Politico LLC v. USA Hispanic
Claim Number: FA1704001725685
Complainant is Politico LLC (“Complainant”), represented by Judd D. Lauter of Cooley LLP, District of Columbia, USA. Respondent is USA Hispanic (“Respondent”), represented by Kathleen J.L. Holmes of Holmes Costin & Marcus pllc, Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <politicohispano.com>, registered with Network Solutions, 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.
Scott R. Austin, Esq., as Chair
Sandra J. Franklin, Esq., as Co-Panelist
Professor David E. Sorkin, as Co-Panelist
Complainant submitted a Complaint to the Forum electronically on April 6, 2017; the Forum received payment on April 7, 2017.
On April 7, 2017, Network Solutions, LLC confirmed by e-mail to the Forum that the <politicohispano.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 3, 2017 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@politicohispano.com. Also on April 7, 2017, 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 July 3, 2017.
On July 12, 2017, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Scott R. Austin, Esq., as Chair, and Sandra J. Franklin, Esq. and Professor David E. Sorkin, as Co-Panelists.
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" 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 makes the following contentions:
1. Complainant, Politico LLC, is a Delaware Limited Liability Company headquartered in Arlington, Virginia and a leading global news and information company publishing in print and online daily a broad range of news about current events in the United States and abroad.
2. Complainant has used its POLITICO mark since at least as early as January 23, 2007 to identify Complainant as the source of its news reporting operations, which include a newspaper, magazine, and website, that Complainant claims averages 26 million unique visitors per month.
3. Complainant owns a large number of trademark registrations for its POLITICO mark providing trademark protection in countries all over the world from Albania to the United Kingdom, and has obtained trademark registrations with the United States Patent and Trademark Office (“USPTO”) as both a standard character word mark (Reg. No. 3,350,909, registered December 11, 2007) specifying a first use date of January 23, 2007, for “newspaper reporting on the activities of the legislative and executive branches of the Federal government, officials and employees of the executive and legislative branches of the Federal government, members of Congress and their campaigns, and other matters of interest to people who work for or with the Federal government in International Class 16, and for “providing news and information via the Internet in the nature of current event reporting about the activities of the legislative and executive branches of the Federal government, officials and employees of the executive and legislative branches of the Federal government, members of Congress and their campaigns, and other matters of interest to people who work for or with the Federal government” in International Class 41; and for the same word using a stylized font (Reg. No. 3,665,992, registered August 11, 2009) specifying a first use date of September 10, 2007, for the same goods and services set forth above in International Classes 16 and 41.
4. Due to Complainant’s pervasive use of its POLITICO Mark and its extensive advertising and promotion of its website and publications, its POLITICO mark is well-known and broadly recognized, especially in the vicinity of Washington, D.C., where its news reporting services are focused.
5. Respondent registered the <politicohispano.com> disputed domain name on April 5, 2015, well after Complainant established rights in its POLITICO mark.
6. Respondent’s <politicohispano.com> disputed domain name is confusingly similar as it contains Complainant’s mark in its entirety and appends the generic term “hispano” and the generic top-level-domain (“gTLD”) “.com,” which differences are not sufficient to distinguish the domain from Complainant’s mark.
7. Respondent, USA Hispanic, has no connection with Complainant and is not commonly known by the <politicohispano.com> disputed domain name.
8. Respondent has no rights or legitimate interests in the disputed domain name.
9. Complainant has not authorized or licensed Respondent to use its trademarks in any way.
10. Complainant has not authorized Respondent’s to use the POLITICO mark or to register the disputed domain name reflecting Complainant’s mark.
11. Respondent’s use of the confusingly similar domain to divert users seeking Complainant’s website to the website of Respondent, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, but instead, the <politicohispano.com> the disputed domain name resolves to a commercial news reporting site attempting to pass itself off as Complainant.
12. Respondent registered and is using the disputed domain name <politicohispano.com> in bad faith.
13. Respondent registered the disputed domain to create a likelihood of confusion and falsely suggest an association between Complainant and Respondent, and is exploiting it for commercial gain.
14. Respondent deceives and attracts Internet users seeking Complainant to <politicohispano.com> for Respondent’s commercial gain.
