McClatchy Management Services, Inc. v.
Peter Carrington a/k/a Party Night Inc.
Claim Number: FA0304000155902
Complainant is McClatchy Management Services, Inc., Sacramento, CA, USA (“Complainant”) represented by Ann Dunn Wessberg of Faegre
& Benson LLP. Respondent is
Peter Carrington a/k/a Party Night
Inc., Amsterdam, Netherlands (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain names at issue are <startribun.com>
and <stratribune.com>
registered with Key-Systems GmbH.
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.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on April 28, 2003; the Forum received a hard copy of the
Complaint on April 29, 2003.
On
April 30, 2003, Key-Systems GmbH confirmed by e-mail to the Forum that the
domain names <startribun.com>
and <stratribune.com> are
registered with Key-Systems GmbH and that Respondent is the current registrant
of the names. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems
GmbH 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
April 30, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 20, 2003 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@startribun.com and postmaster@stratribune.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
May 28, 2003, pursuant to Complainant's
request to have the dispute decided by a single-member Panel, the Forum
appointed Judge Harold Kalina (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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 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 <startribun.com> and <stratribune.com>
domain names are confusingly similar to Complainant’s STAR TRIBUNE mark.
2. Respondent does not have any rights or
legitimate interests in the <startribun.com>
and <stratribune.com> domain
names.
3. Respondent registered and used the <startribun.com> and <stratribune.com> domain names in
bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
provides evidence of a federal registration with the United States Patent and
Trademark Office (“USPTO”) for the STAR TRIBUNE mark (Reg. No. 1,495,070
registered on July 5, 1988) related to daily newspapers. Complainant furnishes
newspaper-related services through its website, <startribune.com>.
Respondent
registered the <startribun.com>
and <stratribune.com> domain
names on November 18, 2002. Respondent is using the disputed domain names to
redirect Internet traffic to a website that features pornographic material,
<amaturevideos.nl/hanky-panky-party.html>.
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.
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.
Complainant has
established rights in the STAR TRIBUNE mark through registration with the USPTO
and continuous use in commerce since 1987.
Respondent’s <startribun.com> and <stratribune.com> domain names
are confusingly similar to Complainant’s mark because the disputed domain names
incorporate the entire mark with the exception of a typographical error. The <startribun.com> domain name
omits the letter “e” from Complainant’s mark. The <stratribune.com> domain name transposes the letter “a” and
the first letter “r” of the mark. Neither of the disputed domain names is
sufficiently distinguishable from Complainant’s mark because the mark remains
the principal element of each of the disputed domain names. See Compaq Info. Techs. Group, L.P. v.
Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain
name <compq.com> is confusingly similar to Complainant’s COMPAQ mark
because the omission of the letter “a” in the domain name does not
significantly change the overall impression of the mark); see also Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding
<googel.com> to be confusingly similar to Complainant’s GOOGLE mark and
noting that “[t]he transposition of two letters does not create a distinct mark
capable of overcoming a claim of confusing similarity, as the result reflects a
very probable typographical error”).
The Panel finds
that Complainant has established Policy ¶ 4(a)(i).
Respondent has
chosen not to favor the Panel with a Response in this proceeding. Therefore,
the Panel may accept any reasonable allegation or inference in the Complaint as
true. See Bayerische Motoren Werke AG v.
Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the
absence of a Response the Panel is free to make inferences from the very
failure to respond and assign greater weight to certain circumstances than it
might otherwise do); see also Do the
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a
respondent to come forward to [contest complainant’s allegations] is tantamount
to admitting the truth of complainant’s assertion in this regard”).
Furthermore, the
Panel presumes that Respondent lacks any rights to or legitimate interests in
the disputed domain name because of Respondent’s failure to respond to the
allegations in the Complaint. See BIC
Deutschland GmbH & Co. KG v. Tweed,
D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has
failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c)
of the Policy, any rights or legitimate interests in the domain name”); see also Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that
Respondents’ failure to respond can be construed as an admission that they have
no legitimate interest in the domain names).
Respondent is
using the <startribun.com> and
<stratribune.com> domain names
to divert Internet users to a website that features pornographic material,
<amaturevideos.nl/hanky-panky-party.html>. UDRP panels have consistently
held that this use is neither a bona fide offering of goods or services under
Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). See Nat’l Football League
Prop., Inc. v. One Sex Entm’t Co., D2000-0118 (WIPO Apr. 17, 2000) (finding
that the Respondent had no rights or legitimate interests in the domain names
<chargergirls.com> and <chargergirls.net> where the Respondent
linked these domain names to its pornographic website); see also MatchNet
plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is
not a bona fide offering of goods or services to use a domain name for
commercial gain by attracting Internet users to third party sites offering
sexually explicit and pornographic material where such use is calculated to
mislead consumers and to tarnish the Complainant’s mark).
Moreover,
Respondent has presented no proof and no evidence in the record suggests that
Respondent is commonly known by STARTRIBUN, STRATRIBUNE or either of the
disputed domain names. Thus, Respondent has failed to establish its rights to
or legitimate interests in the <startribun.com>
and <stratribune.com> domain
names pursuant to Policy ¶ 4(c)(ii). See
RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known by the domain name prior to registration of the domain name to
prevail"); see also MRA Holding, LLC
v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003) (noting that “the disputed domain name does not even correctly
spell a cognizable phrase” in finding that Respondent was not “commonly known
by” the name GIRLS GON WILD or <girlsgonwild.com>).
Accordingly, the
Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Policy ¶ 4(b)
supplies examples of circumstances that demonstrate bad faith registration and
use. However, the list of circumstances is not exclusive. The Panel is permitted
to look at the totality of circumstances in determining the issue of bad faith.
See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b)
are intended to be illustrative, rather than exclusive”).
Complainant
provides evidence that Respondent is a well-known “typosquatter.” Typosquatting
diverts Internet users who misspell Complainant’s mark to a website sponsored
by Respondent for Respondent’s commercial gain. Typosquatting has been
recognized as evidence of bad faith registration and use with regard to Policy
¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini,
D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling
of words with intent to intercept and siphon off traffic from its intended
destination, by preying on Internauts who make common typing errors.
Typosquatting is inherently parasitic and of itself evidence of bad faith.”); see also L.L. Bean, Inc. v. Cupcake Patrol,
FA 96504 (Nat. Arb. Forum Mar. 12, 2001) (finding that Respondent acted in bad
faith by establishing a pattern of registering misspellings of famous
trademarks and names).
Moreover,
Respondent is using the <startribun.com>
and <stratribune.com> domain
names to redirect Internet users to a pornographic website. The use of a domain
name confusingly similar to a registered mark to divert Internet traffic to a
website that features sexually explicit material constitutes bad faith
registration and use under Policy ¶ 4(a)(iii). See Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000)
(finding that absent contrary evidence, linking the domain names in question to
graphic, adult-oriented websites is evidence of bad faith); see also Brown & Bigelow, Inc. v. Rodela,
FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well-known mark to
provide a link to a pornographic site is evidence of bad faith registration and
use).
The Panel finds
that Policy ¶ 4(a)(iii) has been established.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <startribun.com>
and <stratribune.com> domain
names be TRANSFERRED from Respondent
to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
June 2, 2003
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