National Cable Satellite Corporation, d/b/a C-SPAN vs. Michael Mann / Omar Rivero
Claim Number: FA1707001741966
Complainant is National Cable Satellite Corporation, d/b/a CSPAN (“Complainant”), represented by Marc Miller of McLeod, Watkinson & Miller. Respondent is Michael Mann (“Mann” or “Respondent”), represented by Brian Leventhal. As detailed below, Mann has transferred his rights in the Domain Name to Omar Rivero, who is now the real respondent in interest (“Rivero”) and who is represented by Kaustubh Nadkarni of Loigica, P.A. In this decision, Rivero and Mann are jointly treated as the Respondents.
The domain name at issue is washingtonjournal.com (the “Domain Name”), registered with GoDaddy.com, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
David J. Steele, Esq. as Chair of the Panel;
David H. Bernstein, Esq. as Co-Panelist; and
William F. Hamilton, Esq. as Co-Panelist.
The administrative panel in this case is collectively referred to in this Decision as the “Panel.”
Complainant submitted a Complaint pursuant to ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”) to the Forum electronically on July 27, 2017; the Forum received payment on July 27, 2017. The July 27, 2017 Complaint named “Domains By Proxy, LLC” as the respondent as this information was listed in the whois record for the domain name at the time the Complaint was filed.
On July 31, 2017, GoDaddy.com, LLC (“GoDaddy”) confirmed by e-mail to the Forum that the washingtonjournal.com domain name was registered with GoDaddy. GoDaddy provided then-current whois data, which listed “Michael Mann” of Rehoboth Beach, DE as the registrant. GoDaddy further confirmed that it had locked the domain name to prevent any changes.
On July 31, 2017, the Forum sent a deficiency letter to Complainant’s counsel requesting that Complainant “amend [its] Complaint header and Section 4 to identify the Respondent and its contact information according to the current WHOIS registration information for the disputed domain name. An example of this can be found in the RE: line above.” The RE: line of the Forum’s letter read: “National Cable Satellite Corporation, d/b/a C-Span v. MICHAEL MANN.”
On August 3, 2017 Complainant filed its Amended Complaint naming Michael Mann as the respondent in this case.
On August 3, 2017, the Forum served the Amended Complaint and all Annexes (collectively, the “Complaint”), including a Written Notice[2] of the Complaint, setting a deadline of August 23, 2017 for any Response. Service was made via e-mail to all entities and persons listed in the whois data for the domain name, including the technical, administrative, and billing contacts, and to postmaster@washingtonjournal.com.
On August 3, 2017, Mr. Omar Rivero (“Rivero”) contacted the Forum by email and advised, in pertinent part, that his “hosting provider just forwarded [him] three emails regarding C-Span’s complaint about www.washingtonjournal.com. I would like to speak to you over the phone, as I have several questions about ADR and this dispute.”
On August 8, 2017, Kaustubh Nadkarni (“Nadkarni”), an attorney representing Rivero in this matter, contacted the Forum by email. Nadkarni stated, in pertinent part, that Rivero “has been improperly served.” Nadkarni further requested that the Forum “make notification of this incorrect service and advise the Complainant of the same.” Nadkarni also stated that “while [Rivero] is the true owner of the URL www.washingtonjournal.com, he is NOT the named Defendant in this administrative proceeding.”
On August 8, 2017, Brian Leventhal (“Leventhal”), an attorney representing the listed registrant Michael Mann (“Mann”), contacted the Forum by email. Leventhal stated that the subject “domain name was sold by Mann to [] Rivero … on May 16, 2017….” Leventhal further explained that, “due to the registrar lock placed on the domain as a result of this action, [Rivero] is unable to make that change now. The registrar should be able to confirm the sale via its records of an account change for this domain even if the registrant data has not been changed.” Leventhal requested “that this action be suspended so that the registrar can remove the lock and allow Mr. Rivero to make the necessary changes so the proper party can be named in this action. … [Mann] will cooperate in any way reasonably necessary. His only concern is that his name not be associated with this action, particularly in the event the outcome is a panel ruling in favor of complainant.”
Later on August 8, 2017, Rivero emailed GoDaddy, Nadkarni, Mann, and the Forum, stating that he purchased the domain name from Mann, and “[Complainant] filed it against the wrong party, Mike Mann, instead of the person who rightfully owns the URL now, myself.” Rivero further indicated his desire to update the whois data to list himself as the registrant, and for Complainant to refile the case against the correct party.
