DECISION

Lee Enterprises, Inc. v. John Barry and Domain for Sale, Inc.

Claim Number:  FA0301000142045

PARTIES

Complainant is Lee Enterprises, Inc., Davenport, IA (“Complainant”) represented by Dana M. Craig, of Lane & Waterman. Respondent is John Barry and Domain for Sale, Inc., Bronx, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bismarktribune.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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 14, 2003; the Forum received a hard copy of the Complaint on January 17, 2003.

On January 21, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <bismarktribune.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 January 22, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 11, 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@bismarktribune.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 February 17, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (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 makes the following assertions:

1. Respondent’s <bismarktribune.com> domain name is confusingly similar to Complainant’s THE BISMARCK TRIBUNE mark.

2. Respondent does not have any rights or legitimate interests in the <bismarktribune.com> domain name.

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

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

FINDINGS

Complainant, Lee Enterprises, owns and publishes various newspapers throughout the United States.  In Bismarck, North Dakota, Complainant owns and operates a newspaper publishing division responsible for printing the daily newspaper entitled The Bismarck Tribune. Complainant’s The Bismarck Tribune newspaper has been published for over a century.

Complainant holds a North Dakota trademark registration for THE BISMARCK TRIBUNE indicating first use as 1873. The North Dakota trademark registration for THE BISMARCK TRIBUNE indicates that the mark is used in connection with goods in “prints and publications.”  Complainant also operates a website located at the <bismarcktribune.com> domain name.

Respondent, John Barry, registered the <bismarktribune.com> domain name on March 18, 2002.  Complainant’s investigation of Respondent indicates that the subject domain name redirects Internet users to a website located at <abortionismurder.org>, which displays graphic anti-abortion material.  Complainant’s submission also reveals that Respondent has exhibited a pattern of registering infringing domain names that redirect users to the <abortionismurder.org> domain name (e.g., Int’l Olympic Comm. v. Domain for Sale, FA 117893 (Nat. Arb. Forum Aug. 8, 2002) (requiring transfer of <olympiccommittee.com> to Complainant); The Field Museum of Natural History v. John Barry d/b/a Buy This Domain, FA 114354 (Nat. Arb. Forum May 24, 2002) (requiring transfer of <chicagofieldmuseum.com> to Complainant); and, Sears, Roebuck and Co. v. John Barry, FA 105210 (Nat. Arb. Forum March 4, 2002) (requiring transfer of <searsrobuck.com> and <searsdepartmentstore.com> to Complainant)).  Complainant notes that at least 29 “typopiracy” cases have been decided against Respondent since June 19, 2000.

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 and/or Confusingly Similar

Complainant has established rights in its THE BISMARCK TRIBUNE mark through registration with the North Dakota trademark authorities and continuous use of the mark to denote news-related services for over a century.

Respondent’s <bismarktribune.com> domain name is confusingly similar to Complainant’s THE BISMARCK TRIBUNE mark. Respondent’s domain name incorporates a common typographical error into Complainant’s mark, a deviation that fails to create distinguishing characteristics.  Further, Respondent’s second-level domain does not use the introductory word “the,” which also constitutes an inconsequential deviation. Respondent’s deliberate introduction of errors or changes does not change Respondent’s infringement on a trademark held by Complainant.  See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to Complainant’s STATE FARM mark).

Additionally, because a top-level domain is a required feature for a domain name and spaces are impermissible, their presence or absence is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant’s Submission establishes a legitimate prima facie case against Respondent, effectively shifting the burden to Respondent. Because Respondent failed to submit any materials in this proceeding, Complainant’s assertions are unopposed.  Therefore, it is proper for the Panel to accept all of Complainant’s reasonable inferences as true.  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 name, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); 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”).

Uncontested evidence indicates that Respondent is engaging in “typosquatting,” a concept that involves a respondent intentionally registering a typographical error of an established mark with the intent to capitalize on the confusion that results. Respondent’s domain name redirects unsuspecting Internet users to <abortionismurder.org>, a website that utilizes graphic images in an attempt to communicate a political message; thus, Respondent is tarnishing Complainant’s mark.  Respondent has a history of registering domain names that are misspellings of others’ trademarks and redirecting the domain names to anti-abortion websites.  Respondent’s pattern of unfair and misleading tactics is demonstrated by the litany of arbitration cases that have been successfully resolved against it.  Therefore, Respondent’s use fails to demonstrate rights or legitimate interests in the domain name under Policy ¶¶ 4(c)(i) or (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 Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).

There is no evidence before the Panel that suggests Respondent is commonly known by the <bismarktribune.com> domain name. As stated, the subject domain name resolves to another website located at <abortionismurder.org>.  Additionally, Complainant has used its THE BISMARCK TRIBUNE mark in connection with news-related services for over a century. Both of the aforementioned factors create a presumption that Respondent does not have rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii).  See Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Policy paragraph 4(b) represents a non-exhaustive listing of bad faith criteria.  When deciding whether Respondent registered and used the domain name in bad faith it is proper for the Panel to consider the “totality of circumstances” surrounding the dispute.  See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy do not constitute an exhaustive listing 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”).

Respondent’s bad faith registration is illustrated by its habitual registration of trademarks in infringing domain names despite knowledge of others’ rights in those marks. Complainant has published The Bismarck Tribune newspaper for over a century, and Respondent’s domain name deviates from the established mark by one letter.  The circumstances surrounding Respondent’s registration of the <bismarktribune.com> domain name permit the inference that Respondent was aware of Complainant’s rights in its THE BISMARCK TRIBUNE mark prior to seeking registration of the domain name. Respondent’s subsequent registration of the domain name, despite knowledge of Complainant’s rights, constitutes bad faith registration under Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also 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).

Complainant’s unrefuted evidence establishes that Respondent has habitually engaged in typosquatting.  This practice of typosquatting has been recognized as a bad faith use of a domain name under the UDRP. See e.g. Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (awarding <hewlitpackard.com> a misspelling of HEWLETT-PACKARD to Complainant); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (awarding <davemathewsband.com> and <davemattewsband.com>, common misspellings of DAVE MATTHEWS BAND to Complainant); see also L.L. Bean, Inc. v. Cupcake Patrol, FA 96504 (Nat. Arb. Forum Mar. 12, 2001) (finding that Respondent acted in bad faith by establishing a pattern of registering misspellings of famous trademarks and names).

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

DECISION

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

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

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  February 24, 2003

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