15. Respondent is headquartered in Washington, D.C., is geographically proximate to Complainant and, therefore, had actual knowledge of Complainant’s rights in the POLITICO mark at the time of registration based on Complainant being well known for news reporting in the Washington, D.C. area and its years of prior use of the POLITICO mark.
16. Respondent failed to respond to Complainant’s demand letters.
B. Respondent makes the following contentions:
1. Respondent does not contest Complainant’s USPTO trademark for the POLITICO mark.
2. Respondent asserts the disputed domain name is not identical or confusingly similar to Complainant’s POLITICO mark as Complainant’s mark is topically, linguistically, and geographically targeted towards an English-speaking audience.
3. Respondent directs the disputed domain name <politicohispano.com> to target a Spanish-speaking audience with coverage focused on Latino politicians.
4. Respondent has rights and legitimate interests in the <politicohispano.com> domain name.
5. Respondent does not divert customers from Complainant as it targets different customers than those of Complainant.
6. Respondent makes a bona fide offering of goods and services through its provision of news and information in America regarding Latin American individuals for the benefit of the Hispanic voting community.
7. Respondent registered the domain in good faith without any intent to divert consumers from Complainant.
8. Respondent did not intentionally attempt to attract Internet users for commercial gain.
9. Respondent’s failure to respond to Complainant’s demand letter does not by itself indicate bad faith.
Complainant has been continuously using and promoting its POLITICO mark since at least as early as January 23, 2007, to identify Complainant as the source of its news reporting operations, which include a newspaper, magazine, and website.
Complainant owns and has established rights in the POLITICO mark through evidence it submitted of trademark registrations in the United States and numerous jurisdictions around the world.
Complainant’s POLITICO mark was registered and well known in the U.S. especially the vicinity of Washington, D.C., as well as many countries around the world well before Respondent registered its disputed domain name on April 5, 2015.
Respondent’s disputed domain name is confusingly similar to Complainant’s POLITICO mark because it is comprised of Complainant’s POLITICO mark in its entirety as the first part of the disputed domain name, and adds only the generic term “hispano” and the generic top-level-domain (“gTLD”) “.com” to Complainant’s mark, which additional terms are inconsequential to overcome a finding of confusing similarity.
Respondent’s WHOIS information identifies Respondent USA Hispanic as registrant and USA Hispanic as the registrant organization for the disputed domain name.
Respondent is not commonly known by the disputed domain name or by Complainant’s POLITICO mark, nor is Respondent licensed by Complainant to use its POLITICO mark.
Respondent has not used the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use.
The disputed domain name has been used for news reporting services in direct competition with Complainant and to divert users seeking Complainant’s website to the website of Respondent for Respondent’s commercial gain.
Respondent registered and is using the disputed domain name <politicohispano.com> in bad faith.
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.
The at-issue domain name is confusingly similar to a mark in which the
Complainant has trademark rights
Complainant claims rights in the POLITICO mark based upon its numerous trademark registrations in connection with its business providing news reporting services, including evidence submitted of its US trademark registrations with the USPTO (Reg. No. 3,350,909, registered Dec. 11, 2007) and (Reg. No. 3,665,992, registered August 11, 2009). Compl., Annex Ex. 10 (Schedule of Complainant’s Trademark Registrations). Registration of a mark with the USPTO is sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i).); BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (finding that complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i).). This Panel finds Complainant has proved its rights in the POLITICO mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <politicohispano.com> domain name is confusingly similar to the POLITICO mark in which Complainant has demonstrated its rights, because the disputed domain contains Complainant’s mark in its entirety and appends the generic term “hispano” and the gTLD “.com.” The addition of generic terms and gTLDs does not sufficiently distinguish a domain name from a mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). This Panel finds, therefore, that Complainant has satisfied Policy ¶ 4(a)(i), because Respondent’s <politicohispano.com> domain name is confusingly similar to the POLITICO mark in which Complainant has established trademark rights.
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 (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 (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. Once 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 contends that Respondent is not commonly known by <politicohispano.com> and Complainant has not authorized Respondent to use its mark. Panels have relied upon the registrant data set forth in the WHOIS information to determine that a respondent is not commonly known by a disputed domain name. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record names “USA Hispanic / USA Hispanic” as the registrant for the disputed domain name. Further, a lack of evidence in the record that a complainant authorized a respondent to use a mark further supports a finding that the respondent is not commonly known by a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel finds that Respondent is not commonly known by the disputed domain name <politicohispano.com>.