On August 10th and August 11th, the Forum and Leventhal exchanged numerous emails regarding Mann’s request that the domain name be unlocked to permit updating the whois data to remove Mann and list Rivero as the registrant. The Forum advised Leventhal that it had “reviewed the case with the Registrar and that we concluded that the lock cannot be lifted at this time as to update the record.” Leventhal explained his view that updating the whois data wasn’t “something that is even up to the Forum – this is a question of the Registrar’s obligation under its RAA and the WHOIS Accuracy Specification Program.” The Forum further advised Leventhal that “the basis upon which we reached our conclusion [to lock the domain name], [was] UDRP Rules 4(b) and 3(b)(v) which are very clear on this point.” Leventhal responded that, “[a]s previously stated, it is not up to the Forum to make ANY determination as to the registrar’s obligations under the UDRP or the RAA.… If GoDaddy prefers that I file something with ICANN stating that GoDaddy is violating its RAA, that can be arranged.” In several additional emails, Leventhal insisted that GoDaddy’s “independent obligation to ensure the accuracy of the WHOIS even during the pendency of a UDRP” should control and the whois data should be changed. No information regarding a registrar compliance complaint filed by Mann against GoDaddy is in the case record.
During the August 10, 2017, email exchange with the Forum, Leventhal also advised the Forum “I’m also working with Complainant’s counsel on a suspension.” However, no request to stay the proceeding was filed with the Forum.
A Response was filed by Leventhal, on Mann’s behalf, on August 24, 2017. Of significance to the procedural history of the case, in his Response, Mann again requested “that this action be dismissed without prejudice so that Rivero or the Registrar (pursuant to its own independent obligations as described above) can update the registrant information for the Disputed Domain so that the information in the WHOIS record is accurate and so that Complainant can pursue its claim against the appropriate party. Alternatively, if the panelist is not willing or able to grant such relief, [Mann] requests that his name, email address and other identifying information be stricken from the record in all respects (including the caption of this action) so that neither he nor his business is damaged by being associated with this matter.”
A Response was also filed by Nadkarni, on Rivero’s behalf, on August 23, 2017.
On August 24, 2017, Complainant requested a one-day extension of time (until August 29, 2017) to file an Additional Submission with the Forum, citing as grounds that it did not receive Rivero’s response until August 24, 2017.
On August 29, 2017, Complainant filed its Additional Submission with the Forum.
On August 31, 2017, the Forum appointed the Panel and sent notice to Complainant, Mann and Rivero.
On September 5, 2017 Mann and Rivero jointly filed their “Respondent’s And Third Party URL Owner’s Joint Response To Complainant’s Written Statement” with the Forum.
On September 13, 2017, the Panel issued an Order extending the date for decision to September 20, 2017.
Complainant requests that the domain name be transferred to Complainant.
A. Complainant’s Contentions
Complainant is a District of Columbia non-profit corporation. Complainant owns and operates the Cable Satellite Public Affairs Network (“C‑SPAN”), the internationally recognized distributor of public affairs television.
In 1995, C-SPAN began broadcasting its “Washington Journal” television series as the network’s flagship viewer call-in program, providing a forum for lawmakers and journalists to discuss key topics surrounding current legislation.
Complainant has built a strong and famous brand by providing access to political news and events without editing, commentary or analysis and with a balanced presentation of points of view.
Complainant currently maintains a registration for the WASHINGTON JOURNAL mark with the United States Patent and Trademark Office (“USPTO”) Reg. No. 2,089,238, issued August 19, 1997). Complainant’s WASHINGTON JOURNAL mark is registered in International Class 41 for “television program concerning daily public affairs.”
Respondent does not own any rights in the WASHINGTON JOURNAL mark, nor does Respondent have permission, whether by license or otherwise, to use Complainant’s mark. Respondent, therefore, does not have any rights or legitimate interest in the disputed domain. Respondent cannot establish any of the elements recited in Paragraph 4(c) of the Policy.
Respondent uses the disputed domain name to host a website that contains brief, opinionated interpretations of political news sourced from both established news outlets as well as from amateur observers.
Respondent’s website does not contain any reference to services or other business activities conducted by Respondent, but it does contain a significant number of sponsored print and video advertisements to commercial websites offering goods or services unrelated to the Complainant. Complainant believes that Respondent may be receiving click-through fees or other compensation in connection with hosting this content.
There is no evidence that Respondent has been commonly known by the disputed domain name. The whois record does not identify a registrant with “Washington Journal” in its name.
It is highly unlikely that the Respondent was unaware of Complainant and the WASHINGTON JOURNAL mark when Respondent registered the disputed domain name because the mark has been used since 1995 in connection with its C-SPAN public affairs programming distributed throughout the world. Therefore, Respondent’s prior knowledge of WASHINGTON JOURNAL mark is evidence that Respondent registered the domain name in bad faith under the Policy.
Respondent’s website contains content related to political news, which is topically related to the content covered in Complainant’s television series “Washington Journal.” Complainant has built a strong and famous brand by providing access to political news and events without editing, commentary or analysis and with a balanced presentation of points of view.
Respondent’s disputed domain name resolves to a website containing summaries of political articles, news, and events that are presented with strong partisan commentary and interpretations and contains numerous direct links to websites of political advocacy groups that may be providing sponsorship payments to Respondent.
