Generic Top Level Domain Name (gTLD) Decisions

Complainant is Belo Corp. ("Belo"), 400 South Record Street, Dallas, Texas 75202-4841, United States of America.

Respondent is George Latimer ("Latimer"), P.O. Box 45, Greenville, RI 02828, United States of America.

The domain name at issue is: <providencejournal.com> (the "Domain Name").

The registrar is Namescout Corp. (the "Registrar"), Whitepark House, White Park Road, Barbados.

The WIPO Arbitration and Mediation Center (the "Center") received Belo’s Complaint by e-mail on April 6, 2002, and in hard copy on April 9, 2002. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). Complainant made the required payment to the Center.

On April 12, 2002, the Center transmitted via e-mail to the Registrar a request for registrar verification in connection with this case. On April 12, 2002, the Registrar transmitted via e-mail to the Center its response, confirming that (1) a copy of the Complaint was sent to it by Complainant as required by Supplemental Rule 4(b); (2) the Domain Name was registered through it; (3) Respondent is the current registrant of the Domain Name; (4) the Administrative, Technical and Billing Contacts for the Domain Name are the Respondent; (5) the Policy applies to the Domain Name; and (6) the Domain Name is active.

On April 15, 2002, the Center transmitted the Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint, via e-mail with copy by courier (FedEx) to Respondent as required by Rule 2(a). The Center also transmitted a copy to the Registrar. The Center advised that Respondent’s Response was due by May 5, 2002. The Center also noted that Complainant had elected for a single panelist to decide this matter.

The requirements of Rule 2(a) having been satisfied, the formal date of the commencement of this administrative proceeding, pursuant to Rule 4(c), is April 15, 2002.

On May 2, 2002, Respondent submitted a Response to the Complaint.

On May 3, 2002, the Center transmitted an Acknowledgement of Receipt of Respondent’s Response to Respondent, and noted therein that "as this proceeding is being administered by WIPO Arbitration and Mediation Center, all the references made to National Arbitration Forum (NAF) Supplemental Rules will be disregarded."[1]

On May 8, 2002, the Center advised the parties, in accordance with Rule 6(f), of the appointment of Michael Albert, the undersigned, as the Panelist in this case. Pursuant to Rule 15(b), the Center further informed the parties that, absent exceptional circumstances, the Panel would forward a decision to the Center by May 22, 2002.

On May 8, 2002, the Center transmitted the case file to the Panel.

The Complaint is based on Complainant’s alleged ownership of rights to the mark PROVIDENCE JOURNAL, which Complainant claims to have used for newspaper services since at least 1830.

Complainant owns at least one federal registration for the mark THE PROVIDENCE JOURNAL. Complainant provided the Panel with a printout from the U.S. Trademark Electronic Search System ("TESS") of the United States Patent and Trademark Office ("USPTO"), for its U.S. Reg. No. 430,799.

U.S. Reg. No. 430,799 is for the stylized word mark THE PROVIDENCE JOURNAL. This registration issued in 1947 for newspapers, and claims a date of first use in 1830.

The dispute is within the scope of the Policy, and the Panel has jurisdiction to decide the dispute. The Registrar’s registration agreement incorporates the Policy by reference.

In Paragraph 8 of its Complaint, Complainant avers that each of the three requirements of Paragraph 4(a) of the Policy have been satisfied.

Complainant asserts as follows:

- That Complainant is the parent corporation of The Providence Journal Company, which runs the newspaper The Providence Journal in Providence, Rhode Island, United States of America[2].

- That Complainant has been using the trademark THE PROVIDENCE JOURNAL for providing newspaper services since at least 1830.

- That Complainant is known and recognized by the public through the mark THE PROVIDENCE JOURNAL.

- That Complainant owns U.S. Registration No. 430,799 for the mark THE PROVIDENCE JOURNAL.

- That the Domain Name "infringes [Complainant’s] rights" in the mark THE PROVIDENCE JOURNAL.