Next, Complainant asserts Respondent failed to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, <politicohispano.com> resolves to a website offering news services in an attempt to pass off as and compete with Complainant’s business. Use of a disputed domain name to pass off the services of Respondent as associated with those of Complainant does not demonstrate rights and legitimate interests per Policy ¶¶ 4(c)(i) & (iii); likewise, use of a disputed domain name to compete directly with a complainant’s business does not evoke a finding of rights and legitimate interests per Policy ¶¶ 4(c)(i) & (iii). See Crow v. LOVEARTH.net, FA 203208 (Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . ”); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Finally, the Panel notes that, aside from a single screen capture from Respondent’s website Respondent has provided little evidence in support of its claim of legitimate use, or preparations for use, for any purpose to rebut Complainant’s contention that “passing off” is Respondent’s unlawful purpose for using the disputed domain name and website incorporating Complainant’s mark. The Panel believes that Respondent could and should have provided much more evidence if its use was truly that of a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See Valeant International Bermuda v. DNS Administrator, FA 1573544 (Forum Sept. 15, 2014) (Allowing adverse inferences based upon the failure of a party to present evidence within its knowledge and control), citing, Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (Respondent’s failure to present information “uniquely within the knowledge and control of the respondent ... is tantamount to admitting the truth of complainant's assertions”); Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (“Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent”). The Panel finds that Respondent has deliberately used a domain that incorporates a close derivation of another’s mark to benefit commercially, and thus that Respondent’s use is not protected as a legitimate or fair use within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii). The Panel concludes that Respondent has failed to rebut Complainant’s prima facie case with concrete evidence of rights or legitimate interests in the disputed domain name, and thus finds that Complainant has met its burden with respect to Policy ¶ 4(a) (ii).
Complainant argues that Respondent registered and uses the disputed domain name in bad faith because Respondent registered it to create a likelihood of confusion and falsely suggest a connection between Complainant and Respondent, and to attract Internet users seeking Complainant to <politicohispano.com> for Respondent’s commercial gain. Use of a website to display products similar to a complainant’s, such as news about politics, to attract Internet users for commercial gain demonstrates bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”); DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”) This Panel concludes that Respondent registered the disputed domain for the purposes of profiting by creating confusion as to the source of the website, and finds, therefore, that Respondent has registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel notes that Complainant also asserts Respondent failed to respond to Complainant’s demand letters. While failure to respond to a complainant’s cease and desist letter may be taken into consideration as a marker in support of an inference of bad faith, the additional failure to file a Response is necessary to fully meet the burden of Policy ¶ 4(a)(iii). See Guccio Gucci S.p.A. v. Domain Administrato - Domain Administrator, D2010-1589 (WIPO Nov. 3, 2010) (“The Panel also considers the failure of the Respondent to respond to the Complainant’s letters of demand and failure to file a Response to the Complaint further support an inference of bad faith.”). The Panel notes that it need not rely on Respondent’s failure to respond to Complainant’s demand letters here because has more substantial evidence of Respondent’s bad faith for its finding on Policy ¶ 4(a)(iii).
Finally, Complainant argues Respondent had actual knowledge of Complainant’s rights established in 2007 in the POLITICO mark at the time Respondent registered the disputed domain name in 2015. An analysis of the totality of the circumstances regarding the domain name and use made of it can evince a finding of a respondent’s actual knowledge of a complainant’s rights in a mark under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”). Here, Complainant argues, Respondent works in the same industry, news reporting on political matters, and is headquartered in Washington, D.C., in the same region as Complainant, headquartered in nearby Arlington, Virginia. Respondent, therefore, would have actual knowledge of Complainant and Complainant’s marks and associated services. The Panel finds, therefore, that Respondent registered the disputed domain name in bad faith under Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <politicohispano.com> domain name be TRANSFERRED from Respondent to Complainant.
Scott R. Austin, Esq., Chair of the Panel
Sandra J. Franklin, Esq., as Co-Panelist
Professor David E. Sorkin, Co-Panelist
Dated: July 24, 2017
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