Despite the obvious partisan opinions of political news contained on Respondent’s website, Respondent’s website contains the following description: “In an age of fake news, we are a trusted source with a track-record of honesty and integrity.” Because of the content and Respondent’s description of its content, it is likely that Respondent is purposely using Complainant’s WASHINGTON JOURNAL mark in order to attract internet users seeking political content from Complainant.
Respondent’s exploiting the goodwill of a mark in furtherance of its own political agenda supports a finding of bad faith pursuant to Policy if 4(a)(iii).
B. Mann’s Contentions
Mann acquired the Domain Name from BuyDomains.com, a third party secondary domain name marketplace, in 2005 without any knowledge of Complainant’s alleged trademark rights in WASHINGTON JOURNAL or intent to profit from or otherwise abuse any trademark rights Complainant may have.
While Mann owned the Domain Name, Respondent’s use was limited to offering it for sale, and he did not use it to sell competitive goods or services, or in any other way in bad faith.
On May 16, 2017, Mann agreed to sell the Domain Name to Rivero. The sale was finalized on or about May 25, 2017. After taking control of the Domain Name, Rivero was obligated to update the registrant information (along with administrative and technical contacts) to reflect his own information rather than that of Mann. However, Rivero neglected to do so.
Mann contends that the Complaint should be dismissed without prejudice to permit updating the whois data to reflect Rivero as the registrant. Mann also contends that, notwithstanding Rule 4(b), GoDaddy is required to unlock the domain name to update the whois data pursuant to GoDaddy’s obligations under the WHOIS Accuracy Specification Program.
C. Rivero’s Contentions
Rivero states that he is the rightful, legal owner of the Domain Name, having acquired the Domain Name on May 16, 2017, prior to the commencement of this proceeding.
On August 3, 2017, domainsbyproxy.com notified Rivero of the Complaint filed by Complainant.
Also on or about August 3, 2017, Rivero began his bona fide commercial use of the Domain Name.
Complainant “erroneously named an improper party [Mann] as the Respondent to the proceeding.” The “proceeding should be dismissed for failure to properly state the true legal owner of the [Domain Name] as the Respondent.”
On January 29, 2016, Rivero formed an entity, Blue Direction LLC, for "a commercial purpose of handling business matters, including trademarks such as WASHINGTON JOURNAL BREAKING NEWS. REAL NEWS and Design as highlighted on the [Domain Name].
On August 4, 2017, Blue Direction LLC filed an application to register the mark WASHINGTON JOURNAL BREAKING NEWS. REAL NEWS and Design.
Rivero contends that “Complainant not only has to demonstrate that there is a similarity between the [Domain Name] and the claimed mark, but also prove that it has rights in the claimed mark specifically limited only to the description of goods and services declared under the claimed mark.” Complainant’s rights are extremely limited under the mark. The services allegedly used under the Complainant’s cited mark are also severely narrow: “television program concerning public affairs.”
Complainant does not have the exclusive rights in the terms WASHINGTON JOURNAL, and there are several other registrations that contain or bear the precise terms “WASHINGTON” and “JOURNAL.” Additionally, several of these registrations recite similar goods or services as those provided by Rivero. One registration, for WASHINGTON BUSINESS JOURNAL (Reg. No. 4,655,074) recites: “Magazines, newspapers, journals all on the subject of business and Providing on-line non-downloadable publications in the nature of magazines, newsletters, newspapers and journals all on the subject of business; and non-downloadable electronic publications in the nature of magazines, newsletters, newspapers and journals all on the subject of business.”
It is clear that the Complainant does not have the exclusive rights in the terms WASHINGTON JOURNAL across a broad range of goods and/or services. Without the exclusive rights in the terms WASHINGTON JOURNAL, it is impossible for Complainant to allege that the “USPTO alone sufficiently establishes the NSCS’s rights to the name pursuant to Policy 4(a)(1).” Rivero also contends “…it is obvious that the USPTO did not intend for Complainant to have exclusive rights in the terms WASHINGTON JOURNAL or the [Domain Name] incorporating those terms.
Complainant does not have exclusive rights in the relevant mark and the domain name is not confusingly similar to that mark given the limited scope of the services rendered thereunder.
Rivero contends the Complaint fails to acknowledge that there was no delay in Rivero’s commercial use of the Domain name after its purchase.
Rivero states he is making a bona fide offering of goods or service as “evidenced by the online publication of over 1,300 written articles and blogs [on the Domain Name].” Rivero notes that publication of these articles was “way in advance of any receiving notice of the dispute.”