- That until late 2001, Complainant held the registration for the Domain Name and used the Domain Name to re-direct visitors to its home page at <projo.com>.

- That Complainant inadvertently failed to renew its registration for the Domain Name, after which Respondent registered the Domain Name on December 28, 2001.

- That, upon learning of Respondent’s registration of the Domain Name, Complainant visited the web site located at the Domain Name and discovered a web page posted by Respondent under the title "The Buzzzz."

- That Complainant, through its attorneys, contacted Respondent and requested that Respondent cease and desist from using the Domain Name, but that Respondent refused on the basis that he had acted in good faith, had invested in the web site posted at the Domain Name, and had been approached by others wishing to purchase the Domain Name. Complainant further asserts that Respondent requested over $100,000 for return of the Domain Name, or in the alternative approximately $50,000 plus transfer from Respondent to Complainant of the domain name <providence.com>. According to Complainant, Respondent acknowledged knowing that Complainant used <providence.com> as a pointer to re-direct visitors to its home page at <projo.com>.

- That several days after the aforementioned conversation between Respondent and Complainant’s attorney, Respondent e-mailed Complainant’s attorney that he could also be reached at the address <George@TheProvidenceJournalSucks.com>. Thereafter, Complainant ascertained that Respondent had registered the domain name <theprovidencejournalsucks.com>[3].

- That Respondent subsequently wrote to Complainant claiming to have ascertained that Complainant’s failure to renew its registration for the Domain Name was not inadvertent, on the basis of allegedly having inspected Network Solutions’ own records. In its Complaint, Complainant states that its attorneys contacted Verisign (which now owns Network Solutions), and were told that such records would not have been available to Respondent. Complainant maintains that its failure to renew its registration was inadvertent.

- That the Domain Name is confusingly similar to Complainant’s mark THE PROVIDENCE JOURNAL.

- That Respondent has no legitimate interest in the Domain Name because (1) Respondent is not related to Complainant and has not been licensed by Complainant to use the mark PROVIDENCE JOURNAL; (2) Respondent has taken steps, after being contacted by Complainant, to suggest that he is making a bona fide offering of goods and services under the Domain Name rather than hijacking a domain name confusingly similar to Complainant’s mark THE PROVIDENCE JOURNAL; and (3) The Domain Name does not reflect the name of Respondent’s corporate entity, nor does Respondent have any rights to any trade names or trademarks consisting in whole or in part of the mark PROVIDENCE JOURNAL.

- That Respondent’s intent in registering the Domain Name was to seek commercial gain.

- That Respondent’s activity is intended to disrupt Complainant’s business.

- That Respondent’s bad faith is not eliminated by the fact that Complainant inadvertently permitted its registration of the Domain Name to expire.

In response, Respondent asserts as follows:

- That in August 2001, Respondent began "to study various methods of developing a commercial endeavor that made great use of the internet."

- That, during a search of expiring domain names, Respondent became aware that the Domain Name was scheduled to expire on September 29, 2001[4].

- That the Domain Name was attractive to Respondent because Respondent believed the combination of "two common nouns" (providence and journal) was "unlikely to offer any trademark issues."

- That Complainant has not registered a number of domain names including the top level domain "theprovidencejournal" (with the definite article "the"), even though the name of its newspaper includes the definite article.

- That Complainant has registered the mark PROJO.COM for "providing a wide range of interactive information and entertainment by means of a global computer information network," but has not done so for the mark PROVIDENCE JOURNAL.

- That in January 2002, Respondent launched a web site at the Domain Name.

- That the Domain Name is not confusingly similar to Complainant’s mark THE PROVIDENCE JOURNAL because of the absence of the definite article "the" in the Domain Name.

- That Respondent has rights or legitimate interest in the Domain Name because Respondent launched a web site at the Domain Name before being contacted by Complainant about the registration, and because, after receiving notification from Complainant, Respondent placed a disclaimer on the web site at the Domain Name stating that the web site is not sponsored by Complainant.

