Associated Newspapers Limited v. Domain
Manager
Claim
Number: FA0310000201976
Complainant is Associated Newspapers Limited, London,
United Kingdom (“Complainant”) represented by Adam Taylor of Adlex Solicitors, 22 Belsize Park Gardens, London, England, NW3
4LH. Respondent is Domain Manager, Northumberland, United
Kingdom (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <mailonsunday.com>, registered with Intercosmos
Media Group, Inc. d/b/a Directnic.Com.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge, she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically October 9, 2003; the Forum received a hard copy of the Complaint
October 9, 2003.
On
October 10, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed
by e-mail to the Forum that the domain name <mailonsunday.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
October 13, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of November 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@mailonsunday.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
November 6, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum 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. The domain name registered by Respondent,
<mailonsunday.com>, is confusingly similar to Complainant’s THE
MAIL ON SUNDAY mark.
2. Respondent has no rights or legitimate
interests in the <mailonsunday.com> domain name.
3. Respondent registered and used the <mailonsunday.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is
the publisher of “The Mail on Sunday,” a national newspaper in the United
Kingdom. The newspaper was launched in
1982 and from February to July of 2003, its average circulation totaled 2.3
million per issue. The newspaper has
become the second highest-selling national Sunday newspaper in the United
Kingdom.
Complainant
registered the mark, THE MAIL ON SUNDAY, in the United Kingdom on September 5,
1984 (Registration Numbers 1218343 and 1218344) and has used the mark in
commerce since 1982. Complainant’s
subsidiary, Associated Mediabase Limited, registered the
<mailonsunday.co.uk> domain name in 1995.
Respondent
registered the <mailonsunday.com> domain name March 19, 1999. From 1999[1]
until July 2003 the domain name resolved to the website
<firstsites.com/newspapers.html>, which provided links to several
newspapers, including Complainant’s website, and provided paying affiliate
links to third party websites.
Currently the domain name does not resolve to a website.
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
established in this proceeding that it has rights in the mark, THE MAIL ON
SUNDAY, through its registration (Registration Numbers 1218343 and 1218344) and
by Complainant’s use of the mark in commerce since 1982. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption); see also Tuxedos By
Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law
rights in a mark where its use was continuous and ongoing, and secondary
meaning was established).
The domain name
registered by Respondent, <mailonsunday.com>, is confusingly
similar to Complainant’s mark because it merely omits the word “the” from the
mark and adds the generic top-level domain “.com” to the mark. The omission of the word “the” and the
addition of “.com” is insufficient to circumvent the Panel from finding the
domain name confusingly similar to Complainant’s mark. See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name
<asprey.com> is confusingly similar to Complainant’s “Asprey &
Garrard” and “Miss Asprey” marks); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22,
2000) (finding that "the addition of the generic top-level domain (gTLD)
name ‘.com’ is . . . without legal significance since use of a gTLD is required
of domain name registrants").
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Due to
Respondent’s failure to contest the allegations of the Complaint, the Panel may
conclude that Respondent lacks rights or legitimate interests in the domain
name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9,
2000) (finding that by not submitting a Response, Respondent failed to invoke
any circumstance that could demonstrate 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).
Furthermore,
Respondent was not authorized nor licensed to register or use a domain name
that incorporates Complainant’s mark.
The WHOIS information lists Respondent as the registrant of the domain
name but fails to establish that Respondent is commonly known by the domain
name. Therefore, the Panel concludes
that Respondent lacks rights or legitimate interests in the <mailonsunday.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no
rights or legitimate interest where Respondent was not commonly known by the
mark and never applied for a license or permission from Complainant to use the
trademarked name); see also Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO
June 27, 2000) (finding no rights or legitimate interests where (1) Respondent
is not a licensee of Complainant; (2) Complainant’s prior rights in the domain
name precede Respondent’s registration; (3) Respondent is not commonly known by
the domain name in question).
In addition,
Respondent’s prior use of the misleading domain name to resolve to a website
that provides links to Complainant’s competitors and presumably produces
“pay-per-click” revenue for Respondent is evidence that the domain name was not
used to make a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Black & Decker
Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002)
(holding that Respondent’s use of the disputed domain name to redirect Internet
users to commercial websites, unrelated to Complainant and presumably with the
purpose of earning a commission or pay-per-click referral fee did not evidence
rights or legitimate interests in the domain name); see also Nike,
Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no “bona
fide” offering of goods or services where Respondent used Complainant’s mark
without authorization to attract Internet users to its website, which offered
both Complainant’s products and those of Complainant’s competitors).
The Panel notes
that since Respondent registered the domain name in 1999 and used it from 1999
until Complainant wrote a cease and desist letter July 8, 2003, Respondent
might have persuaded the Panel that a bona fide use had been made of the domain
name such as would establish rights.
However, Respondent did not take the time to appear in this proceeding
and provide support for some right to use the mark in a domain name and the
Panel has taken Complainant’s allegations as true and made such inferences as
were necessary under the evidence produced.
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
It may be inferred
that Respondent had actual or constructive knowledge of Complainant’s mark
because the mark is registered and used in commerce within Respondent’s country
of residence. The <mailonsunday.com>
domain name provides a link to Complainant’s website, thus establishing that
Respondent knew of Complainant and Complainant’s rights in the mark. Registration of a domain name, despite
knowledge of Complainant’s rights, is evidence of bad faith registration
pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Pfizer, Inc. v. Papol Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between
Complainant’s mark and the content advertised on Respondent’s website was
obvious, Respondent “must have known about the Complainant’s mark when it
registered the subject domain name”).
Furthermore,
Respondent’s prior use of the <mailonsunday.com> domain name is
evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name
provided links to Complainant’s competitors and Respondent presumably
commercially benefited from the misleading domain name by receiving
“click-through-fees.” See Kmart v.
Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent
profits from its diversionary use of Complainant's mark when the domain name
resolves to commercial websites and Respondent fails to contest the Complaint,
it may be concluded that Respondent is using the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv)); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where Respondent's use of the domain name at issue to
resolve to a website where similar services are offered to Internet users is
likely to confuse the user into believing that Complainant is the source of or
is sponsoring the services offered at the site).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <mailonsunday.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 19, 2003.
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[1] Complainant cited this date as 1993, referring to Exhibit 5; however, based on the Exhibit, the date should have been 1999.
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