McClatchy Management Services, Inc. v.
John Barry a/k/a Best Domains and Pro-Life Domains
Claim Number: FA0306000162175
Complainant is McClatchy Management Services, Inc.,
Sacramento, CA (“Complainant”) represented by Ann Dunn Wessberg of Faegre & Benson LLP. Respondent is John Barry a/k/a Best
Domains and Pro-Life Domains, Bronx, NY
(“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <themodestobee.com> registered with Intercosmos
Media Group, Inc. d/b/a Directnic.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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on June 11, 2003; the Forum received a hard copy of the
Complaint on June 12, 2003.
On
June 12, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by
e-mail to the Forum that the domain name <themodestobee.com> is
registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that
Respondent is the current registrant of the name. Intercosmos Media Group, Inc.
d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos
Media Group, Inc. d/b/a Directnic.com 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
June 13, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 3, 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@themodestobee.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
July 11, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <themodestobee.com>
domain name is identical to Complainant’s THE MODESTO BEE mark.
2. Respondent does not have any rights or
legitimate interests in the <themodestobee.com> domain name.
3. Respondent registered and used the <themodestobee.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant owns
and is responsible for protecting the brands used by the subsidiaries of its
parent company, the McClatchy Company. Complainant licenses the parent
company’s marks to various subsidiaries of McClatchy Company, including the
Modesto Bee. Complainant holds a trademark registration with the United States
Patent and Trademark Office (“USPTO”) for the THE MODESTO BEE mark (Reg. No.
1,057,559 registered on February 1, 1977) in relation to newspapers.
The Modesto Bee
has used the THE MODESTO BEE mark since at least as early as July 3, 1975 in
connection with daily newspapers in Modesto, California. The Modesto Bee also
operates websites at the <modestobee.com> and <modbee.com> domain
names, which provide news-related services.
Respondent
registered the <themodestobee.com> domain name on February 8,
2002. Respondent is using the disputed domain name to redirect Internet traffic
to a website, <abortionismurder.org>, which purports to display
anti-abortion information, highly graphic images of dismembered aborted fetuses
and links to fundraising appeals.
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 that it has rights in the THE MODESTO BEE mark through registration
with the USPTO and continuous use in commerce since 1975.
Respondent’s <themodestobee.com>
domain name is for all intents and purposes identical to Complainant’s THE
MODESTO BEE mark because the disputed domain name merely omits the spaces
between the words of the mark and adds the generic top-level domain (“gTLD”)
“.com” to the end of the mark. Neither the omission of the spaces between the
words nor the addition of a gTLD significantly differentiates a domain name
from a mark with regard to Policy ¶ 4(a)(i). See Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”); see also Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25,
2000) (finding that the domain name
<croatiaairlines.com> is identical to Complainant's CROATIA AIRLINES
trademark).
The Panel finds
that Complainant has established Policy ¶ 4(a)(i).
Respondent has
failed to come forward with a Response in this proceeding. Therefore, the Panel
may accept all reasonable inferences and allegations in the Complaint as true. See
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”); see also Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that Complainant’s allegations are true unless clearly contradicted
by the evidence).
Moreover,
Respondent has failed to invoke any circumstances that could demonstrate rights
to or legitimate interests in the <themodestobee.com> domain name.
When Complainant asserts a prima facie case against Respondent, the
burden shifts to Respondent to show that it has rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has
asserted that Respondent has no rights or legitimate interests with respect to
the domain name it is incumbent on Respondent to come forward with concrete
evidence rebutting this assertion because this information is “uniquely within
the knowledge and control of the respondent”); see also Woolworths plc. v. Anderson, D2000-1113
(WIPO Oct. 10, 2000) (finding that absent evidence of preparation to use the
domain name for a legitimate purpose, the burden of proof lies with Respondent
to demonstrate that it has rights or legitimate interests).
Respondent is
using the <themodestobee.com> domain name to redirect Internet
traffic to the <abortionismurder.org> domain name, a website that
presents anti-abortion rhetoric and graphic images of purportedly aborted
fetuses. The use of a domain name identical to a registered mark to divert
Internet users to a website that takes sides on a highly contentious issue such
as abortion, which has nothing to do with Complainant’s business activities, is
not 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). See Robo Enter., Inc. v. Tobiason, FA 95857
(Nat. Arb. Forum Dec. 24, 2000) (rejecting Respondent’s asserted rights or
legitimate interest in the domain name <roboenterprises-investors.com>,
noting that while the content of Respondent’s website may enjoy First Amendment
and fair use protection, those protections do not create rights or a legitimate
interest with respect to a domain name which is confusingly similar to another’s
trademark); see also Big Dog
Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no
legitimate use when Respondent was diverting consumers to its own website by
using Complainant’s trademarks).
Furthermore,
Respondent has not come forward with any proof and there is no evidence in the
record to establish that Respondent is commonly known by either THE MODESTO BEE
or <themodestobee.com>. Thus, Respondent has failed to establish
that it has rights to or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(c)(ii). See
Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark); see also Great S. Wood Pres., Inc. v. TFA
Assocs., FA 95169 (Nat. Arb.
Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the
domain name <greatsouthernwood.com> where Respondent linked the domain
name to <bestoftheweb.com>).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s
activities are well-known among UDRP Panels. These Panels have consistently
held that Respondent’s registration and use of a domain name identical or
confusingly similar to a registered mark to associate that mark holder with a
graphic and politically charged website evidences bad faith registration and
use under Policy ¶ 4(a)(iii). See Journal Gazette Co. v. Domain For Sale
Inc. a/k/a Domain World, FA 122202 (Nat. Arb. Forum Oct. 9, 2002) (finding
“Respondent chose the domain name to increase the traffic flowing to the
<abortionismurder.org> and <thetruthpage.com> websites”); see
also McClatchy Mgmt. Servs., Inc. v. Please DON'T Kill Your Baby a/k/a William
and Mark Purdy II, Willaim S. Purdy, FA 153541 (Nat. Arb. Forum May 28,
2003) (finding “[b]y intentionally taking advantage of the goodwill surrounding
Complainant’s mark to further its own political agenda, Respondent registered
the disputed domain names in bad faith”).
Moreover,
Respondent is a known cybersquatter who has racked up numerous arbitration
proceedings against him for the same behavior described in this Complaint.
Respondent has established a pattern of registering domain names to prevent the
owner of the trademark or service mark from reflecting the mark in a
corresponding domain name, which is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(ii). See Lee Enterprises, Inc. v. John
Barry and Domain for Sale, Inc., FA 142045 (Nat. Arb. Forum Feb. 24, 2003)
(finding “Complainant’s
unrefuted evidence establishes that Respondent has habitually engaged in
typosquatting”); see also The
Buffalo News, a Division of OBH, Inc. and Columbia Insurance Company v. John
Barry d/b/a Bronx Consumer, Inc. f/k/a Domains or Best Domains, FA 146919
(Nat. Arb. Forum Mar. 31, 2003) (finding “Respondent’s
use of the disputed domain name to redirect Internet users to an anti-abortion
website at <abortionismurder.com> evidences bad faith”).
Accordingly, the
Panel finds that Complainant has established Policy ¶ 4(a)(iii).
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <themodestobee.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated:
July 25, 2003
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