The New York Times Company v. David Quynh
Claim Number: FA2212002022455
Complainant is The New York Times Company (“Complainant”), represented by Jordan LaVine of Flaster Greenberg PC, Pennsylvania, USA. Respondent is David Quynh (“Respondent”), Viet Nam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ewirecutter.com>, registered with NameCheap, Inc..
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to Forum electronically on December 1, 2022; Forum received payment on December 1, 2022.
On December 1, 2022, NameCheap, Inc. confirmed by e-mail to Forum that the <ewirecutter.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 5, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ewirecutter.com. Also on December 5, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On December 29, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, 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
Complainant asserts trademark rights in WIRECUTTER. Complainant submits that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant is the well-known media company which, amongst other ventures, has published the New York Times since 1851;
2. A third party established an online product review business in 2011 under the name, WIRECUTTER, (“the WIRECUTTER Business”) which it registered with the United States Patent & Trademark Office (“USPTO”) as, inter alia, Reg. No. 4,643,760, registered November 25, 2014;
3. The WIRECUTTER Business was acquired by Complainant in 2016;
4. the WIRECUTTER Business continues to operate under the WIRECUTTER name and trademark though Complainant’s principal website;
5. the disputed domain name was registered on June 3, 2022 and resolves to a website offering product reviews of the same general nature as those provided under the trademark by the WIRECUTTER Business; and
6. there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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."
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.
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(f), 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)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
The Complaint’s treatment of trademark rights is troublesome. It states:
Complainant, through its predecessor, has used the “Wirecutter” trademark in commerce since 2011. Complainant owns trademark registrations for its “Wirecutter” trademark in the U.S. Patent and Trademark Office, namely, U.S. Registration No. 4643760 for “Wirecutter” issued November 25, 2014, and Registration No. 6227251 for “T Wirecutter (and logo)” issued December 22, 2020. Printouts of relevant trademark registrations that Complainant owns for its “Wirecutter” trademarks are shown in Annexes E-1 and E-2.
Prior to being located on the Internet as part of Complainant’s https://www.nytimes.com website at the URL https://www.nytimes.com/wirecutter, Complainant’s business was located on the Internet at a stand-alone website at the URL https://www.wirecutter.com. Complainant maintains its ownership of that domain name and the domain name currently redirects to main “Wirecutter” page at https://www.nytimes.com/wirecutter. Many persons seeking out the “Wirecutter” business still visit https://www.wirecutter.com and are redirected to the current location of the business.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). So, too, proof of reputation and secondary meaning is generally enough to support a finding of common law trademark rights.
The WIRECUTTER Business is not named. The “predecessor” company is not named should the two not be identical. There is no evidence of transfer of the trademark, or the goodwill in the trademark, to Complainant. So, despite the claim to use since 2011 and just enough material to suggest the existence of common law rights, there is no basis for the Panel to find that Complainant is in the position to exclusively exercise those rights.
Further, contrary to Complainant’s assertion that Complainant “owns trademark registrations for its “Wirecutter” trademark in the U.S. Patent and Trademark Office” and “maintains its ownership of [the <wirecutter.com>] domain name”, neither the cited registrations, nor the domain name, are in Complainant’s name. Annexes E-1 and E-2 shows various other owners and a search by the Panel of records at the USPTO similarly shows that none of the listed registrations for WIRECUTTER, without or without figurative elements, belong to Complainant.
The WIPO Overview 3.0 sets out at paragraph 1.4 the question: Does a trademark owner’s affiliate or licensee have standing to file a UDRP complaint?
In Answer, it is written:
A trademark owner’s affiliate such as a subsidiary of a parent or of a holding company, or an exclusive trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint.
While panels have been prepared to infer the existence of authorization to file a UDRP case based on the facts and circumstances described in the complaint, they may expect parties to provide relevant evidence of authorization to file a UDRP complaint.
In this respect, absent clear authorization from the trademark owner, a non-exclusive trademark licensee would typically not have standing to file a UDRP complaint.
Here, there is neither clear authorization nor proof of an exclusive trademark license and the Panel would be well justified in denying the Complaint at this point for failure to establish paragraph 4(a)(i) of the Policy.
Nevertheless, the Panel notes that the owner of at least USPTO registration no. 4,643,760, shares the same corporate address as Complainant and that in all probability Complainant is the beneficial owner of the trademark. Although there is nothing to show that Complainant has exclusive rights, the Panel is prepared to cautiously find that Complainant has rights in the trademark.
The disputed domain name takes the trademark to which it prefixes the letter, “e”, ubiquitously appearing in electronic commerce, and suffixes the gTLD, “.com”. The Panel finds the disputed domain name to be confusingly similar to the trademark (see, for example, Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”).
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000‑0624).
The domain name registrant is “David Quynh”. There is no suggestion that Respondent might be commonly known by the disputed domain name, or that Respondent has any trademark rights. Complainant provides evidence that the disputed domain name resolves to a directly competitive website and so the Panel finds that Complainant has made a prima facie case that Respondent lacks a right or interest in the disputed domain name (see, for example, Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Accordingly, the onus shifts to Respondent. That onus is not met and so the Panel finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.’
The Panel finds that Respondent’s conduct falls under paragraph 4(b)(iv) above. The Panel has already found the domain name to be confusingly similar to the trademark. The resolving website exists for commercial gain. In terms of the Policy the Panel finds that Respondent’s use of the domain name was intended to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with the trademark as to the source, sponsorship, affiliation, or endorsement of that website (see, for example, Amazon.com, Inc. v. Shafir, FA 196119 (Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with complainant, and giving the impression of being affiliated with or sponsored by complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv)”)).
The Panel finds that the third and final element of the Policy is 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 <ewirecutter.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: January 6, 2023
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