DECISION

Pathlink Technology Corp. v. Featureprice.com Client Domain

Claim Number: FA0207000115688

PARTIES

Complainant is Pathlink Technology Corp., Sunnyvale, CA (“Complainant”) represented by Gary R. Gleason, of Farbstein & Blackman.  Respondent is Featureprice.com d/b/a Featureprice.com a/k/a Hosting-Network, Inc., Ft. Myers, FL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <newsguys.net>, registered with DotRegistrar.com.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 16, 2002; the Forum received a hard copy of the Complaint on July 15, 2002.

On July 24, 2002, DotRegistrar.com confirmed by e-mail to the Forum that the domain name <newsguys.net> is registered with DotRegistrar.com and that Respondent is the current registrant of the name.  DotRegistrar.com has verified that Respondent is bound by the DotRegistrar.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 August 13, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 3, 2002 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@newsguys.net by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On September 23, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

The <newsguys.net> domain name is confusingly similar to Complainant’s NEWSGUY mark.

Respondent has no rights or legitimate interests in the <newsguys.net> domain name.

Respondent registered and used the <newsguys.net> domain name in bad faith.

B. Respondent

Respondent has failed to come forward with a Response.

FINDINGS

Complainant holds Reg. Nos. 2,225,792 and 2,499,279 with the United States Patent and Trademark Office (“USPTO”) for the NEWSGUY mark, both of which are registered on the Principle Register.  Complainant primarily uses the NEWSGUY mark to disseminate newsworthy information on the Internet.  The information and associated services are provided on a website located at <newsguy.com>.  Complainant also uses the NEWSGUY mark for ancillary products designed to promote and enhance the services offered under the mark.  In an effort to promote and develop the NEWSGUY mark and associated services, Complainant has invested a substantial amount of money. 

Respondent registered the <newsguys.net> domain name on February 17, 2002.  Respondent subsequently used the domain name in connection with a website that distributes photos of newsworthy events.  Complainant notified Respondent of its protest to the infringing domain name and ordered Respondent to cease and desist its use of the domain name.  Respondent did not reply to Complainant’s correspondence and continues to actively use the domain name.

DISCUSSION

Paragraph 15(a) of 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.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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; and

(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.

Identical and/or Confusingly Similar

Complainant has established its rights to the NEWSGUY mark through proof of registration with the USPTO and continuous use of the mark in e-commerce.

Respondent’s <newsguys.net> domain name is merely the plural form of Complainant’s NEWSGUY mark.  The focus of a confusingly similar analysis remains on the second level domain, which in this case is “newsguys.”  It is well established that merely adding an “s” on the end of one’s mark and, thus, pluralizing the mark does not create a distinct domain name capable of overcoming a confusingly similar claim.  In addition, the generic top-level domain has no relevance in the analysis as it is required in all domain names.  Hence, the “.net” part of Respondent’s domain name has no distinguishing significance.  Therefore, Respondent’s <newsguys.net> domain name is confusingly similar to Complainant’s NEWSGUY mark.  See Nat’l Geographic Soc. v. Stoneybrook Inv., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to Complainant’s “National Geographic” mark); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to the end of Complainant’s mark, ‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation”).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant successfully alleges all the required elements of a Complaint, including Complainant’s assertions that Respondent has no rights or legitimate interests in the <newsguys.net> domain name.  Complainant’s contentions shift the burden to Respondent to affirmatively demonstrate rights or legitimate interests in the domain name.  Respondent, however, has failed to answer the Complaint.  Therefore, the Panel may presume that Respondent has no such rights or legitimate interests.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Furthermore, all reasonable inferences may be drawn in favor of Complainant because Respondent has failed to come forward and defend its registration and use of the <newsguys.net> domain name.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent uses the <newsguys.net> domain name for a website that is designed for the purpose of releasing the works of press photographers.  Distributing photos of newsworthy events is similar to Complainant’s NEWSGUY related business of disseminating information of newsworthy events.  Thus, Respondent is using a substantially similar variation of Complainant’s NEWSGUY mark for a website that serves a similar business purpose.  Respondent’s behavior is likely to confuse and divert unsuspecting Internet users searching for Complainant’s services to Respondent’s website.  Respondent’s diversionary use of Complainant’s NEWSGUY mark does not constitute a connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor does it represent a legitimate fair use pursuant to Policy ¶ 4(c)(iii).  See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website).

Respondent has no business affiliation with Complainant and, therefore, has no authority to use the NEWSGUY mark.  There exists no evidence on the record and Respondent has failed to come forward to establish that it is commonly known by the <newsguys.net> domain name.  Complainant’s research has disclosed the identity of the <newsguys.net> website operator as Rick Moran.  Therefore, Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <newsguys.net> domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Policy ¶ 4(b) lists a number of circumstances that support a finding of bad faith.  However, the same section states that the list is non-exhaustive and, therefore, the Panel is permitted and encouraged to look at the totality of circumstances when determining the crucial bad faith registration and use issues.  See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).

Complainant’s NEWSGUY mark is registered twice on the Principle Register of the USPTO.  Thus, Complainant’s registration of the NEWSGUY mark imparts constructive knowledge to all potential infringing parties.  A registering party is responsible to make sure its desired domain name does not infringe on someone else’s trademark rights.  At present, Respondent was under constructive knowledge of Complainant’s mark when it registered the domain name because the mark is registered on the Principle Register.  This constructive knowledge imparts the burden on Respondent to ensure that its domain name is not confusingly similar to another entity’s mark. A rudimentary search with the USPTO would have uncovered Complainant’s interests in NEWSGUY.  Therefore, Respondent registered the confusingly similar <newsguys.net> domain name in bad faith.  See Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072).

In addition, a few months after learning of Respondent’s registration rights in <newsguys.net> Complainant notified Respondent of its infringement.  Respondent never replied to Complainant’s correspondence and currently continues to use the domain name for the aforementioned confusingly similar purpose.  Because Complainant and Respondent disseminate information that is similar, for purposes of Policy ¶ 4(b)(iii), they are in a competitive relationship.  Hence, Respondent is using the domain name as a way of disrupting Complainant’s business, while at the same time fully aware of Complainant’s interest in the NEWSGUY mark.  Furthermore, the Panel has determined that Respondent has no rights or legitimate interests in the domain name because of the confusingly similar content provided under the auspices of the domain name, and Respondent’s failure to affirmatively make a case in favor of such rights or legitimate interests. Therefore, Respondent is actively using the domain name in bad faith under Policy ¶ 4(b)(iii).  See Mission Kwa Sizabantu v. Rost, D2000-0279 (WIPO June 7,2000) (defining “competitor” as "…one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as Complainant).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.

Accordingly, it is Ordered that the domain name <newsguys.net> be transferred from Respondent to Complainant.

John J. Upchurch, Panelist

Dated: October 1, 2002

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