- That Respondent did not register the Domain Name in bad faith because Respondent is making use of the Domain Name by posting a web site there, because the web site has attracted thousands of visitors, and because Respondent was induced to request a cash payment for the Domain Name by the "trickery" of Complainant’s counsel.

- That Attorney Nagy, who represents Complainant, is a "material witness" in this proceeding, making her continued representation of Complainant improper.

- That Complainant has brought this proceeding in an attempt at "reverse domain-name hijacking."

The Panel now proceeds to consider this matter on the merits in light of the Complaint, the Response, the Policy, the Rules, the Supplemental Rules, and other applicable legal authority, pursuant to Rule 15(a). In the Panel’s view, given that both parties to this dispute appear to be based in the United States, applicable authority shall include relevant principles of United States trademark law.

Paragraph 4(a) of the Policy provides that Complainant must prove, with respect to the Domain Name, each of the following:

(i) The Domain Name is identical or confusingly similar to a trademark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four non-exclusive, but illustrative, circumstances or acts that for purposes of Paragraph 4(a)(iii) above would be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances, any one of which, if proved by Respondent, would demonstrate Respondent’s rights or legitimate interests in the Domain Name for purposes of Paragraph 4(a)(ii).

Complainant has proven that it is the owner of trademark rights in the mark PROVIDENCE JOURNAL. Complainant’s registrations of its mark(s) on the Principal Register of the USPTO establish a presumption of validity of the mark(s) under United States law. See 15 U.S.C. § 1057(b); Avery Dennison v. Sumpton, [1999] USCA9 436; 189 F.3d 868 (9^th Cir. 1999). Additionally, the registration(s) constitute constructive notice to all other parties of Complainant’s ownership of the mark(s). See 15 U.S.C. § 1072.

In comparing Complainant’s mark to the Domain Name, it is well established that the generic top-level domain, in this case ".com," must be excluded from consideration as being a generic or functional component of the Domain Name. See Sporty’s Farm v. Sportsman's Market, [2000] USCA2 33; 202 F.3d 489, 498 (2d Cir. 2000).

The remaining terms, PROVIDENCEJOURNAL and THE PROVIDENCE JOURNAL, are essentially identical. This Panel agrees with the numerous distinguished WIPO panels holding that mere deletion (or addition) of the article "the" within a mark does not constitute a substantive change or obviate confusion. E.g., Down Jones & Co., Inc. v. T.S.E. Parts, WIPO Case No. D2001-0381 (May 4, 2001) (<ewallstreetjournal.com> held confusingly similar to mark "THE WALL STREET JOURNAL" despite absence of definite article "the"); Telstra Corp., Ltd. v. Heaydon Enterprises, WIPO Case No. D2000-1672 (January 20, 2001) ("the addition of the definite article does not affect the basic concern about confusing similarity").

Accordingly, the Panel finds that the Domain Name is virtually identical to Complainant’s mark, and that confusion between the two is likely. This conclusion is bolstered by the fact that Respondent’s web site at the Domain Name includes numerous references to Providence, Rhode Island (including "news") – the geographical center of circulation for Complainant’s newspaper[5].

The Panel is unpersuaded by Respondent’s "two common nouns" argument. The fact that two words are each generic does not mean that the combination of those two words cannot be a protectible trademark. E.g., Mellon Bank v. HS Trading Co., Claim No. FA0011000095951 (NAF December 12, 2000) (rejecting argument that bank’s trademark is not protectible because it is composed of "two common nouns"). The case cited by Respondent, American Quarter Horse Ass’n v. Taeho Kim, Claim No. FA0112000103358 (NAF April 2, 2002), is not to the contrary. There, the panel expressly found both that the complainant had trademark rights in the mark AMERICA’S HORSE, and that <americashorse.com>, used by the respondent, was identical or confusingly similar to the complainant’s mark. The panel declined to transfer the domain name to the complainant because it found that the respondent had a legitimate interest in the Domain Name, and had not acted in bad faith. Those factors are independent of whether the mark and Domain Name are confusingly similar. Respondent cannot prevail on the "confusing similarity" prong; the other remaining prongs (respondent’s right or legitimate interest and presence or absence of bad faith) are addressed below.

