DECISION

 

Dow Jones & Company, Inc. v. Stephen Ojo

Claim Number: FA2412002129776

PARTIES

Complainant is Dow Jones & Company, Inc. ("Complainant"), represented by AJ Schumacher of Kelly IP, LLP, District of Columbia, USA. Respondent is Stephen Ojo ("Respondent"), South Carolina, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <editorial-wsj.com>, registered with Squarespace Domains LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Richard Hill as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on December 16, 2024; Forum received payment on December 16, 2024.

 

On December 17, 2024, Squarespace Domains LLC confirmed by e-mail to Forum that the <editorial-wsj.com> domain name is registered with Squarespace Domains LLC and that Respondent is the current registrant of the name. Squarespace Domains LLC has verified that Respondent is bound by the Squarespace Domains LLC 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 23, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 13, 2025 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@editorial-wsj.com. Also on December 23, 2024, 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 formal response from Respondent, Forum transmitted to the parties a Notification of Respondent Default. Respondent did however send an email to the Forum, see below.

 

On January 14, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant states that, since its founding in 1882, it, via itself, its predecessors in interest, and/or its corporate parents, including News Corporation, subsidiaries, and related entities, has become a world-renowned global provider of news and business information, which distributes its content and data through a wide array of media channels, including newspapers, newswires, websites, apps for mobile devices, newsletters, magazines, proprietary databases, live journalism, video, and podcasts. One of Complainant's premier properties are its newspapers published under the names and marks THE WALL STREET JOURNAL and WSJ. Complainant first published its newspaper in 1889, which has long been one of the best-known and most widely acclaimed newspapers in the world. Complainant owns the famous and federally registered marks THE WALL STREET JOURNAL and WSJ and various other marks featuring the same. Winner of at least 39 Pulitzer Prizes, Complainant's newspaper under the WSJ marks is an industry leader that delivers breaking worldwide news coverage and fair-minded analysis. The newspaper is one of the largest daily newspapers in the U.S., measured by paid circulation, for both the weekday and weekend editions. The newspaper has millions of subscribers. In fiscal year 2024, the newspaper had a monthly average of over 4,250,000 subscribers globally, including over 3,785,000 digital subscribers. The WSJ services include coverage of national and international news and analysis, commentary, and opinions on a wide range of topics, including business developments and trends, economics, financial markets, investing, science and technology, lifestyle, culture, and sports. Complainant offers extensive news and information products and services online under the WSJ mark, and has done so for more than 20 years. Complainant's digital products include an online edition of the newspaper located at the website accessible via the domain names <wsj.com> and <thewallstreetjournal.com>, which Complainant registered in 1994 and 1998, respectively. The WSJ online news services are highly popular, receiving 115,000,000 average monthly visits in fiscal year 2024. The online offerings under the WSJ mark are available across continents and in many languages, and originate from thousands of journalists in numerous countries worldwide. Complainant asserts rights in the mark WSJ through its registration in the United States in 2009.

 

Complainant alleges that the disputed domain name is identical or confusingly similar to its WSJ mark as it incorporates the mark in its entirety, merely adding a hyphen and the generic/descriptive term "editorial", together with the ".com" generic top-level domain ("gTLD"). Complainant cites UDRP precedents to support its position.

 

According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to use its WSJ mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. Instead, the disputed domain name is redirected to Complainant's official website at <wsj.com> and is used in emails to impersonate Complainant, including its employees or other personnel. Specifically, Respondent incorporated the disputed domain name into at least the email address <intern@editorial-wsj.com> and utilized that email address to impersonate Complainant by sending emails to various individuals requesting to interview them as part of purported articles that were to be published under the WSJ mark. Depending on how a particular targeted individual responded to Respondent's ruse, including if they agreed to and participated in the interview, Respondent would follow up the initial email from the different email address <chief@editorial-wsj.com> alleging that the purported article was ready for publication and requesting the individual to pay a $3,000 fee to cover the purported articles publicity, advertising, and editorial costs. Respondent uses the disputed domain name in this manner in a calculated and blatant attempt to impersonate Complainant and its WSJ mark as part of a fraudulent and nefarious scheme, including to obtain under false pretenses financial payments from targeted individuals. Complainant cites UDRP precedents to support its position.

 

Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name to redirect Internet users to Complainant's own website and in furtherance of a fraudulent email phishing scheme. Respondent had actual knowledge of Complainant's rights to the WSJ mark prior to registering the disputed domain name. Complainant cites UDRP precedents to support its position.

 

B. Respondent

Respondent failed to submit a formal Response in this proceeding. In its email to Forum, Respondent states, in pertinent part: "I am writing to formally apologize for my involvement with the domain <editorial-wsj.com>. I understand that my actions may have caused confusion or concern regarding the brand and intellectual property of Dow Jones & Company. Please rest assured that I take this matter seriously. I am committed to ceasing any involvement with the aforementioned domain and will take all necessary steps to ensure that there are no further associations with your esteemed company. Thank you for your understanding, and I appreciate your patience as I rectify this situation. If there are any additional steps you would like me to take, please let me know."

 

FINDINGS

For the reasons set forth below, the Panel will not make any findings of fact. The Panel however notes, obiter dictum, that the evidence set forth in the Complaint would appear to support Complainant's allegations.

 

DISCUSSION

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.

 

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."

 

The Panel interprets Respondent's email to Forum as indicating consent to transfer the disputed domain name. Thus, in the present case, the parties have both asked for the domain name to be transferred to the Complainant. In accordance with a general legal principle governing arbitrations as well as national court proceedings, this Panel holds that it cannot act nec ultra petita nec infra petita, that is, that it cannot issue a decision that would be either less than requested, nor more than requested by the parties. Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.

 

See Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004); see also Boehringer Ingelheim Int'l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) ("[U]nder such circumstances, where Respondent has agreed to comply with Complainant's request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.").

 

Identical and/or Confusingly Similar

For the reasons set forth above, the Panel will not analyze this element of the Policy.

 

Rights or Legitimate Interests

For the reasons set forth above, the Panel will not analyze this element of the Policy.

 

Registration and Use in Bad Faith

For the reasons set forth above, the Panel will not analyze this element of the Policy.

 

DECISION

Given the common request of the Parties, it is Ordered that the <editorial-wsj.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Richard Hill, Panelist

Dated: January 14, 2025