Rivero contends “[t]he use was in good faith, demonstrative, and closely related to [his] services. Further, Rivero explained that he “has already demonstrated proper use of the [Domain Name] in relation with its services with the inclusion of a plurality of online publications
Complainant fails to disclose and provides no evidence that supports an assertion that the offering of the Third Party URL Owner’s services is done with the intent to infringe on Complainant’s rights. This showing is necessary to undermine the bona fide status of that offering. To the contrary, Rivero contends, “[his] interests are expressly legitimate for the [Domain Name’s] commercial use.
Blue Direction LLC’s application to register the mark WASHINGTON JOURNAL BREAKING NEWS. REAL NEWS and Design is further evidence that Rivero’s interests are legitimate in connection with a bona fide offering of the goods or services.
Because none of Rivero’s services on the Domain Name concern any services related to television programming, Rivero is making a legitimate use of the Domain Name without the intent to tarnish any of Complainant’s alleged trademark(s).
Complainant has provided no evidence that expressly shows that the Domain Name Owner’s registration and/or use is in bad faith. The Domain Name was chosen by the Domain Name Owner to provide its extensive number of online users and followers with breaking political news from Washington D.C., the epicenter of breaking American political news.
The significant similarity between the Domain Name and the political news focusing on the political happenings in Washington D.C. indicates that, not only was the Domain Name Owner’s interests legitimate, but also that there was no bad faith in owning and using the domain name.
The goods and services recited in Complainant’s service mark registration are vastly dissimilar to the services with which Rivero uses the Domain Name.
Rivero claims he has no known history or pattern of willful infringement of trademarks or cybersquatting.
There is no evidence of circumstances indicating that the Rivero registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant
Complainant’s prior registration of an alleged trademark containing the terms WASHINGTON and JOURNAL is not the litmus test to determine whether a subsequent Domain Name is being registered with a bad intent.
Complainant and Rivero are not competitors. Television programming concerning public affairs are vastly different compared to online publications comprising of breaking political news. Complainant is in the business of television programming concerning public affairs. Rivero, on the other end of the spectrum, focuses on breaking political news delivered via online publications having a particular view.
It is simply impossible to assert that the Rivero registered the domain name primarily for the purpose of disrupting the Complainant’s business even remotely from the standpoint of commercial competition.
There is no evidence in the Complaint that indicates that the Rivero is a competitor of the Complainant and has registered the domain name simply to disrupt Complainant’s business.
No content on the Domain Name indicates that Rivero’s services are in anyway associated with Complainant.
On his website Rivero expressly disclaims that the Domain Name and services are “not affiliated, associated, authorized endorsed by, or in any way officially connected with any or all other news website or television networks, programs, or their subsidiaries or associates.”
There is no evidence Rivero had actual knowledge of Complainant’s alleged trademark for television programming. There is no evidence that the Domain Name Owner has sought to take unfair advantage of Complainant’s alleged trademark in order to attract Internet users to its website. This is further supported by the fact that Complainant’s services of television programming are vastly unrelated to his online blogging and writing of articles of breaking political news services.
D. Complainant’s Additional Submission[3]
Respondent has made multiple attempts to have GoDaddy update the whois data after the complaint was filed. Respondent also requested the Forum dismiss the case. However, the Policy and Rules make clear that the domain name holder is required to submit to mandatory administrative proceeding.
Respondent’s request to dismiss the case is improper because the case was properly initiated under the Policy and Rules. Moreover, dismissal without prejudice would be inequitable to Complainant, requiring Complainant to spend additional time and funds to file a new complaint and unnecessarily delay the resolution of Rivero’s blatant trademark infringement.
As an unnamed party, Rivero has no standing to submit a response. Rivero’s response should not be considered because it may be inconsistent with response filed by Mann. Further, the UDRP Rules and the Forum’s Supplemental Rules do not create a third‑party right to make submissions, and such third‑party rights would unduly burden the Forum.
Complainant filed its Complaint expeditiously upon learning from numerous employees and industry connections that its consumers were confused by the existence of the disputed domain name and infringing trademark in the marketplace.
Complainant’s rights are not limited solely to television programing and Complainant uses of its marks on its website. This is a logical business extension of its federal registration for television programming. Complainant has common law rights in its mark for these services as well.
The existence of other trademarks containing “Washington” and “Journal” does not preclude Complainant's rights in its trademark.
Rivero uses Complainant’s trademark to divert Internet users to his website offering competing services; that is not a bona fide use under the Policy.
Rivero’s website logo is irrelevant, and regardless, Rivero cannot remedy confusing similarity through the addition of descriptive terms to Complainant’s WASHINGTON JOURNAL trademark.
Rivero changed the logo mark used on the Domain Name after the initiation of the UDRP Complaint. Prior to the filing of the Complaint, the mark was simply “Washington Journal”; after the Complaint was filed, the mark was changed to “Washington Journal Breaking News. Real News.”
E. Mann and Rivero’s Joint Additional Submission[4]
Rivero used the Domain Name for three months, posting more than 1,300 politically driven written blogs and articles concerning the Nation’s Capital (Washington, D.C.), between the time he purchased the domain name and when the complaint was initiated.
