Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainant is Cox Texas Newspapers, L.P. d/b/a AUSTIN AMERICAN-STATESMAN, a Delaware limited partnership, with a principal place of business at 305 South Congress Avenue, Austin, Texas 78704, U.S.A. The Complainant is represented by: Elisa P. Rosen, Esq. of Dow, Lohnes & Albertson, PLLC, 1200 New Hampshire Avenue, N.W., Suite 800, Washington, D.C., USA.

The Respondent is Hickey Art Studio, Attention: Mr. Robert Hickey, 13109 Millstone Drive, Austin, Texas 78729, USA.

The domain name in dispute is: <austinamericanstatesman.com>.

The registrar for the disputed domain name is: DomainPeople, Inc., Suite 1440, Harbour Center, 555 West Hastings Street, Vancouver, BC, Canada V6B 4N6.

This dispute is to be resolved in accordance with the Uniform Domain Name Dispute Resolution Policy (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Center, the Supplemental Rules).

The Complaint was filed on December 14, 2000. On December 18, 2000 the Center requested that the registrar DomainPeople, Inc. check and report back on the registrant for the disputed domain name, <austinamericanstatesman.com>. On January 16, 2001, the registrar reported back that the registrant was the Respondent in this proceeding.

On January 17, 2001 the Complaint was notified by e-mail and hard copy to the Respondent and this proceeding officially began. The Respondent did not file a response and on February 2, 2001 was declared in default.

The Administrative Panel submitted a Declaration of Impartiality and Independence on February 9, 2001, and the Center proceeded to appoint the Panel on February 13, 2001. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.

This Decision is due by February 26, 2001.

The Complainant uses the mark "Austin American-Statesman" for a daily newspaper that has been published in Austin, Texas since 1973. According to the Complainant, the newspaper has a daily circulation of almost 200,000. In addition, since 1996 Complainant has had an online presence for its Austin American-Statesman newspaper.

The Respondent registered the disputed domain name, <austinamericanstatesman.com> on April 7, 2000. On October 13, 2000 and November 6, 2000, the Complainant’s legal counsel contacted Respondent to allege trademark infringement and to demand transfer of the domain name to the Complainant. The Respondent answered the first letter on

October 16, 2000 and denied any trademark infringement; the Respondent did not reply to the second letter (Complaint, Annexes F, G, and H).

Complainant’s Contentions:

- The disputed domain name is virtually identical to the Complainant’s Austin American-Statesman mark, the only difference being the space between the words Austin and American and the dropping of a hyphen.

- The Complainant has had exclusive trademark rights in the disputed domain name for over twenty-five years.

- Respondent has never been authorized by Complainant to use the mark in any way, much less as part of a domain name.

- The Respondent is not making a bona fide use of the domain name but instead is making infringing use to promote its art studio business. In this regard, Respondent hopes to divert web visitors to its website for commercial gain.

- The Respondent is a subscriber to Complainant’s newspaper and lives in Austin, Texas.

- The disputed domain name should be turned over to the Complainant.

In order for Complainant to prevail and have the disputed domain name <austinamericanstatesman.com> transferred to it, Complainant must demonstrate the following (the Policy, para 4(a)(i-iii):

- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain name; and

- the domain name was registered and is being used in bad faith

The Complainant has provided an exemplary copy of its trademark registration on the principal register of the United States of America Patent and Trademark Office: no. 1,596,411 dated May 15, 1990, "Austin American-Statesman" in international class 16 for newspapers (Complaint, Annex E). The Complainant also has shown that it has been publishing its newspaper by this name since the 1970's.

As the Complainant argues, the disputed domain name differs insignificantly from Complainant's trademark since the only things Respondent changed in registering <austinamericanstatesman.com> were a space and a hyphen. The Panel finds the disputed domain name is at best confusingly similar to the trademark in which the Complainant has demonstrated rights.

The Complainant affirms it has never allowed the Respondent to use the Complainant's trademark, and in fact has never had any relation whatever with the Respondent.

The Respondent is in default in this proceeding, and has not attempted to demonstrate any rights or interests in the disputed domain name.

The Panel finds the Respondent has no legitimate rights or interests in the disputed domain name.

In the absence of any participation by the Respondent, the Panel finds it appropriate to accept the Complainant's assertion that the Respondent's motive in registering the disputed domain name was to gather in web traffic for Respondent's art business. This is bad faith registration and use under the policy at 4(b)(iv). Certainly, given that the Respondent resides in Austin, Texas and has registered as a domain name the title of that city's major newspaper, the Respondent had to realize it was appropriating a locally well-known trademark.

The Panel finds the Respondent registered and was using the disputed domain name in bad faith.

Pursuant to ICANN Policy para 4(i) and Rule 15, the Panel finds that the Respondent registered a domain name confusingly similar to Complainant's trademark; the Respondent has no rights or legitimate interests in the name; the Respondent registered and was using the name in bad faith. Therefore, the Panel orders that the registrar DomainPeople, Inc. transfer the domain name, <austinamericanstatesman.com>, from the Respondent, Hickey Art Studio, to the Complainant, Cox Texas Newspapers, L.P. d/b/a AUSTIN AMERICAN-STATESMAN.

Dennis A. Foster
Sole Panelist