Daily Mail & General Trust Plc and Associated
Newspapers Limited and Title Media Limited and
Claim Number: FA0612000874822
Complainants are Daily Mail & General Trust Plc and Associated
Newspapers Limited and Title Media Limited and Ireland on Sunday Limited and Associated
Newspapers (Ireland) Limited (collectively, “Complainant”), represented by Adam
Taylor, of Adlex Solicitors, 76A Belsize Lane,
London NW3 5BJ, UK. Respondent is
irish
media m (“Respondent”), dundalk,
dundalk, louth
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <irishmailonsunday.com>, registered with Go Daddy Software, Inc.
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.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 22, 2006; the National Arbitration Forum received a hard copy of the Complaint on December 27, 2006.
On December 22, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <irishmailonsunday.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 January 5, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 25, 2007 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@irishmailonsunday.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 2, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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. Respondent’s <irishmailonsunday.com> domain name is confusingly similar to Complainant’s THE MAIL ON SUNDAY mark.
2. Respondent does not have any rights or legitimate interests in the <irishmailonsunday.com> domain name.
3. Respondent registered and used the <irishmailonsunday.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Daily Mail &
General Trust Plc, is one of the largest media companies in the
As each Complainant is part
of the same group, the Panel will hereinafter refer to all parties collectively
as “Complainant.”
Complainant’s newspaper under
the THE MAIL ON SUNDAY mark, which it first published in 1982, is currently the
second highest-selling Sunday newspaper in the United Kingdom with an average
circulation of 2,128,290 readers in the United Kingdom and 21,914 readers in
the Republic of Ireland. Complainant has
also been publishing a newspaper under the
Complainant holds trademark registrations with the United Kingdom Patent Office for the THE MAIL ON SUNDAY (Reg. No. 1,218,343 issued May 9, 1984) and IRELAND ON SUNDAY (Reg. No. 2,315,114 issued November 6, 2002) marks. Complainant has also registered both marks with the Irish Patents Office (THE MAIL ON SUNDAY: Reg. No. 143,035 issued September 14, 1998; IRELAND ON SUNDAY: Reg. No. 204,811 issued March 5, 1997).
Complainant owns numerous domain names containing its registered marks, including the <themailonsunday.com>, <mailonsunday.com>, <themailonsunday.ie>, <irelandonsunday.com> and <irelandonsunday.ie> domain names.
Respondent registered the <irishmailonsunday.com> domain name on September 20, 2006, just ten days after Complainant’s announcement that it was renaming its publication “The Irish Mail on Sunday.” Respondent’s domain name resolves to the website of the “Sunday Tribune,” a competing Irish newspaper.
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. 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has registered the THE MAIL ON SUNDAY and
IRELAND ON SUNDAY marks in both the
Respondent’s <irishmailonsunday.com> domain
name is confusingly similar to Complainant’s registered THE MAIL ON SUNDAY mark
in particular, as the only differences between the mark and the domain name are
the omission of the article “the” and the addition of the term “irish.” These alterations do little to alleviate the
confusing similarity between the <irishmailonsunday.com> domain
name and the THE MAIL ON SUNDAY mark. Consequently, the Panel finds the disputed
domain name to be confusingly similar to the mark pursuant to Policy ¶ 4(a)(i). See Antoun
v. Truth Squad, FA 114766 (Nat. Arb. Forum Aug. 21, 2002) (stating that the
article "the" is "often added only for grammatical
purposes, and may be superfluous to the name itself"); see also
Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006)
(finding that the <indiaticketmaster.com> domain name was confusingly
similar to the complainant’s TICKETMASTER mark).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent lacks rights and legitimate interests in the <irishmailonsunday.com> domain name. Complainant has the initial burden of proof in establishing that Respondent lacks rights or legitimate interests in the domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Document Tech., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. 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 Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights to or legitimate interests in the
<irishmailonsunday.com> name.
See Geocities v.
Geocities.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent
has no rights or legitimate interests in the domain name because the respondent
never submitted a response or provided the panel with evidence to suggest
otherwise); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”). However, the Panel
will now examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
Respondent has registered the domain name under the name “irish media m,” and
there is no other evidence in the record suggesting that Respondent is commonly
known by the <irishmailonsunday.com> domain name. As a result, Respondent has not established
rights or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See The Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7,
2006) (concluding that the respondent was not commonly known by the disputed
domain names where the WHOIS information, as well as all other information in
the record, gave no indication that the respondent was commonly known by the
disputed domain names, and the complainant had not authorized the respondent to
register a domain name containing its registered mark); see also Coppertown Drive-Thru Systems, LLC v.
Snowden, FA 715089 (Nat. Arb.
Forum Jul. 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name).
Moreover, Respondent’s <irishmailonsunday.com>
domain name, which is confusingly similar to Complainant’s THE MAIL ON SUNDAY
mark, resolves to the website of Complainant’s main competitor in the newspaper
industry in
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Because Respondent is using a domain name confusingly
similar to Complainant’s THE MAIL ON SUNDAY mark to redirect Internet users to
the website of Complainant’s competitor in the newspaper industry, the Panel
finds that Respondent has registered the <irishmailonsunday.com>
domain name for the primary purpose of disrupting Complainant’s business
pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶
4(b)(iii) [and] (iv).”); see also
SR Motorsports v. Rotary
Performance, FA 95859 (Nat. Arb. Forum Jan. 4, 2001) (finding it
"obvious" that the domain names were registered for the primary
purpose of disrupting the competitor's business when the parties are part of
the same, highly specialized field).
Furthermore, Respondent has registered and is using the <irishmailonsunday.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because Respondent is
attempting to attract Internet users seeking news from Complainant to a
competing website also offering news to Internet users. In
Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003), the panel stated, “Respondent
registered and used the <my-seasons.com> domain name in bad faith
pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain
name that is confusingly similar to the MYSEASONS mark for commercial benefit
by diverting Internet users to the <thumbgreen.com> website, which sells
competing goods and services. As
Respondent is also diverting Internet users to a website offering competing
services, specifically news and information that Complainant also offers under
the THE MAIL ON SUNDAY mark, the Panel finds that Respondent has registered and
is using the <irishmailonsunday.com> domain name in bad faith
pursuant to Policy ¶ 4(b)(iv). 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).
Additionally, Respondent registered the <irishmailonsunday.com>
domain name a mere ten days after Complainant’s announcement that it was
creating a new publication with the name “Irish Mail on Sunday.” Therefore, the Panel finds that Respondent’s
registration of a domain name incorporating the name of Complainant’s new
publication right after Complainant made its announcement indicates that
Respondent opportunistically registered and used the <irishmailonsunday.com>
domain name in bad faith under Policy ¶ 4(a)(iii). See Sota v. Waldron, D2001-0351 (WIPO
June 18, 2001) (finding that the respondent’s registration of the
<seveballesterostrophy.com> domain name at the time of the announcement
of the Seve Ballesteros Trophy golf tournament “strongly indicates an
opportunistic registration”); see also Thermo Electron Corp. and Fisher Scientific Co. LLC
and Fisher Scientific Int'l Inc. v. Charlie Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If
there had been any doubt as to bad faith, the fact that registration was on the
same day the news leaked about the merger, which was put in evidence, is a
compelling indication of bad faith that Respondent has to refute and which he
has failed to do. The Panel finds a
negative inference from this.”).
The Panel concludes that Complainant has 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 <irishmailonsunday.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: February 13, 2007
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