Dow Jones, L.P. and Dow Jones & Company, Inc. v. HDTV LLC c/o Dynadot Privacy
Claim Number: FA1404001553157
Complainant is Dow Jones, L.P. and Dow Jones & Company, Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington D.C., USA. Respondent is HDTV LLC c/o Dynadot Privacy (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wallstreetjournal.tv>, registered with DYNADOT LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 8, 2014; the National Arbitration Forum received payment on April 8, 2014.
On April 11, 2014, DYNADOT LLC confirmed by e-mail to the National Arbitration Forum that the <wallstreetjournal.tv> domain name is registered with DYNADOT LLC and that Respondent is the current registrant of the name. DYNADOT LLC has verified that Respondent is bound by the DYNADOT 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 April 11, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 1, 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@wallstreetjournal.tv. Also on April 11, 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 May 6, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <wallstreetjournal.tv> domain name is confusingly similar to Complainant’s THE WALL STREET JOURNAL mark.
2. Respondent does not have any rights or legitimate interests in the <wallstreetjournal.tv> domain name.
3. Respondent registered and uses the <wallstreetjournal.tv> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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.”).
The Panel finds that Complainant’s registration of its THE WALL STREET JOURNAL mark with the USPTO shows it has rights in the mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <wallstreetjournal.tv> domain name deletes the word “THE” in Complainant’s THE WALL STREET JOURNAL mark, which does not distinguish the domain name from the mark under Policy ¶ 4(a)(i). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”). Respondent also deletes the spaces in Complainant’s THE WALL STREET JOURNAL mark and adds the country-code top-level domain (“ccTLD”) “.tv” to Complainant’s mark. These changes fail to differentiate the domain name from the mark pursuant to Policy ¶ 4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Thus, the Panel finds that Respondent’s <wallstreetjournal.tv> domain name is confusingly similar to Complainant’s THE WALL STREET JOURNAL mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).
Complainant alleges that Respondent is not commonly known by the <wallstreetjournal.tv> domain name, and that nothing in Respondent’s WHOIS information or the record demonstrates that Respondent is commonly known by the disputed domain name. Complainant states that is has not authorized Respondent to use its THE WALL STREET JOURNAL mark. In Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panel concluded that respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that respondent was commonly known by that domain name, including the WHOIS information as well as complainant’s assertion that it did not authorize or license respondent’s use of its mark in a domain name. The Panel finds that Respondent is not commonly known under the <wallstreetjournal.tv> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant asserts that Respondent is using the <wallstreetjournal.tv> domain name for a website advertising directly competing news services. The Panel notes that Respondent’s disputed domain name leads to a webpage titled “wall street journal tv,” which provides news services. Past panels have determined that a respondent’s use of a domain name to lead consumers to a competing service is not a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services). Accordingly, the Panel finds that Respondent is not using the <wallstreetjournal.tv> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s use of the <wallstreetjournal.tv> domain name disrupts Complainant’s business by using the domain name for a website advertising directly competing news services. In DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005), the panel held that “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).” Accordingly, the Panel finds that Respondent is disrupting Complainant’s business, showing bad faith use and registration of the <wallstreetjournal.tv> domain name under Policy ¶ 4(b)(iii).
Complainant asserts that Respondent has a bad-faith pattern of registering trademark-related domain names and its activities have been the subject of a prior adverse UDRP decision. See PFIP v. Tanuja Murray / HDTV, LLC, FA 1508964 (Nat. Arb. Forum Aug. 9, 2013). The Panel finds that this is additional evidence that Respondent has registered and is using the <wallstreetjournal.tv> domain name in bad faith under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Complainant claims that Respondent uses the <wallstreetjournal.tv> domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant and it’s THE WALL STREET JOURNAL mark. The Panel agrees and finds that Respondent is using the disputed domain name to attract Internet users to a competing service for which it commercially gains, bad faith under Policy ¶ 4(b)(iv). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market).
The Panel notes that Respondent’s disputed domain name contains a disclaimer stating “WE ARE NOT AFFILIATED WITH THE WALL STREET JOURNAL NEWSPAPER. HOWEVER WE DO UNDER FAIR USE LAWS REFER TO THIS PAPER AS WE ARE A NEWS AND ANALYSIS VIDEO TELEVISION BROADCAST SERVICE ONLINE.” However, the use of such a disclaimer does not legitimize Respondent’s use of the disputed domain name. See Auxilium Pharm., Inc. v. Patel, FA 642141 (Nat. Arb. Forum Apr. 6, 2006) (“Respondent’s use of a disclaimer on its website does not mitigate evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”).
Complainant argues that there is no question that Respondent registered the disputed domain name in bad faith with knowledge of Complainant and its THE WALL STREET JOURNAL mark, given that the <wallstreetjournal.tv> domain name is virtually identical to Complainant’s mark, Respondent’s direct references to Complainant and its business on Respondent’s website, Respondent’s planned offering of directly competing news services, and Respondent’s history of cybersquatting. The Panel agrees and finds that Respondent had actual knowledge of the Complainant’s THE WALL STREET JOURNAL mark. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds that Complainant has satisfied 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 <wallstreetjournal.tv> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 9, 2014
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