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THE SUN CHRONICLE v. WEB SOLUTIONS, INC. [2000] GENDND 715 (18 July 2000)


National Arbitration Forum

THE NATIONAL ARBITRATION FORUM

P.O. BOX 50191

MINNEAPOLIS, MINNESOTA 55405

THE SUN CHRONICLE

c/o Oreste P. D’Arconte, Publisher

ADMINISTRATIVE

COMPLAINANT, PANEL DECISION

vs.

No.: FA0005000094895

WEB SOLUTIONS, INC.

RESPONDENT.

This is a domain name dispute proceeding pursuant to the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"). A three person arbitration panel was requested; this panel consists of Chairman, Judge Nelson A. Diaz (Retired), of Philadelphia, PA., Judge Robert R. Merhige, Jr. of Richmond, VA and Judge John J. Upchurch of Daytona Beach, FL. Each panelist has confirmed to the National Arbitration Forum that they have no known conflicts of interest. For the reasons explained below, the panel holds that the domain name should be transferred to Complainant.

  1. The Parties

    2. Complainant is The Sun Chronicle, located at c/o Oreste P. D’Arconte, Publisher, 34 South Main Street, Attleboro, MA 02703 ("Complainant"). Complainant was represented by Shepard M. Remis, P.C. Respondent is Web Solutions, Inc., located at 123 Grove Street, North Attleboro, MA 02760 ("Respondent").

  2. Procedural Findings

    3. Domain Name: <sunchronicle.com>

    Domain Name Registrar: Network Solutions, Inc.

    Domain Name Registrant: Web Solutions, Inc.

    Date of Domain Name Registration: September 30, 1997

    Date Complaint Filed: May 31, 2000

    Date of Commencement of Administrative Proceeding in Accordance with Rule 2(a) and Rule 4(c): June 2, 2000

    Due Date for a Response: June 22, 2000; a timely response was received

    Remedy Requested: Transfer of Domain Name

    In compliance with Rule 2(a), the National Arbitration Forum ("The Forum") forwarded the Complaint to the Respondent in a timely manner. In compliance with Rule 4(d), The Forum immediately notified the above Registrar, Network Solutions, the Internet Corporation for Assigned Names and Numbers (ICANN), and Complainant and Respondent that the administrative proceeding had commenced.

    The Panel issues its decision below based upon the complaint, the filed documents, the response, the Policy and Rules.

  3. Factual Background

    4. Complainant is the owner of a trademark, THE SUN CHRONICLE, which it has used in commerce since 1971 in connection with a newspaper business. On August 29, 1997, Complainant registered the domain name <thesunchronicle.com>.

    On September 30, 1997, Respondent registered the domain name <sunchronicle.com>. By registering its domain name with Network Solutions, Respondent agreed to resolve any dispute regarding its domain name pursuant to ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the Policy. In or about February 1998, Respondent launched a web site that is still under construction, more than two years later.

    In January, February and March of 2000, Complainant sent Respondent letters requesting that Respondent cease and desist all activities associated with the <sunchronicle.com> name and web site. Subsequent thereto, Respondent modified its web site such that a visitor would believe that the site was connected with Sun workstations. Respondent does not otherwise claim to have a relationship with Sun Microsystems, which is not a party here.

  4. Parties’ Contentions
  1. Complainant contends that Registrant’s domain name <sunchronicle.com> is identical to Complainant’s mark.
  2. Complainant contends that Respondent has no rights or legitimate interest in the disputed domain name.
  3. Complainant contends that Respondent registered and is using the domain name in bad faith.
  4. Respondent denies that the domain name is confusingly similar to Complainant’s mark.
  5. Respondent denies Complainant’s assertion that it has no rights or legitimate interest in the disputed domain name.
  6. Respondent denies that it has acted in bad faith in registering and using the domain name.
  1. Discussion and Findings

To obtain the requested relief, paragraph 4(a) of the Policy requires the Complainant to prove each of the following:
    1. That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
    2. That the Respondent has no rights or legitimate interest in the domain name; and
    3. That the domain name has been registered and used in bad faith.
  1. Similarity Between Registrant’s Domain Names and Complainant’s Trademarks.
    2.

