national arbitration forum

 

DECISION

 

Independent Publishing, Inc. v. Whois ID Theft Protection

Claim Number: FA0703000938028

 

PARTIES

Complainant is Independent Publishing, Inc. (“Complainant”), 317 S. Orange St., Missoula, MT 59801.  Respondent is Whois ID Theft Protection (“Respondent”), General Delivery, Georgetown, Cayman KY.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <missoulaindependent.com>, registered with Rebel.com.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 15, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 19, 2007.

 

On March 19, 2007, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <missoulaindependent.com> domain name is registered with Rebel.com and that Respondent is the current registrant of the name.  Rebel.com has verified that Respondent is bound by the Rebel.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 March 26, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 16, 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@missoulaindependent.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On April 20, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <missoulaindependent.com> domain name is identical to Complainant’s MISSOULA INDEPENDENT mark.

 

2.      Respondent does not have any rights or legitimate interests in the <missoulaindependent.com> domain name.

 

3.      Respondent registered and used the <missoulaindependent.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Independent Publishing, Inc., operates a local newspaper in Western Montana under the MISSOULA INDEPENDENT mark.  Complainant holds a registration of the MISSOULA INDEPENDENT mark with the Montana Secretary of State (ID# T020264 issued April 22, 1999). 

 

Respondent registered the <missoulaindependent.com> domain name on September 20, 2005.  Respondent is using the disputed domain name to redirect Internet users to its website, which features links to third-party websites such as “Classified Ads,” “Job Listings” and “Music” that compete directly with services offered by Complainant.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant holds a registration of its MISSOULA INDEPENDENT mark with the state of Montana.  The Panel in Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) found that the Policy does not require the complainant to demonstrate “exclusive rights,” but only that the complainant has a bona fide basis for making the complaint in the first place.  State registration of a mark is sufficient to demonstrate Complainant’s rights in a mark pursuant to Policy ¶ 4(a)(i).  See Lee Enters., Inc. v. Polanski, FA 135619 (Nat. Arb. Forum Jan. 22, 2003) (finding evidence that the complainant had established rights in the BILLINGS GAZETTE mark through registration with the Montana and Wyoming state trademark officials); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant’s trademark registrations in Pennsylvania and New Jersey operated as evidence that the complainant had sufficient standing to bring a claim under the UDRP).

 

Respondent’s <missoulaindependent.com> domain name is identical to Complainant’s MISSOULA INDEPENDENT mark.  The disputed domain name includes Complainant’s mark in its entirety without any alteration.  The addition of the generic top-level domain “.com” to the disputed domain name does not distinguish the disputed domain name from Complainant’s mark.  The Panel finds that the disputed domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference.").

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant asserts that Respondent lacks rights and legitimate interests in the <missoulaindependent.com> domain name.  Complainant’s assertion establishes a prima facie case under the Policy, shifting the burden to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  Respondent had the opportunity to provide the Panel with evidence or arguments in support of its rights or legitimate interests by submitting a Response.  The Panel views Respondent’s failure to provide a Response as evidence that Respondent lacks rights or legitimate interests.  Nonetheless, the Panel will evaluate the available evidence to determine whether Respondent does have rights or legitimate interests as contemplated by Policy ¶ 4(c).  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 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.”).

 

Respondent is using the <missoulaindependent.com> domain name to redirect Internet users to its website featuring links to third-party websites, some of which compete directly with Complainant’s newspaper’s classified services.  Such use is neither 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).  Respondent is not offering any goods or services on its website, as the website is composed entirely of links to third-party websites.  Presumably, Respondent is profiting from those links by collecting pay-per-click fees when Internet users follow the links.  Thus, the Panel finds that Respondent lacks rights or legitimate interests as outlined in Policy ¶¶ 4(c)(i) and (iii).  See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use).

 

There is no available evidence that Respondent is commonly known by the <missoulaindependent.com> domain name pursuant to Policy ¶ 4(c)(ii).  Respondent’s WHOIS information identifies Respondent as “WHOIS ID Theft Protection,” which has no apparent relationship to the disputed domain name.  Complainant asserts that Respondent is not a licensee of Complainant, or affiliated with Complainant in any way.  The Panel finds that Respondent is not commonly known by the disputed domain name 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 Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent is using the <missoulaindependent.com> domain name to redirect Internet users to Respondent’s website featuring links to third-party websites.  Many of the links divert Internet users to websites offering classified advertisement services in direct competition with Complainant.  Internet users finding themselves misdirected to Respondent’s website may follow the links to Complainant’s competitors and do business with those competitors instead of with Complainant, thus disrupting Complainant’s business.  The Panel finds that such use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s 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)).

 

Respondent’s <missoulaindependent.com> domain name is identical to Complainant’s MISSOULA INDEPENDENT mark.  Internet users seeking Complainant’s genuine website may find themselves instead at Respondent’s website simply by combining Complainant’s mark with the generic top-level domain “.com.”  Respondent is capitalizing on this mistake by presumably collecting pay-per-click fees from the links on its website.  The Panel finds that such use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“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 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 Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <missoulaindependent.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  April 30, 2007

 

 

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