The Panel is also unpersuaded by Respondent’s suggestion that confusion is somehow mitigated by Complainant’s use of the Domain Name <projo.com>. Respondent does not dispute that, before Complainant’s registration of the Domain Name lapsed, Complainant used the Domain Name to direct users to its primary web site at <projo.com>. Companies are, of course, entitled to have more than one trademark, as well as more than one domain name.

The Panel’s view is unchanged by Respondent’s placement of a disclaimer that his web site is not sponsored by Complainant – such disclaimers are not necessarily sufficient to mitigate confusion, and in this case it fails to do so. See Valero Energy Corp. v. Am. Distribution Sys., WIPO Case No. 2001-0581 (August 12, 2001) (disclaimers that appear only after the Internet user has already been directed to an unintended site are "too late"). Moreover, in this case the disclaimer was not added until after Respondent was contacted by Complainant’s attorneys.

It does not appear to the Panel that Respondent has rights or a legitimate interest in the Domain Name.

First, the Panel concludes that Respondent did not use or make preparations to use the Domain Name in connection with a bona fide offering of goods or services "before any notice to [Respondent] of the dispute." Policy ¶ 4(c)(i). Although Respondent launched his web site prior to his receipt of a cease-and-desist letter from Complainant’s attorney, he admits to having been well aware that the Domain Name previously belonged to Complainant at the time he registered it. Based on its evaluation of all the evidence presented, Policy ¶ 4(c), and in its discretion to determine the admissibility, relevance, materiality and weight of the evidence, Rule 10(d), the Panel concludes that Respondent was on notice of a dispute before he made use of the Domain Name[6].

Second, the Panel finds no evidence that Respondent is commonly known by the Domain Name. Policy ¶ 4(c)(ii). Indeed, Respondent’s registration and use of the Domain Name <theprovidencejournalsucks.com> make it abundantly clear that he believes "The Providence Journal" to refer to the complainant, not to himself. He presumably does not intend to make a derogatory reference to himself.

Third, the Panel concludes that Respondent’s use of the Domain Name is not a "legitimate noncommercial or fair use." Policy ¶ 4(c)(iii). Indeed, Respondent admits that his purpose in registering the Domain Name was to develop "a commercial endeavor."

The federal registration of Complainant’s mark, coupled with the Domain Name’s overwhelming similarity to Complainant’s mark and corporate name, and Respondent’s failure to prove any of the defenses provided in Paragraph 4(c) of the Policy lead this Panel to conclude that Respondent has no rights or legitimate interest in the Domain Name.

Complainant’s third hurdle is to establish that Respondent has registered and used the Domain Name in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. The first is acquisition or registration of the domain name "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark … or to a competitor of that complainant, for valuable consideration in excess of [registrant’s] documented out-of-pocket costs directly related to the domain name."

In this case, the Panel finds evidence of this type of bad faith. Respondent unquestionably demanded over $100,000 for sale of the Domain Name to Complainant. In an effort to mitigate the inference presented by this offer for sale, Respondent argues that he made the offer only as a result of "trickery" by Complainant’s attorney, who requested a "counter-offer" to bring back to her client. Respondent attempts to paint a picture of a gross imbalance in sophistication between himself and Complainant’s attorney, such that he was duped into taking an action (offering the Domain Name for sale at a high price) that has a negative effect on his ability to prevail in this proceeding.

The Panel views the events differently. During his telephone call with Complainant’s attorney, Respondent asked whether the call was being taped, whether he was on speaker phone, and whether anyone else was listening. He asserted that several other parties had offered to purchase the Domain Name from him, and he insisted that Complainant make him a "meaningful" offer, which he subsequently indicated meant a sum in excess of $100,000. It does not strike the Panel as plausible that Respondent was bullied or duped into offering the Domain Name for sale at a significant profit. Rather, the concept of exchanging it for a significant sum far in excess of registration expenses appears to have originated with Respondent, not Complainant.

