Generic Top Level Domain Name (gTLD) Decisions

The Complainant is The State-Record Company, Inc., Columbia, SC, USA ("Complainant") represented by Ian C. Ballon, of Manatt, Phelps & Phillips, LLP. The Respondent is D. Vining Godpilot, W. Columbia, SC, USA ("Respondent").

The domain names at issue are <thestatenewspaper.com> and <thestatepaper.com > registered with Register.com.

The undersigned certify 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, M. Scott Donahey, Esq. and Hon. James A. Carmody (Chairman) as Panelists.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on February 19, 2001; the Forum received a hard copy of the Complaint on February 20, 2001.

On February 20, 2001, Register.com confirmed by e-mail to the Forum that the domain names <thestatenewspaper.com> and <thestatepaper.com > are registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 27, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 19, 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@thestatenewspaper.com and postmaster@thestatepaper.com by e-mail.

A timely response was received and determined to be complete on March 16, 2001.

A timely additional submission was received from Complainant and determined to be complete on March 23, 2001.

On March 26, 2001, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed the Hon. Ralph Yachnin, M. Scott Donahey, Esq. and the Hon. James A. Carmody as Panelists.

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

Respondent appears to argue in his Response that Complainant has several other domain names associated with its trademark and newspaper and he does not understand why they would want the domain names at issue. Further Respondent says that he has not made use of the domain names at issue because he has, "…not found a Web Server, Yet!" He appears to deny Complainant’s allegations of bad faith by asking if there is a witness to corroborate the affidavit of the president of Complaint’s newspaper.

C. Complainant’s Additional Submission

Complainant points out that Respondent’s bad faith is manifest from email communications to counsel for Complainant in which Respondent apparently was demanding a "Great Amount of Money" for a transfer of the domain names at issue.

For over a century, THE STATE has been and continues to be the largest daily newspaper in South Carolina. Both print and Internet editions of THE STATE are published. The Internet edition is located at "thestate.com." Since at least as early as 1892, The State has continuously and pervasively used THE STATE Mark in connection with the wide circulation and sale of its daily newspaper. In fact, THE STATE has exclusive rights throughout the United States to use THE STATE mark by virtue of its United States Trademark Registration No. 1,883,544, featuring the mark THE STATE for use in connection with newspapers. This Registration is valid and fully subsisting. Because THE STATE has spent substantial money and effort to promote THE STATE Mark, the mark has become identified in the minds of consumers exclusively with THE STATE’s high quality newspapers. Thus, through widespread and favorable public recognition and acceptance, the mark has become an asset of substantial value and goodwill to THE STATE.

Respondent, a South Carolina resident, registered each of the domain names at issue on May 2, 2000. Since that time, he has not developed websites associated with the domains and does not even suggest plans for future use. There is no allegation that Respondent has ever been commonly known by either of the domain names at issue.

There is ample evidence in the form of two emails from Respondent to counsel for Complainant to demonstrate that Respondent was seeking a "Great Amount of Money" for his agreement to transfer the domain names at issue to the Complainant.

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.

Respondent’s domain names, thestatenewspaper.com and thestatepaper.com, are confusingly similar to Complainant’s THE STATE mark. Complainant’s business is running a newspaper, therefore the domain names incorporate terms with a strong relationship to Complainant’s business with Complainant’s mark. See Space Imaging LLC v. Brownwell, AF 0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business). While it may be argued that Complainant’s mark is merely descriptive, particularly when applied to a political entity, such is not the case when applied to a newspaper. The continuous use of the mark to identify a particular South Carolina publication since 1892 clearly demonstrates creation of a secondary meaning for this mark which is famous in South Carolina. We find that Respondent, who lists his registration address in South Carolina, could not have been unaware of this famous mark and its association with Complainant’s newspaper.

In addition, Respondent’s domain name is so confusingly similar a reasonable Internet user would assume that the domain name is somehow affiliated with Complainants well-established mark. 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 web site, 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 disputed domain names because Respondent is not commonly known by either of the domain names, nor has Respondent used the domain names in connection with a legitimate noncommercial or fair use without intent for commercial gain. See Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, the Respondent has not used the domain names in connection with any type of bona fide offering of goods and services); see also Open Systems Computing AS v. Alberto degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that Respondent did not establish rights and legitimate interests in the domain name where Respondent mentioned that it had a business plan for the website at the time of registration but did not furnish any evidence in support of this claim).

Further, Respondent’s passive holding of the domain names at issue is evidence of Respondent’s lack of rights and legitimate interests in the domain names. See Ziegenfelder Co. v. VMH Enterprises, Inc. D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in the said domain name).

Respondent’s passive holding of the domain names at issue is evidence of bad faith. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4 (a) (iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the Respondent had made no use of the domain name or web site that connects with the domain name, and passive holding of a domain name permits an inference of registration and use in bad faith).

Respondent attempted to sell the domain names at issue for a profit. See Cruzeiro Licenciamentos Ltda v. Sallen and Sallen Enterprises, D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (failure to use the domain name in any context other than to offer it for sale to Complainant amounts to a use of the domain name in bad faith); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding bad faith based on the apparent willingness of the Respondent to sell the domain name in issue from the outset, albeit not at a price reflecting only the costs of registering and maintaining the name).

We find that the requirements of Paragraph 4(a)(iii) of the Policy have been satisfied.

Having established all three elements required under ICANN Policy for each of the domain names at issue, the Panel concludes that the requested relief shall be and is hereby granted.

Accordingly, it is Ordered that the domain names, thestatenewspaper.com and thestatepaper.com, be transferred from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

M. Scott Donahey, Esq., Panelist