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New York Press, Inc. vs. New York Press DECISION The above entitled matter came on for an administrative hearing on May 17,2000 before the undersigned on the Complaint of New York Press, Inc., hereinafter referred to as "Complainant", against New York Press,hereinafter referred to as "Respondent". Complainant was represented by Gibson, Dunn & Crutcher, LLP. Respondent was represented by Diana Cabell, Esq., Pound Upon the written submitted record, the following decision is made: PROCEDURAL FINDINGS Domain Name: newyorkpress.net Domain Name Registrar: Network Solutions, Inc. Domain Name Registrant: New York Press Date of Domain Name Registration: September 15, 1999 Date Complaint Filed: April 10, 2000 Date of Commencement of Administrative Proceedings in Accordance with Rule 2(a) and Rule 4(c): April 13, 2000 Due date for a Response: May 3, 2000. Date Response was filed: May 1, 2000 After reviewing the Complaint, and determining it to be in administrative compliance, the National Arbitration Forum (The Forum) forwarded the Complaint to the Respondent on April 13, 2000 in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), the Forum immediately notified Network Solutions, Inc., the Internet Corporation for Assigned Names and Numbers (ICANN), and the Complainant that the administrative proceeding had commenced. Respondent filed a Response to the Complaint on May 1, 2000. On September 15, 2000, Respondent registered the domain name "newyorkpress.net" with Network Solutions, Inc., the entity that is the Registrar of the domain name. By registering its domain name with Network Solutions, Inc., Respondent agreed to resolve any dispute regarding its domain name through ICANN's Rules for Uniform Domain Name Dispute Resolution and the Uniform Domain Name Dispute Resolution Policy. Any reference to "Rule" or "Rules" are to ICANN's Rules for Uniform Domain Name Dispute Resolution Policy and Uniform Domain Name Dispute Resolution Policy as supplemented by the National Arbitration Forum's Supplemental Rules to ICANN's Uniform Domain Resolution Policy. Complainant requests that ownership of the domain name be transferred from Respondent to Complainant. FINDINGS OF FACT Complainant is a New York Corporation that has published a weekly newspaper called, "New York Press" since 1988. It has a circulation of 115 thousand weekly and a readership in excess of a half million. Nearly all of the readers are in the New York City metropolitan area and half of the readership is in Manhattan, south of 104th Street. The New York Press is distributed free of charge from 694 sidewalk newspaper vending boxes, (coinless) and in some 1400 retail establishments. Through mail subscription it can be obtained for $75.00 per year. The masthead motto of the New York Press is "New York's free weekly newspaper". In addition to publishing a newspaper, the Complainant has operated an internet website under the domain name "nypress.com" since 1995. Complainant's publication is sometimes referred to as an underground publication which carries news articles, editorials, opinion columns, news and reviews of the arts and entertainment, comprehensive listings of cultural and community activities and events and extensive paid display and classified advertising. A weekly column written by the New York Press Founder and Editor and Chief, Russ Smith, entitled "Mugger" is a standard feature of the paper and the columns cover a number of subjects of political and related interest. This column is also a commentary on press outlets and the people who write for them and is highly opinionated. Respondent is a sole proprietorship owned by James L. Ledbetter, Jr. Mr. Ledbetter is a well-known critic and annotator of the New York Press, (the term here is used in a generic sense). He wrote a weekly column regarding the fourth estate first in the New York Observer and then in the Village Voice. His writings have been cited in most major New York publications as well as in national publications and he is a contributing editor to Columbia Journalism Review. Complainant claims to have rights in the following trademarks: 1. New York Press; 2. NYPress, 3. nypress.com; 4. nypress.net; and 5. newyorkpress.com. Respondent's domain name, "newyorkpress.net", is similar to all of the trademarks Complainant claims a right to but is identical to none of them. Of the claimed trademarks, "nypress.com", the third in the above list is registered to Zone One Networks. The fifth mark, "newyorkpress.com", is registered to Ideoblast, Inc. Complainant claims to have operated under the fourth mark above, "nypress.net", since 1995, however, the Whois registration record, (Complaint, Exhibit "1"), indicates that the record was created on April 20, 1999. The websites operated by Complainant and Respondent are significantly different in style and content, (see Respondent's Exhibit "6" and "7"). On September 20, 1999, an application for registration of the trademarks "New York Press" and "NY Press" was filed with the United States Patent and Trademark Office by James Ledbetter, Sole Proprietor of the Respondent. That was shortly after registration of the domain name in dispute. The application of Mr. Ledbetter with the United States Patent and Trademark Office indicates under office action, (Respondent's Exhibit "4"), that, "The examining attorney refuses registration on the Principle Register because the mark is primarily geographically descriptive of the applicant's goods and services." Further, the examining attorney found, "Moreover, the term "PRESS" is merely highly descriptive, or the generic designation, of applicant's goods or services. The addition of a generic or highly descriptive term to a geographic term does not obviate a determination of geographic descriptiveness. In re BankAmerica Corp., 231 USPQ 873 (TTAB 1986); In re Cambridge Digital Systems, 1 USPQ2d 1659 (TTAB 1986)." The examining attorney also noted that a search of the office records found no similar register or pending mark which would bar registration under the Trademark Act. The evidence is to the effect that the application is pending as of the date of the rendering of this decision. CONCLUSIONS The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the arbitrator in this proceeding. Having been duly selected, and being impartial, the undersigned makes the following findings and conclusions. In order to prevail under the ICANN Dispute Resolution Policy, Complainant must present evidence that the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The evidence leads the arbitrator to conclude that the domain name is identical or confusingly similar to a trademark in which the Complainant has rights. Complainant must then show that Respondent has no rights or legitimate interest in respect of the domain name. The arbitrator does not find the evidence convincing as to this requirement. Respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain or to misleadingly divert consumers or tarnish the trademark at issue. Respondent's use of the website is for review and criticism of the New York Press (media) and the fact that he applied to the U.S. Patent and Trademark Office for a U.S. Federal Trademark for the mark, "New York Press" for use with his online publication is evidence that he began to use the domain name for a legitimate non-commercial use, i.e. the dispensing of his review and criticism of the New York media, ICANN Policy 4(c)(iii). Respondent's registration and use of the domain name began well before any notice of a dispute was given to Respondent. In addition, it is required that the Complainant produce evidence that the domain name has been registered and is being used in bad faith. 4(d) sets out four circumstances that can be evidence of registration and use of a domain name in bad faith. The arbitrator finds none of those circumstances to be shown by the evidence. DECISION Based upon the findings and conclusions, it is decided as follows: THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME "newyorkpress.net" REGISTERED BY RESPONDENT, NEW YORK PRESS, NOT BE TRANSFERRED TO COMPLAINANT AND FURTHER, THAT THE COMPLAINT HEREIN BE DISMISSED. Dated: May 18, 2000, Edmund P. Karem, (Ret. Ky. Circuit
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