Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Knight-Ridder, Inc., San Jose, CA, USA ("Complainant") represented by Edward M. Jordan, of Manatt, Phelps & Phillips, LLP. The Respondent is John Zuccarini Cupcake Patrol, Andalusia, PA, USA ("Respondent") represented by Christopher A. Grillo, of Law Office of Christopher Grillo.

The domain names at issue are "miamihearld.com", "hearld.com", registered with CORE-11.

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

Hon. Ralph Yachnin, Prof. David Sorkin and Hon. James A. Carmody (Chairman), as Panelists.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on January 30, 2001; the Forum received a hard copy of the Complaint on January 29, 2001.

On February 1, 2001, CORE-11 confirmed by e-mail to the Forum that the domain names "miamihearld.com", "hearld.com" are registered with CORE-11 and that the Respondent is the current registrant of the name. CORE-11 has verified that Respondent is bound by the CORE-11 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On February 1, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 21, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@miamihearld.com, postmaster@hearld.com by e-mail.

A timely response was received and determined to be complete on February 20, 2001.

On February 27, 2001, pursuant to Respondent’s request to have the dispute decided by a Three-Member Panel, the Forum appointed the Hon. Ralph Yachnin, Prof. David Sorkin and the Hon. James A. Carmody as Panelists.

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

A. Complainant

Complainant alleges that it is the owner of the marks "THE MIAMI HERALD", "EL NUEVO HERALD" and "THE HERALD" which it uses in connection with publication of online and print versions of widely read newspapers. The domain names at issue are intentional misspellings of Complainant’s marks and are confusingly similar to them. Complainant further alleges that Respondent has no rights or legitimate interests in the domain names at issue and that they were registered and are being used in bad faith. Bad faith is manifested, Complainant says, by virtue of Respondent’s numerous other activities as an adjudged "cybersquatter" and "typosquatter" documented by decisions in numerous ICANN and court cases.

B. Respondent

Respondent claims that the Forum lacks authority to "hear or issue a ruling with respect to the controversy based on the Complaint." Further, Respondent alleges that, "What Respondent did or did not do with respect to other cases is completely irrelevant." Additionally, Respondent claims that the marks of Complainant are generic and not protectable, that he has rights and legitimate interests in the domain names at issue and that they were not registered nor are they being used in bad faith.

Complainant owns two federal trademark registrations of its trademark, THE MIAMI HERALD. Complainant also owns two federal trademark registrations for its trademark EL NUEVO HERALD. Complainant’s Internet edition of The Miami Herald is published using the domain names "miamiherald.com" and "herald.com". Complainant’s Internet edition of el Nuevo Herald is published using the domain name "elherald.com". Complainant’s Internet edition of The Herald is available at www.herald.com/herald.htm. Thus, Complainant owns the trademark rights to THE MIAMI HERALD, EL NUEVO HERALD, and THE HERALD. Although many ICANN UDRP cases have recognized common law trademarks and their right to prevail over junior use identical or confusingly similar domain names in certain circumstances (See, e.g., Passion Group Inc. v. Usearch, Inc., AF-0250 (eResolution Aug.10, 2000), citing Cedar Trade Assoc., Inc. v. Ricks, FA93633 (Nat. Arb. Forum Feb. 25, 2000)), Complainant does not allege that HERALD is a common law trademark. The Panel notes that Complainant does not claim any registered status for HERALD, nor does it claim that such mark has achieved secondary meaning, nor is it alleged that there has been any actual confusion on the part of the public between HERALD and Respondent’s hearld.com domain name. The Cambridge International Dictionary of English defines the word "herald" in this manner: "In the past, a herald was a person who delivered important messages and made announcements." Merriam-Webster’s Collegiate Dictionary defines "herald" as "an official crier or messenger." Thus, the mark HERALD is descriptive, not distinctive (even among newspapers, e.g., The Los Angeles Herald Examiner, The International Herald Tribune), and, as Respondent correctly argues, generic and cannot trump a domain name which is not even spelled in the same way.

The claim with respect to miamihearld.com, is different, we believe. Complainant has federal trademark registrations with respect to THE MIAMI HERALD. The issues of descriptiveness and generic nature of the mark have been conclusively resolved in favor of Complainant for purposes of this proceeding. Respondent’s domain name, miamihearld.com is nearly identical and confusingly similar to Complainant’s well-established mark. See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names "tdwatergouse.com" and "dwaterhouse.com" are virtually identical to Complainant’s TD WATERHOUSE name and mark); see also EBAY, Inc. v. MEOdesigns and Matt Oettinger, D2000-1368 (Dec. 15, 2000) (finding that Respondent’s domain name "eebay.com" is confusingly similar to the Complainant’s registered trademark).