Whether Respondent’s purpose in registering the Domain Name was "primarily" to offer it for sale, Policy ¶ 4(b)(i), is a closer question. Respondent did use the Domain Name to launch a web site, before being contacted by Complainant’s attorneys. However, Respondent subsequently offered to return the Domain Name to Complainant, in exchange for the domain name <providence.com> plus approximately $50,000. Thus, Respondent indicated his willingness, in principle, to post his web site at a different domain name. Respondent also asserts, in his Response, that there are at least 2028 registered trademarks incorporating the words "providence" and/or "journal." The plethora of such marks strongly suggests that Respondent could easily have chosen another domain name not confusingly similar to Complainant’s trademark (being careful, of course, not to infringe another’s rights in the process). The fact that Respondent chose the Domain Name knowing it to be a trademark (and former domain name) of Complainant – when Respondent otherwise states his willingness to use a different domain name (in exchange for substantial compensation) – suggests that his primary purpose in registering the Domain Name in the first instance was to sell it to Complainant.

The second illustration of bad faith in the Policy occurs when the registrant registers the domain name to prevent the trademark owner from reflecting the mark in a corresponding domain name, particularly when Respondent has engaged in a pattern of such conduct. Complainant appears to suggest such a pattern of conduct by Respondent when it observes that Respondent owns numerous other domain names such as <amiamijournal.com> and <ausajournal.com>. The complainant, however, has offered no evidence as to whether these other registrations infringe any trademarks. Accordingly, the Panel does not find bad faith based on this factor.

The third illustration of bad faith is registration "primarily for the purpose of disrupting the business of a competitor." On the facts of this case, there is insufficient evidence for the Panel to conclude that this was a primary purpose of Respondent. Accordingly, the Panel does not find this illustration applicable either.

The fourth illustration, use of the domain name in an effort to attract, for commercial gain, Internet users to a competing web site, does appear to be applicable here, since Respondent admits that the purpose of his site is for commercial gain and since the parties appear to be competitors in the sense that both provide news relating to Providence, Rhode Island. The fame and longstanding use by Complainant of its mark further supports the conclusion that Respondent’s use thereof is an opportunistic effort to trade on Complainant’s goodwill.

In sum, the Panel concludes that Respondent has registered and used the Domain Name in bad faith as defined in Paragraph 4(b) of the Policy, and in particular under illustration (iv), and possibly under illustration (i) as well (either of which independently would suffice to meet Complainant’s burden of proof).

Finally, the Panel rejects Respondent’s assertion that Complainant’s attorneys should be disqualified as "material witnesses." Under Rule 13 "[t]here shall be no in-person hearings … unless the Panel determines, in its sole discretion and as an exceptional matter, that such a hearing is necessary for deciding the complaint." Because this Panel finds a hearing unnecessary, there will be no "witnesses" in this proceeding at least in the sense of anyone providing live testimony. Nor do Complainant’s attorneys offer (or need to offer) testimony in written or other form as to any genuinely disputed fact issue. While it is true (as is often the case in proceedings under the Policy) that correspondence between Complainant’s attorneys and Respondent has been made a part of the record, there is no dispute as to the authenticity of this correspondence. Accordingly, no testimony by the attorneys or other parties to the correspondence is required. Moreover, even if Complainant’s attorneys were witnesses, the Respondent cites no provision of the Policy, Rules, or other governing authority that requires the disqualification of counsel for being a witness. For all these reasons, Respondent’s disqualification theory lacks merit.

In light of the above findings and analysis, the Panel decides that Complainant has met its burden of proving: (1) the Domain Name is confusingly similar to Complainant’s trademark; (2) Respondent has no rights and no legitimate interest in respect of the Domain Name; and (3) the Domain Name has been registered and is being used by Respondent in bad faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy and Rule 15, the Panel requires that the Domain Name be transferred to Complainant.