The Complainant’s certification under Rule 3(b)(xiii) was false (not based on complete and accurate knowledge) because the Complainant’s counsel was the specifically notified about Rivero’s ownership of the Domain name, yet continued this complaint against Mann.
Mann and Rivero requests that the Panelists either: (i) dismiss the Complaint without prejudice for naming the incorrect party as the Respondent, or in the alternative, (ii) consider Rivero’s legal arguments on record for the Panelists decision and strike Mann’s name, email address and other identifying information from the record in all respects (including the caption of this action) so that neither he nor his business is damaged by being inequitably associated with this matter.
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.”
The Panel has received and carefully reviewed each of the communications and documents in the record, including each additional statement filed with the Forum.
Several preliminary issues were raised by Mann and Rivero. The Panel addresses each before turning to the substantive review of the case.
Preliminary Issue: Mann is Properly Named as the Respondent in this Case
The Rules state that the “Respondent” is the holder of a domain-name registration against which a complaint is initiated. The Rules do not define the term “holder,” but FORUM Supplemental Rule 1(d) elaborates that “‘[t]he Holder of a Domain Name Registration’ . . . means the single person or entity listed in the WHOIS registration information at the time of commencement.”
Rivero and Mann do not dispute that Mann was, in fact, listed in the whois registration information at the time of commencement. Mann was, therefore, properly identified as a respondent in the Complaint.
The purpose of the UDRP is to provide a straightforward mechanism to assert rights in a domain name against an identifiable registrant. Mann and Rivero’s request that the Panel find that the complaint was filed in error when it was lodged against the registrant listed in the whois registry at the time it was filed is inconsistent with this purpose.
Preliminary Issue: Rivero is the Real Party in Interest and may be added as a Respondent
Even though Mann is appropriately named as the Respondent as a matter of administration and procedure, the Panel finds that Rivero is the real party in interest with respect to the substantive issues raised in the complaint and may be treated as an additional Respondent. See Carl Cartee v. Stanley Bell, FA1724616 (Forum May 8, 2017) (evaluating legitimate interest and bad faith with respect to an underlying real party in interest). Rule 10(a) provides the Panel with broad discretion to conduct the proceeding in such manner as it considers appropriate so long as it remains in accordance with the Policy and Rules. Nothing in the Policy or Rules prohibits a Panel from treating additional parties in interest who request to be heard as parties to the proceeding or from adding to the caption of a case the identity of the real party in interest. Indeed, that approach is regularly followed in cases where a case is filed against a privacy service and the registrar subsequently identifies the real party in interest. See generally WIPO Jurisprudential Overview 3.0 at paragraph 4.4.
Rivero and Mann have provided adequate evidence in the record that Rivero purchased the Domain Name from Mann. The information in the record supports that Mann transferred the Domain Name to Rivero using GoDaddy’s account change procedure. Rivero also admits that he is the owner of the Domain Name and that he has controlled the Domain Name during the time period relevant to the allegations in the complaint. Rivero has received timely notice of these proceedings, has offered two substantive responses to the complaint, and has requested that his arguments be heard. Accordingly, Rivero has voluntarily joined this proceeding as a party. In so far as Rivera has voluntarily appeared and joined this proceeding and the merits of the dispute are before the Panel, it makes little sense to prevent him from doing so. While Rivero has no basis to seek dismissal of this properly-initiated proceeding, the Panel does not believe a technical error in updating the whois registry should prevent a willing real party in interest from presenting its position.
Accordingly, in evaluating the domain name registrant’s potential rights or legitimate interest, and assessing whether the registrant registered and used the domain name in bad faith, the Panel will consider Rivero’s conduct rather than Mann’s conduct. The Panel notes that this decision is based on the specific facts of this matter; in other or similar cases, it may be appropriate for a Panel to also consider the conduct of the seller of the domain name.
Preliminary Issue: Request to Redact Mann’s Identifying Information From the Public Record
Mann requests “his name, email address and other identifying information be stricken from the record in all respects (including the caption of this action) so that neither he nor his business is damaged by being associated with this matter.”
Policy ¶ 4(j) provides that “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” This is not an exceptional case.
Redaction must balance the benefits of transparency in the administration of the UDRP against the disclosure the identity of innocent persons.
Here, Mann is a professional domain name broker, who did not change his contact information when he sold the Domain Name to Rivero. Moreover, when using GoDaddy’s account change process (discussed above), Mann could have chosen to have his contact information changed during the transfer to Rivero. Mann now asks this Panel to remove his involvement with the Domain Name from the proceeding “so that neither he nor his business is damaged by being associated with this matter.” Mann has not articulated what damage, if any, he believes he will suffer.
