forum July 15, 2004) (“Words that are spelled differently but are phonetically similar do not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).”). The addition of the gTLD and the removal of the mark’s spacing do not defeat the confusing similarity of the domain name. See HomeVestors of Am., Inc. v. Sean Terry, FA 1523266 (Nat. Arb. Forum Nov. 11, 2013) (“[T]he Panel notes that panels have previously held that a domain name’s elimination of spaces found in the complainant’s mark and addition of a gTLD such as “.com” do not sufficiently differentiate the domain name from the complainant’s mark for the purposes of a confusing similarity analysis under Policy ¶ 4(a)(i).”). Accordingly, both of the <chicagasuntimez.com> and <chicagosumtimez.com> domain names are confusingly similar to the CHICAGO SUN-TIMES mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent has never been known by the disputed domain names, nor has Complainant ever approved of Respondent’s use of the mark in the domain names. The WHOIS information for the disputed domain names list “Manager Domain / PrivacyProtect.org” as the registrant of record for the <chicagosumtimez.com> domain name, and “Manager Domain / WUITAS, INC. d/b/a ABILICOM” as the registrant of record for the <chicagasuntimez.com> domain name. There is no evidence in this record to show that Respondent has ever been commonly known as the <chicagasuntimez.com> and <chicagosumtimez.com> domain names under 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).
Respondent has made both domain names resolve to websites that include hyperlink advertisements to third-party businesses that purport to be in “Chicago redneck” whilst also promoting a variety of commercial hyperlinks in the form of banner and pop-up advertisements, as well as in-text hyperlinks. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) the panel found that the presence of commercial hyperlinks through the disputed domain name’s website suggested that Respondent had no real Policy ¶ 4(c)(i) bona fide offering of goods or services, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use, in regards to the domain names. Respondent’s extensive use of commercial hyperlinks on the domain names’ websites undermines a finding under Policy ¶¶ 4(c)(i) and (iii). Respondent “translates” Complainant’s own copyrighted material so that many of the words appear as American slang terms, and/or are intentionally misspelled, and Respondent has no right to appropriate Complainant’s own materials in such a manner. The substantive content on the domain names’ website is a series of news articles that have been transcribed into “web speak” style, with intentional misspellings of almost all words and the use of abbreviations for certain phrases. The Panel finds that Respondent is without Policy ¶ 4(a)(ii) rights or legitimate interests in appropriating Complainant’s own materials on the domain name’s website. See, e.g., U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a method of establishing rights or legitimate interests).
Further, Respondent’s typosquatting behavior undermines its rights and interests. Both of the <chicagasuntimez.com> and <chicagosumtimez.com> domain names feature several misspellings of the CHICAGO SUN-TIMES mark. Here, the Panel notes that the alterations to the domain name come in the form of the removal of the hyphen and the changing of two letters in each of the domain names. The Panel finds that such misspellings are within the scope of typosquatting behavior, and finds that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent is a serial cybersquatter who has previously registered a domain name that infringed on Complainant’s CHICAGO SUN-TIMES mark. See Sun-Times Media IP, LLC v. WUITAS, Inc. d/b/a ABILICOM / Manager Domain, FA 1525208 (Nat. Arb. Forum Nov. 24, 2013) (ordering <chicagasuntimes.com> domain transferred based on Respondent WUITAS’ bad faith registration and use of domain). Respondent registered both of the currently disputed domain in a pattern of bad faith registration. Respondent’s continued infringement of the CHICAGO SUN-TIMES mark through domain name registrations, which include previous UDRP findings against Respondent, is evidence of Policy ¶ 4(b)(ii) bad faith. See Bullock v. Network Operations Ctr., FA 1269834 (Nat. Arb. Forum Aug. 10, 2009) (“Complainant contends that Respondent has a longstanding history of cybersquatting [...] The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).”).
As previously noted, Respondent profits from the likelihood that Internet users will associate the disputed domain names with Complainant’s official news services each time an Internet user visits the site and views the hyperlinks. In AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007), the panel found that there was bad faith through a likelihood of confusion when the respondent used a confusingly similar domain name to send Internet users through to a website monetized with hyperlink advertisements. Respondent’s websites associated with the disputed domain names are largely “click bait” wherein many of the terms in the articles are links to related products, and the rest of the website is filled with banner advertisements. Accordingly, the Pane infers Policy ¶ 4(b)(iv) bad faith.
Respondent had actual or constructive knowledge of Complainant’s interest in the CHICAGO SUN-TIMES mark when registering the disputed domain names. While many panels have concluded that constructive notice is not sufficient to support a bad faith finding, this Panel finds that, due to the fame of Complainant's mark and Respondent’s repeated illegitimate use thereof, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware” of the complainant's YAHOO! mark at the time of registration).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chicagasuntimez.com> and <chicagosumtimez.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: March 22, 2014
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