    Under paragraph 4(a) of the Policy, it is clear that the domain name registered by Respondent, <sunchronicle.com>, is substantially similar to, and, in fact, nearly identical to Complainant’s THE SUN CHRONICLE mark and its <thesunchronicle.com> domain name. The absence of the article "the" is not significant in determining similarity. The panel concludes that Complainant has met its burden of proof on the first prong and that the domain name is confusingly similar to Complainant’s trademark.

  2. Respondent’s Rights or Legitimate Interest in the Domain Names.
    3.

Under paragraph 4(c) of the Policy, evidence of a registrant’s rights or legitimate interest in the domain name includes:
  1. Demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;
  2. An indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or
  3. Legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.

Respondent avers that it has made a legitimate use of the disputed domain name, i.e. that it registered the domain name "solely for the purpose [of] providing a site for the downloading of software that runs on Sun Computers." The Panel finds the proffered evidence to be unpersuasive. In fact, there is no evidence of any demonstrable preparation to use the domain name in connection with a bona fide offering of goods or services prior to the dispute. A reference to Sun computers or workstations did not appear on the <sunchronicle.com> web site until after Complainant had sent a cease and desist letter. Respondent provided no credible evidence to rebut the allegation and facts showing that it had any rights or legitimate interest in the mark. Complainant thus has met its burden of proof with regard to the second prong under paragraph 4(a) of the Policy.

  1. Respondent’s Bad Faith Registration and Use of the Domain Name.
    2.

Under paragraph 4(b) of the Policy, evidence of Respondent’s bad faith registration and use includes:
  1. Circumstances indicating the domain name was registered for the purpose of resale to the trademark owner or competitor for profit;
  2. A pattern of conduct showing an attempt to prevent others from obtaining a domain name corresponding to their trademarks;
  3. Registration of the domain name for the purpose of disrupting the business of competitor; or
  4. Using the domain name to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with the trademark owner’s mark.

The parties are in effect neighbors, with Respondent located in one of the towns served by Complainant’s newspaper. There is little doubt that, at the time Respondent registered the domain name <sunchronicle.com>, Respondent was well aware of the Complainant’s well-established rights in and to the mark. Yet, when Respondent filed its registration for the domain name it nonetheless represented to NSI that registration "will not infringe upon or otherwise violate the rights of any third party." Under the circumstances, it is reasonable to infer that this representation was false when made and that Respondent acted in bad faith in registering the domain name.

By using a domain name that is all but identical to Complainant’s mark, Respondent creates a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the web site located at the URL www.sunchronicle.com. Further, in maintaining this site, Respondent creates initial interest confusion, that is, the misleading diversion of web users trying to locate the Complainant’s actual site. Moreover, such use is likely to tarnish Complainant’s goodwill and reputation by frustrating Internet users seeking to locate Complainant’s web site located at www.thesunchronicle.com.

In addition, Respondent’s failure to offer any bona fide services in connection with the domain name until after Complainant notified it that it was in violation of Complainant’s trademark rights also serves as evidence of bad faith.

The Panel hereby finds that Complainant has met its burden of showing that Respondent has registered and used the domain names in bad faith.
  1. Decision

The Panel concludes: (a) that the domain name <sunchronicle.com> is nearly identical to and confusingly similar to Complainant’s trademark, including the <thesunchronicle.com> domain name; (b) that Respondent has no rights or legitimate interest in the domain name; and (c) that Respondent registered and used the domain name in bad faith. Therefore, pursuant to the Policy and the Rules, the Panel orders that the domain name <sunchronicle.com> be transferred to the Complainant.

Signed this 18th day of July 2000, by the duly selected members

of the Administrative Panel herein.

Nelson A. Diaz, Panelist

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