The Panel finds that the benefit of transparency outweighs any speculative harm Mann might suffer from his public identification as a prior owner of the Domain Name; the Panel will not redact from its opinion the facts surrounding Mann’s prior registration and transfer of the Domain Name and his involvement in this case. The Panel’s decision makes clear that Rivero, and not Mann, is the real party in interest in this case. Moreover, the Panel’s finding that Rivero has violated the Policy is just that – a finding related solely to Rivero, not Mann.
Preliminary Issue: Allegation of Improper Service by Forum
Upon receiving verification of the holder of the Domain Name from GoDaddy, which listed Mann and his contact information, the Forum forwarded the complaint, including any annexes, to Mann using the information provided by GoDaddy. Rivero contends that service (on him) was not proper because while he was the owner of the Domain Name, service was made by the Forum on Mann.
The Rules (with which Rivero agreed to comply when he acquired the Domain Name) require dispute providers like the Forum “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. Rule 2 provides, in pertinent part, that:
Achieving actual notice, or employing the following measures to do so, shall discharge this responsibility:
(i) sending Written Notice of the complaint to all postal-mail and facsimile addresses (A) shown in the domain name’s registration data in Registrar's Whois database for the registered domain-name holder, the technical contact, and the administrative contact and (B) supplied by Registrar to the Provider for the registration's billing contact; and
(ii) sending the complaint, including any annexes, in electronic form by e-mail to:
(A) the e-mail addresses for those technical, administrative, and billing contacts;
(B) postmaster@<the contested domain name>; and
(C) if the domain name (or "www." followed by the domain name) resolves to an active web page (other than a generic page the Provider concludes is maintained by a registrar or ISP for parking domain-names registered by multiple domain-name holders), any e- mail address shown or e-mail links on that web page; and
(iii) sending the complaint, including any annexes, to any e-mail address the Respondent has notified the Provider it prefers and, to the extent practicable, to all other e-mail addresses provided to the Provider by Complainant under Paragraph 3(b)(v).
Accordingly, the Forum discharges its obligations if it either provides actual notice, or if it employs the measures in Rule 2(i) – 2(iii) even if the Respondent never receives actual notice. The Forum did both.
First, the Forum sent the complaint and Written Notice of the complaint to all the required postal‑mail, facsimile addresses, and transmitted it to all the required e‑mail addresses in the whois data and provided by the registrar. See Rule 2(i)(A) and (B), supra. That Mann, and not Rivero, was listed in the whois data and the information provided by GoDaddy is of no importance for service under Rule 2, and in any event, to the extent the Whois data was not correct, that was a problem of Rivero’s and Mann’s own making.
Second, Rivero admits that, on August 3, 2017, his hosting provider forwarded him three emails regarding the Complaint. These emails were the Forum’s sending the Complaint and Written Notice pursuant to Rule 2(a)(ii). Because Rivero received these documents, the Forum “achieved actual notice” and service was, therefore, proper.
Additionally, Rivero is obligated to maintain accurate whois information for his domain name. It would be inequitable to permit him to fail in his obligation, and then obtain dismissal of the case against his interest because he did not list accurate information as required.
The Panel finds that the Forum has discharged its responsibility under the Rules “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices.
Preliminary Issue: Removal of Lock During the Pendency of a UDRP Complaint
Mann and Rivero requested multiple times that the Forum and GoDaddy remove the lock that GoDaddy placed on the Domain Name pursuant to Rule 4(b). Mann asserts that updating the whois data was not “something that is even up to the Forum – this is a question of the Registrar’s obligation under its Registrar Accreditation Agreement (the “RAA”) and the WHOIS Accuracy Specification Program.” Mann states that GoDaddy’s “independent obligation to ensure the accuracy of the WHOIS even during the pendency of a UDRP” should control and the whois data should be changed.
The WHOIS Accuracy Specification Program[5] requires that registrars maintain accurate whois data for domain names registered through the registrar. The WHOIS Accuracy Specification Program applies to GoDaddy pursuant to its’ RAA with ICANN. However, the RAA provides that, “[i]n the event ICANN adopts a Specification or Policy that is supported by a consensus of ICANN-Accredited registrars as reflected in the Registrar Stakeholder Group (or any successor group), establishing or approving a Code of Conduct for ICANN-Accredited registrars, Registrar shall abide by that Code of Conduct.” RAA, at 3.7.1. The current Rules, which were adopted by the ICANN Board in September, 2013, reflect such a Specification or Policy.
Moreover, even to the extent that the current Rules were not a Specification or Policy that the RAA did not intend to be followed by registrars, this Panel would interpret the two policies – the RAA and the Rules – together (and consistent with each other). The WHOIS Accuracy Specification Program requires that incorrect data be corrected; the Rules specifically state that, during a UDRP case the domain name, shall be locked and “any modification(s) of the Respondent’s data following the [lock] may be addressed by the Panel in its decision.” Rule 4(b). The reasons for the lock include to prevent cyberflight, to prevent respondents from trying to game the UDRP by changing relevant information during the proceeding (which could include both procedural matters, such as a location of mutual jurisdiction, or substantive matters, such as the identity of the party whose rights or legitimate interests are being assessed), and to ensure that the domain name remains frozen so that the Panel’s decision can be effectuated either by the Registrar or a court.
