Austin Chronicle Corporation v. Spiral Matrix
Claim Number: FA0606000730316
Complainant is Austin Chronicle Corporation (“Complainant”), represented by Peter D. Kennedy of Graves, Dougherty, Hearon & Moody, P.C., 401 Congress Ave., Suite 2200, Austin, TX, 78701. Respondent is Spiral Matrix (“Respondent”), 1st Floor Muya House, Kenyatta Ave., P.O. Box 4276-30100, Eldoret, 30100, KE.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <austinchronicleclassifieds.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 electronically June 12, 2006; the National Arbitration Forum received a hard copy of the Complaint June 15, 2006.
On June 13, 2006, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <austinchronicleclassifieds.com> domain name 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 verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com registration agreement and thereby has 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 15, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 5, 2006, 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@austinchronicleclassifieds.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 11, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 that Respondent registered, <austinchronicleclassifieds.com>, is confusingly similar to Complainant’s AUSTIN CHRONICLE mark.
2. Respondent has no rights to or legitimate interests in the <austinchronicleclassifieds.com> domain name.
3. Respondent registered and used the <austinchronicleclassifieds.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Austin Chronicle Corporation, publishes a weekly newspaper in Austin, Texas called The Austin Chronicle. Complainant has used the AUSTIN CHRONICLE mark in connection with the publication of this alternative weekly newspaper for twenty-five years. Complainant has published a print version of The Austin Chronicle since September 4, 1981, and has published an online edition of The Austin Chronicle since April 1995, using the <austinchronicle.com> domain name. The content of The Austin Chronicle includes local news and events, politics and government, editorials, comics, entertainment features and classified advertisements. Complainant has used the AUSTIN CHRONICLE mark extensively and continuously in advertising The Austin Chronicle, and the newspaper has become quite popular in Austin, Texas, enjoying a circulation of 88,188 per week in 2005.
In support of its mark, Complainant has an application pending with the United States Patent and Trademark Office (“USPTO”) for registration of the AUSTIN CHRONICLE mark.
Respondent registered the <austinchronicleclassifieds.com> domain name December 20, 2005. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website featuring links to third-party websites. The links to third-party websites include links titled “classifieds” and “online classifieds,” which offer services in direct competition with those of Complainant. Respondent’s website also features other links that are unrelated to Complainant’s goods and services. Respondent presumably receives pay-per-click referral fees from these links.
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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
It is not necessary for Complainant to hold a registration with a government authority for its AUSTIN CHRONICLE mark in order for Complainant to have rights in the mark. The Panel finds that common law rights in a mark are sufficient to establish Complainant’s rights pursuant to Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Complainant established common law rights in its AUSTIN CHRONICLE mark through continuous and exclusive use for twenty-five years. Complainant has used the mark in advertising and has produced evidence of the newspaper’s circulation numbers, which illustrates the extent to which secondary meaning in the mark has been established with the public. Further, Complainant has applied to the USPTO for trademark registration of its AUSTIN CHRONICLE mark. In light of Complainants continuous and exclusive use, which has created a secondary meaning with the public, the Panel finds that Complainant has common law rights in the AUSTIN CHRONICLE mark. See 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); see also Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common law rights in the mark FISHTECH that it has used since 1982); see also J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal Register is prima facie proof of continual use of the mark, dating back to the filing date of the application for registration).
The disputed domain name that Respondent registered, <austinchronicleclassifieds.com>,
is confusingly similar to Complainant’s AUSTIN CHRONICLE mark. The domain name incorporates Complainant’s mark
in its entirety and adds the term “classifieds,” which describes a specific
aspect of Complainant’s business. The
Panel finds that combining Complainant’s mark in its entirety with a term that
describes Complainant’s goods or services does not overcome the confusing
similarity between Respondent’s domain name and Complainant’s mark. See Oki Data Ams., Inc. v. ASD, Inc.,
D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly
incorporates a Complainant’s registered mark is sufficient to establish
identity [sic] or confusing similarity for purposes of the Policy despite the
addition of other words to such marks.”); see also Space Imaging LLC v.
Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain name combines the complainant’s mark
with a generic term that has an obvious relationship to the complainant’s
business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat.
Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name
is confusingly similar to the complainant’s HOYLE mark, and that the addition
of “casino,” a generic word describing the type of business in which the
complainant is engaged, does not take the disputed domain name out of the realm
of confusing similarity).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established with extrinsic proof in this
proceeding that it has rights to and legitimate interests in the mark contained
in its entirety in the disputed domain name.
Complainant asserts that Respondent has no rights or legitimate
interests in the <austinchronicleclassifieds.com> domain
name. Complainant’s assertion meets the
requirement of a prima facie case and causes the burden to shift to
Respondent, who must now prove that it does have rights or legitimate interests
in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes
a prima facie case under the Policy, the burden effectively shifts to
Respondent. Respondent’s failure to respond means that Respondent has not
presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”).
The Panel examines the available evidence to determine whether or not Respondent has demonstrated that it has rights or legitimate interests as outlined in Policy ¶ 4(c).
Respondent is using the <austinchronicleclassifieds.com>
domain name to redirect Internet users to Respondent’s website featuring
links to third-party websites, some of which offer goods and services in
competition with Complainant.
Presumably, Respondent receives referral fees from these third-party
websites. The Panel finds that such use
is not a bona fide offering of goods or services as described in Policy
¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the disputed
domain name as outlined in Policy ¶ 4(c)(iii).
See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's
use of a domain name confusingly similar to Complainant’s mark to divert
Internet users to websites unrelated to Complainant's business does not
represent 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 also
Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5,
2003) (finding that the respondent was not using the domain names for a bona
fide offering of goods or services nor a legitimate noncommercial or fair
use because the respondent used the names to divert Internet users to a website
that offered services that competed with those offered by the complainant under
its marks).
Furthermore, no available evidence
suggests that Respondent is commonly known by the <austinchronicleclassifieds.com>
domain name. Respondent’s WHOIS
information identifies Respondent as “Spiral Matrix,” which in no way resembles
the disputed domain name. In addition,
Respondent has no permission from Complainant to use Complainant’s mark and is
in no way affiliated with or sponsored by Complainant. For these reasons, the Panel finds that
Respondent is not commonly known by the disputed domain name and has not
demonstrated that it has rights or legitimate interests pursuant to Policy ¶
4(c)(ii). See Tercent
Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing
in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interest where the respondent was not commonly
known by the mark and never applied for a license or permission from the
complainant to use the trademarked name).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant alleged that Respondent acted in bad faith. Respondent is using the <austinchronicleclassifieds.com> domain name to redirect Internet users to its website, which features links to third-party websites. A number of those third-party websites offer classifieds services in direct competition with those offered by Complainant in its hard-copy newspaper and online newspaper. The Panel finds that Respondent’s use of a confusingly similar domain name to divert Internet users to Complainant’s competitors disrupts Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
The disputed domain name that Respondent registered, <austinchronicleclassifieds.com>,
is confusingly similar to Complainant’s AUSTIN CHRONICLE mark, potentially
causing confusion to Internet users seeking Complainant’s goods and
services. Internet users seeking to
access the online classified services of Complainant could easily find
themselves redirected to Respondent’s
website, by typing in Complainant’s mark followed by the word “classifieds,”
describing the service they are looking for, either as a domain name or in an Internet
search. Such a search brings Internet
users to Respondent’s website. Internet
users might believe that Complainant sponsors the goods and services, because
of the confusing similarity between Complainant’s mark and the disputed domain
name. Respondent is capitalizing on
this confusion by featuring links to third-party websites on its website, from
which it presumably receives pay-per-click fees.
The Panel finds that
using a confusingly similar domain name to attract Internet users to a website
populated with third-party links generating pay-per-click fees is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am.
Univ. v. Cook, FA 208629 (Nat. Arb. Forum
Dec. 22, 2003) (“Registration and use of a domain name that incorporates
another's mark with the intent to deceive Internet users in regard to the
source or affiliation of the domain name is evidence of bad faith.”); see
also AltaVista Co. v. Krotov,
D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv)
where the respondent’s domain name resolved to a website that offered links to
third-party websites that offered services similar to the complainant’s
services and merely took advantage of Internet user mistakes).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <austinchronicleclassifieds.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 21, 2006.
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