DECISION

The Journal Gazette Co. v. Domain For Sale Inc. a/k/a Domain World

Claim Number: FA0208000122202

PARTIES

Complainant is The Journal Gazette Co., Fort Wayne, IN (“Complainant”) represented by Jeffrey P. Smith, of Hawk, Haynie, Kammeyer & Chickedantz.  Respondent is Domain For Sale Inc. a/k/a Domain World, Bronx, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <fortwaynejournalgazette.com>, registered with Enom, Inc.

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.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 21, 2002; the Forum received a hard copy of the Complaint on August 23, 2002.

On August 21, 2002, Enom, Inc. confirmed by e-mail to the Forum that the domain name <fortwaynejournalgazette.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 26, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 16, 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@fortwaynejournalgazette.com 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 October 2, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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 <fortwaynejournalgazette.com> domain name is confusingly similar to Complainant’s THE JOURNAL GAZETTE mark.

Respondent has no rights or legitimate interests in the <fortwaynejournalgazette.com> domain name.

Respondent registered and used the <fortwaynejournalgazette.com> domain name in bad faith. 

B. Respondent

Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant has the mark THE JOURNAL GAZETTE registered with the United States Patent and Trademark Office (“USPTO”) as Reg. No. 1,958,701.  Complainant has used the mark THE JOURNAL GAZETTE in relation to its publication of a daily newspaper in Fort Wayne, Indiana since 1899.  The daily newspaper is your typical daily publication containing current news, editorials and feature articles.  The newspaper, The Journal Gazette, is published in Fort Wayne, Indiana, and its circulation includes areas of northeastern Indiana and northwestern Ohio.

Respondent registered the <fortwaynejournalgazette.com> domain name on February 16, 2002.  Respondent has used the domain name to divert Internet traffic to the <abortionismurder.org> website, which contains graphic images of aborted fetuses, and to the <thetruthpage.com> website, which is devoted to writings with politically charged messages.  Complainant’s investigation has revealed that Respondent’s true identity is John Barry, a notorious cybersquatter who registers domain names consisting of marks of other entities and links them to the <abortionismurder.org> website.  In response to Complainant’s cease and desist letter, Respondent offered to sell the <fortwaynejournalgazette.com> domain name registration to Complainant for $750. 

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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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 in the mark THE JOURNAL GAZETTE through proof of registration with the USPTO and continuous use of the mark since 1899. 

Respondent’s <fortwaynejournalgazette.com> domain name incorporates a substantial portion of Complainant’s THE JOURNAL GAZETTE mark.  Respondent merely leaves the first word of the mark out, “the,” and adds the prefix “Fort Wayne.”  This prefix happens to be the city that The Journal Gazette is published in, Fort Wayne, Indiana.  So, the addition of “Fort Wayne” to the substantive portion of Complainant’s THE JOURNAL GAZETTE mark only creates more consumer confusion.  Therefore, Respondent’s domain name is confusingly similar to Complainant’s mark.  See Down East Enter. Inc. v. Countywide Communications, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name <downeastmagazine.com> confusingly similar to Complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the domain name <cmgiasia.com> is confusingly similar to Complainant’s CMGI mark).

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

Rights or Legitimate Interests

Respondent did not come forward to establish rights or legitimate interests in the <fortwaynejournalgazette.com> domain name and Complainant affirmatively alleged that Respondent has no such rights or legitimate interests.  Complainant has presented the Panel with a prima facie case, which effectively shifts the burden on Respondent to establish its rights or legitimate interests in the domain name.  Respondent has failed to produce evidence in this proceeding and therefore the Panel presumes that Respondent has no rights or legitimate interests in the domain name.  See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist); 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).

In addition, Respondent’s failure to answer the Complaint allows the Panel to draw all reasonable inferences in favor of Complainant and to accept all allegations as true.  See 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); see also 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”).

Respondent has used the <fortwaynejournalgazette.com> domain name to link unsuspecting Internet users, who attempt to locate Complainant’s The Journal Gazette newspaper, to the <abortionismurder.org> website and <thetruthpage.com> website.  Neither website has any connection with Complainant, nor do the websites have any connection or affiliation with Fort Wayne, Indiana or the mark THE JOURNAL GAZETTE.  One website confronts Internet users with graphic pictures of aborted fetuses and the other espouses highly charge political messages.  Both uses are opportunistic uses designed to increase the Internet traffic at <abortionismurder.org> or <thetruthpage.com> by trading on the mark THE JOURNAL GAZETTE, which has no logical connection to the websites.  Neither use by Respondent evidences a connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Rittenhouse Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8, 2002) (finding that, by linking the confusingly similar domain name to an “Abortion is Murder” website and subsequently asking for compensation beyond out-of-pocket costs to transfer the domain name, Respondent has not demonstrated a right or legitimate interest in the disputed domain name); see also 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).

Furthermore, Respondent offered to sell the <fortwaynejournalgazette.com> domain name registration rights to Complainant for $750.  Offering to sell the domain name registration to Complainant evidences a lack of rights or legitimate interests in the domain name.  Also, the <fortwaynejournalgazette.com> domain name is so obviously connected to Complainant and its newspaper that it appears to have been registered for Complainant’s ultimate use.  See Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where Respondent offered the infringing domain name for sale and the evidence suggests that anyone approaching this domain name through the world wide web would be "misleadingly" diverted to other sites); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark).

Finally, Respondent has no connection or association with Complainant.  Respondent is well-known by the Panel as John Barry, who has engaged in many domain name registrations and uses similar to the present case.  There exists no shred of evidence that Respondent was commonly known by the <fortwaynejournalgazette.com> domain name.  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 Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

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

Registration and Use in Bad Faith

Given Respondent’s identity, as John Barry, it is highly evident that Respondent registered and used the domain name in bad faith.  Respondent has no legitimate business connection with the <fortwaynejournalgazette.com> domain name; the only reasonable party that could have a connection with the domain name is Complainant, because Complainant owns the mark THE JOURNAL GAZETTE and prints its related newspaper from Fort Wayne, Indiana.  It is therefore evident that Respondent chose the domain name to increase the traffic flowing to the <abortionismurder.org> and <thetruthpage.com> websites.  These websites have the capability of tarnishing Complainant’s mark due to their graphic and highly charged political content.  Therefore, it is clear that Respondent attempts to benefit from the goodwill associated with Complainant’s mark in bad faith.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Rittenhouse Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8, 2002) (finding that “when a party registers and uses a domain name that incorporates a well-known mark and connects the domain name with a website that depicts offensive images,” the party has registered and used the disputed domain name in bad faith).  

In addition, Respondent’s bad faith in connection with the <fortwaynejournalgazette.com> domain name extends beyond its opportunistic registeration and subsequent use, as Respondent offered the domain name registration for sale to Complainanat for $750.  This is an amount that is clearly in excess of Respondent’s related costs in registering the domain name and associated expenses.  Therefore, Respondent’s intent to sell the domain name registration evidences bad faith under Policy ¶ 4(b)(i).  See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale); see also Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith).

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 <fortwaynejournalgazette.com> be transferred from Respondent to Complainant.

Judge Harold Kalina (Ret.), Panelist

                                          Dated:  October 9, 2002

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