DECISION

Associated Newspapers Limited v. Domain Manager

Claim Number:  FA0310000201976

PARTIES

Complainant is Associated Newspapers Limited, London, United Kingdom (“Complainant”) represented by Adam Taylor of Adlex Solicitors, 22 Belsize Park Gardens, London, England, NW3 4LH.  Respondent is Domain Manager, Northumberland, United Kingdom (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mailonsunday.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically October 9, 2003; the Forum received a hard copy of the Complaint October 9, 2003.

On October 10, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed by e-mail to the Forum that the domain name <mailonsunday.com> is registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.Com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.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 October 13, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 3, 2003, 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@mailonsunday.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 November 6, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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 makes the following assertions:

1. The domain name registered by Respondent, <mailonsunday.com>, is confusingly similar to Complainant’s THE MAIL ON SUNDAY mark.

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

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

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is the publisher of “The Mail on Sunday,” a national newspaper in the United Kingdom.  The newspaper was launched in 1982 and from February to July of 2003, its average circulation totaled 2.3 million per issue.  The newspaper has become the second highest-selling national Sunday newspaper in the United Kingdom. 

Complainant registered the mark, THE MAIL ON SUNDAY, in the United Kingdom on September 5, 1984 (Registration Numbers 1218343 and 1218344) and has used the mark in commerce since 1982.  Complainant’s subsidiary, Associated Mediabase Limited, registered the <mailonsunday.co.uk> domain name in 1995. 

Respondent registered the <mailonsunday.com> domain name March 19, 1999.  From 1999[1] until July 2003 the domain name resolved to the website <firstsites.com/newspapers.html>, which provided links to several newspapers, including Complainant’s website, and provided paying affiliate links to third party websites.  Currently the domain name does not resolve to a website. 

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 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 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 to and/or Confusingly Similar

Complainant established in this proceeding that it has rights in the mark, THE MAIL ON SUNDAY, through its registration (Registration Numbers 1218343 and 1218344) and by Complainant’s use of the mark in commerce since 1982.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).

The domain name registered by Respondent, <mailonsunday.com>, is confusingly similar to Complainant’s mark because it merely omits the word “the” from the mark and adds the generic top-level domain “.com” to the mark.  The omission of the word “the” and the addition of “.com” is insufficient to circumvent the Panel from finding the domain name confusingly similar to Complainant’s mark.  See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to Complainant’s “Asprey & Garrard” and “Miss Asprey” marks); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants").

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

Rights to or Legitimate Interests

Due to Respondent’s failure to contest the allegations of the Complaint, the Panel may conclude that Respondent lacks rights or legitimate interests in the domain name.  See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent failed to invoke any circumstance that could demonstrate any rights or 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, Respondent was not authorized nor licensed to register or use a domain name that incorporates Complainant’s mark.  The WHOIS information lists Respondent as the registrant of the domain name but fails to establish that Respondent is commonly known by the domain name.  Therefore, the Panel concludes that Respondent lacks rights or legitimate interests in the <mailonsunday.com> domain name pursuant to Policy ¶ 4(c)(ii).  See 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); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

In addition, Respondent’s prior use of the misleading domain name to resolve to a website that provides links to Complainant’s competitors and presumably produces “pay-per-click” revenue for Respondent is evidence that the domain name was not used to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that Respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to Complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no “bona fide” offering of goods or services where Respondent used Complainant’s mark without authorization to attract Internet users to its website, which offered both Complainant’s products and those of Complainant’s competitors).

The Panel notes that since Respondent registered the domain name in 1999 and used it from 1999 until Complainant wrote a cease and desist letter July 8, 2003, Respondent might have persuaded the Panel that a bona fide use had been made of the domain name such as would establish rights.  However, Respondent did not take the time to appear in this proceeding and provide support for some right to use the mark in a domain name and the Panel has taken Complainant’s allegations as true and made such inferences as were necessary under the evidence produced.

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

Registration and Use in Bad Faith

It may be inferred that Respondent had actual or constructive knowledge of Complainant’s mark because the mark is registered and used in commerce within Respondent’s country of residence.  The <mailonsunday.com> domain name provides a link to Complainant’s website, thus establishing that Respondent knew of Complainant and Complainant’s rights in the mark.  Registration of a domain name, despite knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between Complainant’s mark and the content advertised on Respondent’s website was obvious, Respondent “must have known about the Complainant’s mark when it registered the subject domain name”).

Furthermore, Respondent’s prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant’s competitors and Respondent presumably commercially benefited from the misleading domain name by receiving “click-through-fees.”  See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site).

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 relief shall be GRANTED.

Accordingly, it is Ordered that the <mailonsunday.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: November 19, 2003.

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[1] Complainant cited this date as 1993, referring to Exhibit 5; however, based on the Exhibit, the date should have been 1999.

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