Once a domain name is locked pursuant to Rule 4(b), the registrar’s obligations to maintain accurate whois data under the WHOIS Accuracy Specification Program are subordinate to the registrar’s obligations under Rule 4(b). Further, after a domain name is locked during a UDRP case pursuant to Rule 4(a), modification(s) to the Respondent’s data should only be made, if at all, by the UDRP Panel, and not by the registrant, registrar or dispute provider. Rule 4(b).
The Forum and GoDaddy correctly refused to remove the lock on the Domain Name pursuant to Rule 4(b).
Standard of Proof and Prima Facia Element of the Policy
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements, by the preponderance of the evidence, to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name 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.
Identical and/or Confusingly Similar
Complainant must prove that it owns trademark or service mark in which Complainant has rights, and that the Domain Name is identical or confusingly similar to Complainant’s mark.
Complainant has rights in the WASHINGTON JOURNAL service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. Federal registration by Complainant of its mark establishes Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Next Education, LLC v. Vibhooti Kishor/Animation Mentor, FA1450133 (Forum Aug. 9, 2012) (“Typically, panels find that registration with the USPTO establishes rights in a given mark”). See also Microsoft Corp. v. Burkes, FA652742 (Forum Apr. 17, 2006); Paisley Park Enters. v. Lawson, FA384834 (Forum Feb. 1, 2005).
Rivero argues that Complainant’s does not hold the exclusive rights to the WASHINGTON JOURNAL mark across a broad range of goods and/or services. Moreover, Rivero notes that several other registrations that include the words “WASHINGTON” and “JOURNAL” have been issued by the USPTO. These facts may be true, but the relevant inquiry is whether Complainant has rights in the mark. The scope of Complainant’s rights, and whether a respondent’s use is bona fide, is relevant to the second prong of the Policy, but it is not relevant to the analysis under the first prong.
Complainant must also prove that the Domain Name is identical or confusingly similar to Complainant’s WASHINGTON JOURNAL mark. The test of whether the Domain Name is identical to the mark is simple: The Panel need only compare the alphanumeric strings. See generally WIPO Jurisprudential Overview 3.0 at paragraph 1.7. The gTLD may be relevant, but it also may be disregarded for the purposes of assessing whether the Domain Name is identical to the trademark in which the Complainant has rights; similarly, spaces in the trademark may be disregarded because they are typically not incorporated into domain names. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (the panel held that spaces, punctuation, and gTLDs do not impact a Policy ¶ 4(a)(i) determination). Here, the Domain Name is identical to the trademark because the Domain Name (not including the gLTD) is the same as the letters in the Complainant’s Trademark: WASHINGTON JOURNAL (not including the space between the words).
The Panel finds the Complainant has proved this element of the Policy.
Rights or Legitimate Interests
Under the Policy, once the complainant asserts a prima facie case against the respondent, the respondent bears the burden of coming forward with evidence that it has rights or legitimate interests in the subject domain name pursuant to ¶ 4(a)(ii) of the Policy. AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sep. 25, 2006). Although the burden of production shifts to the respondent, the complainant still has the burden of proof. See generally WIPO Jurisprudential Overview 3.0 at paragraph 2.1. A complainant may establish a prima facie case by, inter alia, a showing that (1) a respondent is not known by a complainant’s marks or (2) not authorized to use the marks. G.D. Searle & Co. v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002); Dunkin’ Brands Group, Inc. et al. v. Giovanni Laporta, FA 568547 (Nat. Arb. Forum Aug. 25, 2014).
Complainant contends that there is no evidence that Rivero has been commonly known by the disputed domain name. The whois record does not identify a registrant with “Washington Journal” in its name. Further, Complainant states that Rivero does not own any rights in the WASHINGTON JOURNAL mark, nor does Rivero have permission, whether by license or otherwise, to use Complainant’s mark. These assertions are sufficient to establish a prima facie case that Rivero lacks rights or legitimate interests in the Domain Name.
In response, Rivero is not claiming that he is making a descriptive fair use of the words “Washington” and “Journal.” To the contrary, Rivero has applied to register those words as part of his trademark application, and is himself claiming trademark rights. Rather, Rivero asserts that he has made a bona fide commercial use of the Domain Name. Rivero contends that his use is “vastly different from the television programming for public affairs for which the Complainant’s alleged mark is registered for.” The Panel disagrees.