A reasonable Internet user might well assume that miamihearld.com is somehow associated with Complainant’s well-known mark, THE MIAMI HERALD. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s website, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist).

Respondent has no rights or legitimate interests in the domain name in question because Respondent is not commonly known by the domain name, nor has Respondent used the domain name in connection with a legitimate noncommercial or fair use without intent for commercial gain. See Adamovske Strojirny v Tatu Rautiainen, D2000-1394 (WIPO Dec. 20, 2000) (finding that the Respondent has no rights or legitimate interests in the domain name where the Respondent is not commonly known by the distinct ADAST mark and has made no use of the domain name in question); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use). Respondent is simply trading on the good will associated with Complainant’s MIAMI HERALD trademark.

Respondent registered the disputed domain names in bad faith because the domain names are being used to intentionally attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with Complainant’s well-established mark as to the source, sponsorship, affiliation and endorsement of Respondent’s web site. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well known marks, thus creating a likelihood of confusion strictly for commercial gain).

Both parties discuss Respondent’s numerous past appearances before ICANN UDRP panels and in court proceedings. While we are not favorably impressed with the manner in which Respondent has apparently abused the domain name registration process, we agree with Respondent that, whatever he may or may not have done in other cases is irrelevant to this case.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

The Panel finds that the domain name, miamihearld.com, is identical or confusingly similar to Complainant’s registered trademark, THE MIAMI HERALD. We find that the domain name, hearld.com, based upon the proof advanced by Complainant, is not identical or confusingly similar to a trademark in which the Complainant has rights.

The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name, miamihearld.com, but based on the evidence presented, Respondent has rights or legitimate interests in respect to hearld.com.

The panel finds that Respondent registered and is using the domain name, miamihearld.com, in bad faith. On the basis of the evidence presented, it is not necessary to make a finding of bad faith with respect to the domain name, heald.com.

It is the unanimous Decision of this Panel that the domain name, miamihearld.com, be transferred from Respondent to Complainant. It is the majority Decision of this Panel that the domain name, hearld.com, not be transferred from Respondent to Complainant.

Hon James Carmody, Chairman, Hon. Ralph Yachnin, Panelist

Prof. David Sorkin, Panelist, concurring in part and dissenting in part

I concur in the majority's decision with respect to "miamihearld.com," but write separately because I must respectfully dissent from the decision as to "hearld.com."

As the majority acknowledges, Complainant does possess some trademark rights to the term "THE HERALD." Though these rights are admittedly quite limited, I believe they are sufficient to serve as a basis for satisfying the identicality/similarity requirement under the ICANN Policy. Complainant alleges that "hearld.com" is confusingly similar to its trademark "THE HERALD." I agree; "hearld" is nothing but a misspelled version of "herald," and removing the definite article and adding a top-level domain are of little consequence. I would find that the identicality/similarity test is met for "hearld.com" as well as for "miamihearld.com."

As to the second requirement under the ICANN Policy, I see no basis for distinguishing Respondent's rights or interests in "hearld.com" from its rights or interests in "miamihearld.com." The two domain names were registered by the same entity at approximately the same time, apparently for the same purpose, and they have been used in the same manner. I would find that the illegitimacy test is satisfied for both domain names.

Finally, with regard to bad faith registration and use, I agree with the majority that Respondent registered and is using "miamihearld.com" in bad faith, and would reach the same conclusion for "hearld.com." Had Respondent registered only "hearld.com" and not "miamihearld.com," I would find the question of bad faith registration much more troubling. However, Respondent registered "miamihearld.com" two weeks before registering "hearld.com" and apparently has never used "hearld.com" for any purpose other than to profit from confusion with Complainant's domain name "herald.com," just as it appears to have registered and used "miamihearld.com" solely to profit from confusion with Complainant's domain name "miamiherald.com." Under the circumstances, I believe it is reasonable to infer that this was Respondent's intent all along, and thus I would find that the bad faith requirement is satisfied.

I would order that "hearld.com" as well as "miamihearld.com" be transferred to Complainant.