Generic Top Level Domain Name (gTLD) Decisions

DECISION

Lee Enterprises, Incorporated v. Peter Carrington a/k/a Party Night, Inc.

Claim Number: FA0212000135620

PARTIES

Complainant is Lee Enterprises, Inc., Davenport, IA, USA (“Complainant”) represented by Dana M. Craig, of Lane & Waterman.  Respondent is Peter Carrington a/k/a Party Night Inc., Amsterdam, THE NETHERLANDS (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <billinggazette.com>, registered with Key-Systems GmbH.

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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 5, 2002; the Forum received a hard copy of the Complaint on December 9, 2002.

On December 6, 2002, Key-Systems GmbH confirmed by e-mail to the Forum that the domain name <billinggazette.com> is registered with Key-Systems GmbH and that Respondent is the current registrant of the name.  Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 December 10, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 30, 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@billinggazette.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 January 7, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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’s submission asserts the following:

1.      Respondent’s <billinggazette.com> domain name is confusingly similar to Complainant’s registered BILLINGS GAZETTE mark.

2.      Respondent does not have any rights or legitimate interests in the disputed domain name.

3.      Respondent registered and used the disputed domain name in bad faith.

B.      Respondent failed to submit a Response.

FINDINGS

Complainant, Lee Enterprises, owns and publishes various newspapers across the United States. Complainant owns and operates a newspaper publishing division in Billings, Montana, which prints a daily newspaper entitled the Billings Gazette. The Billings Gazette has been published for over a century.

Complainant registered the BILLINGS GAZETTE mark as a trademark in the state of Montana on November 8, 1991 (Reg. No. T016776) and in Wyoming on May 3, 1993. Complainant also operates a website from the <billingsgazette.com> domain name.

Respondent registered the <billinggazette.com> domain name on May 1, 2002. Complainant’s investigation of Respondent’s use of the subject domain name indicates that once the <billinggazette.com> domain name is keyed into the Internet browser, Internet users are redirected to Respondent’s <hanky-panky-college.com> domain name and corresponding “adult-oriented” website.

Respondent has a history of purchasing domain name registrations that are misspellings of others’ websites or trademarks and redirecting the misspelled domain names to pornographic or other commercial websites. Complainant indicates that Respondent’s pattern of behavior has led to a “litany of arbitration cases which have been successfully resolved against it,” including, inter alia: TM Acquisition Corp. v. Carrington, FA 124850 (Nat. Arb. Forum Nov. 13, 2002) (requiring transfer of <centurey21.com>); Wachovia Corp. v. Carrington, D2002-0774 (WIPO Oct. 2, 2002) (requiring transfer of <wochovia.com> <wachvia.com> and <wachovai.com>).

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 rights in the BILLINGS GAZETTE mark through registration with the Montana and Wyoming trademark authorities, and continuous use of the mark in relation to its Billings Gazette newspaper for the past 100 years.

Respondent’s <billinggazette.com> domain name is confusingly similar to Complainant’s BILLINGS GAZETTE mark. Respondent’s subject domain name deviates from Complainant’s mark by one letter. Because spaces are a forbidden feature in domain names and top-level domains, such as “.com,” are a required characteristic, their absence or presence fails to create any distinguishing characteristics for a domain name. Internet users who are browsing the Internet for the Billings Gazette’s website may accidentally key in Respondent’s domain name since it represents a common typographical error. Thus, Respondent’s domain name is confusingly similar to Complainant’s mark. 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”); see also Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from Complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it).

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

Rights or Legitimate Interests

As stated, Respondent has failed to submit a Response to the Panel. Therefore, Complainant’s supported assertions have gone unopposed and unrefuted. Further, Respondent has failed to assert any evidence that would legitimize its registration and use of the <billinggazette.com> domain name. Because of the aforementioned circumstances, the Panel is permitted to accept all reasonable inferences made in the Complaint as true, unless clearly contradicted by the evidence. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); 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).

Uncontested evidence indicates that Respondent uses the infringing domain name to ensnare unsuspecting Internet users and divert interest to the <hanky-panky-college.com> adult website. Such opportunistic use of Complainant’s mark is unauthorized, and also tarnishes the goodwill and reputation Complainant has established in its BILLINGS GAZETTE mark. Respondent has demonstrated a pattern of registering infringing domain names with the intent to divert interest to its commercial and explicit website. Respondent’s use of the <billinggazette.com> domain name does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it qualify as a noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”).

Respondent has not submitted any evidence that would suggest it is commonly known by the <billinggazette.com> domain name. Additionally, Complainant has presented circumstances that indicate that Respondent habitually registers infringing domain names, inferring that Respondent does not have any legitimate connection with the domain name. Respondent’s diversionary use of the domain name supports Complainant’s assertion. Therefore, Respondent fails to establish rights in the domain name under 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 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 Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Complainant’s documentation of Respondent’s activities and use of the <billinggazette.com> domain name has revealed that Respondent uses a common typographical error in Complainant’s BILLINGS GAZETTE mark to capture unsuspecting Internet users. Upon keying Respondent’s domain name, Internet users are redirected to Respondent’s adult commercial website. Respondent is tarnishing Complainant’s mark by attempting to create a perceived connection between the Billings Gazette newspaper and Respondent’s sexually explicit website, and attempts to profit from this illegitimate relationship. Respondent’s opportunistic use of the domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the association of a confusingly similar domain name with a pornographic website can constitute bad faith); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).

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 should be hereby GRANTED.

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

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated: January 9, 2003

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