Rivero’s use includes the online publication of over 1,300 written articles and blogs on the website available at the Domain Name. Rivero explains that “[the 1,300 articles] relate to breaking political news… .” Complainant states that Rivero’s website contains content related to political news, which is topically related to the content covered in Complainant’s television series “Washington Journal.” The evidence submitted supports that the posted content is related to political news, if not identical with respect to the content’s political leaning, or lack of political leaning.
Given that both Complainant and Rivero are providing political news, targeting the same or similar consumers, and are claiming trademark rights in the term WASHINGTON JOURNAL, Rivero’s use of the Domain Name (which is identical to Complainant’s mark) is plainly infringing Complainant’s rights. Rivero is using Complainant’s mark to attract consumers to his site; Rivero then delivers directly overlapping political news to these consumers for Rivero’s pecuniary gain.
It has long been held that using a domain name to divert Internet users seeking a complainant’s website or a complainant’s goods to a website providing similar goods or service for a respondent’s pecuniary gain is not a bona fide use under the Policy. Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sep. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Rivero’s August 4, 2017 application to register the mark WASHINGTON JOURNAL BREAKING NEWS. REAL NEWS and Design fails to establish rights under the Policy. This application was filed the day after Rivero received the complaint in this action. Policy ¶ 4(c)(i) looks to whether the respondent has any rights to the domain name “before any notice to respondent of the dispute.” Rivero’s subsequent attempt to secure rights are ineffective. In any event, a trademark application is not evidence of trademark rights; until the mark is registered on the Principal Register, the application carries no presumption of validity.
The Panel finds the Complainant has proved this element of the Policy.
Registration and Use in Bad Faith
To establish bad faith for the purposes of the Policy, the Complainant must show that the disputed domain name was registered and used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
The Complainant contends that Rivero is purposely using its WASHINGTON JOURNAL mark in order to attract internet users seeking political content from the Complainant. The Complainant also contends that, because of the related political news and Rivero’s description of its content (“[i]n an age of fake news, we are a trusted source with a track-record of honesty and integrity”), that Rivero is purposely using the Complainant’s WASHINGTON JOURNAL mark in order to attract internet users seeking political news from Complainant.
Given the length and prominence of Complainant’s use, it is not credible that Rivero was unfamiliar with Complainant’s mark, especially given that he is using the Domain Name for political news. Rivero does not deny knowledge of the mark, but instead, merely notes that Complainant has not proven his knowledge. Here, given these facts, that knowledge is easy to infer.
According to Rivero’s correspondence with the Forum, he is a Cornell University graduate and a Founder and Editor-In-Chief of an organization called Occupy Democrats. Moreover, he states that he acquired the Domain Name specifically to launch a website to disseminate political news. Given Rivero’s background and the political news hosted on his website, the Panel finds that Rivero, on the evidence presented, was aware of Complainant’s WASHINGTON JOURNAL mark and that he was aware that confusion between his website and Complainant’s registered mark would help jump-start the launch of his website.
The Policy expressly details specific circumstances that, “if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.” Policy ¶ 4(b). Any one of these express circumstances is sufficient to establish bad faith. One circumstance, applicable here, is detailed in ¶ 4(b)(iv) of the Policy, which states that:
by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
It is well-settled that the registration and commercial use of an identical or confusingly similar domain name to create a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of a respondent’s website, thereby taking advantage of the complainant’s mark for a respondent’s commercial gain, supports a finding of bad faith under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA593977 (Nat. Arb. Forum Dec. 28, 2005) (“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).”); See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
Rivero’s conduct falls squarely within the circumstances detailed in Policy ¶ 4(b).
The Panel finds Complainant has proved this element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel UNANIMOUSLY concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the washingtonjournal.com domain name be TRANSFERRED from Respondents to Complainant.
David J. Steele
Chair of the Panel
David H. Bernstein William F. Hamilton
Co-Panelist Co-Panelist
Dated: September 20, 2017
[1] Given the complex procedural issues disputed in this case the Panel believes a more detailed recitation of the procedural history is warranted.
[2] Written Notice is a defined term in the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules” or singularly a “Rule”). See Rule 1.
[3] Complainant’s Additional Submission raised several additional relevant facts. The Additional Submission also repeated much of the information and argument presented in its initial Complaint. The part of the Additional Submission that simply repeated or reargued evidence already covered in the Complaint has been disregarded. See generally YETI Coolers, LLC v. Lyon, File No. 1675141 (Forum July 11, 2016) (disregarding additional submission that failed to address any new legal principles or facts that could not have been anticipated in the complaint).
[4] Like Complainant’s Additional Submission, the Joint Additional Submission raised several additional relevant facts. The Additional Submission also repeated much of the information and argument presented in its initial Complaint. As with the Complainant’s Additional Submission, only those portions that raised new facts or arguments not available at the time of the initial Responses has been considered. See footnote 3, supra.
[5] See https://www.icann.org/resources/pages/approved-with-specs-2013-09-17-en#whois-accuracy.
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