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Generic Top Level Domain Name (gTLD) Decisions |
The Buffalo News, a Division of OBH, Inc.
and Columbia Insurance Company v. John Barry d/b/a Bronx Consumer, Inc. f/k/a
Domains or
Best Domains
Claim
Number: FA0302000146919
Complainant is
The Buffalo News, a Division of OBH, Inc. et. al., Buffalo, NY (“Complainant”)
represented by Joseph M. Finnerty, of Stenger & Finnerty.
Respondent is John Barry d/b/a Bronx Consumer, Inc. f/k/a Domains
or Best Domains, Bronx, NY (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <bufalonews.com>, registered with Enom,
Inc.
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 25, 2003; the
Forum received a hard copy of the
Complaint on February 26, 2003.
On
March 4, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name
<bufalonews.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
March 5, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
March 25, 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@bufalonews.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
March 28, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed James
A. Carmody, Esq., 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bufalonews.com>
domain name is confusingly similar to Complainant’s THE BUFFALO NEWS mark.
2. Respondent does not have any rights or
legitimate interests in the <bufalonews.com> domain name.
3. Respondent registered and used the <bufalonews.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, The
Buffalo News, a Division of OBH, Inc. and Columbia Insurance Company, holds
rights in the THE BUFFALO NEWS mark,
registered on the Principal Register of
the U.S. Patent and Trademark Office (“USPTO”) on December 23, 1980 (U.S. Reg.
No. 1,144,143).
Complainant operates a daily newspaper under the THE BUFFALO
NEWS mark, with a circulation area including the Buffalo Metropolitan
Statistical Area and portions of Ontario, Canada. Almost 750,000 people read
Complainant’s daily newspaper and nearly 900,000 people
read its Sunday
edition.
In addition to
its printed publication, Complainant has operated a website at
<buffalonews.com> since October of 1999. At this
website, the general
public has access to an electronic version of Complainant’s newspaper.
Respondent, John
Barry d/b/a Bronx Consumer, Inc. f/k/a Domains or Best Domains, registered the <bufalonews.com>
domain name on October 29, 2002, and is not licensed or authorized to use
Complainant’s THE BUFFALO NEWS mark for any purpose. Respondent
uses the domain
name to divert Internet traffic to an anti-abortion website at
<abortionismurder.com>, which includes graphic
pictures of an aborted
fetus.
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.
Complainant has
rights in the THE BUFFALO NEWS mark through registration on the Principal
Register of the USPTO and through use of
the mark in commerce.
Respondent’s <bufalonews.com>
domain name is confusingly similar
to Complainant’s THE BUFFALO NEWS
mark. Respondent deleted both the word “the” from Complainant’s mark and the
spaces between the words of the mark, but neither of
these deletions change the
fact that the dominant feature of the domain name remains the significant
portion of Complainant’s mark,
the phrase “Buffalo News.” 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 Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb.
Forum Jan. 16, 2001) (finding that the domain name
<wellness-international.com> is confusingly similar
to Complainant’s
“Wellness International Network”).
Respondent also deleted one “f” from the word BUFFALO. This cosmetic
deletion also fails to create a distinct mark capable of overcoming
Policy ¶
4(a)(i) analysis. See 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 the Complainant’s
STATE FARM
mark); see also Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002)
(finding that the domain name <compq.com> is confusingly similar
to Complainant’s COMPAQ mark because the omission of the letter “a” in the
domain
name does not significantly change the overall impression of the mark).
Accordingly, the
Panel finds that the <bufalonews.com> domain name is confusingly similar to Complainant’s THE BUFFALO
NEWS mark under Policy ¶ 4(a)(i).
Complainant
carries the initial burden of demonstrating that Respondent has no rights or
legitimate interests in the <bufalonews.com> domain name. Complainant can satisfy this
burden with a showing that Respondent is not capable of relying upon any of the
three enumerated
safe harbors for domain name Registrants in Policy ¶¶
4(c)(i)-(iii). 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 with
respect to the domain,
the burden shifts to Respondent to provide credible evidence that substantiates
its claim of rights and legitimate
interests in the domain name); see also
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding where Complainant has asserted that Respondent has no rights or
legitimate interests
with respect to the domain name it is incumbent on
Respondent to come forward with concrete evidence rebutting this assertion
because
this information is “uniquely within the knowledge and control of the
respondent”).
Respondent uses
the <bufalonews.com> domain
name to redirect Internet users seeking Complainant’s <buffalonews.com>
domain name to an anti-abortion website at <abortionismurder.com>.
Internet users seeking Complainant’s unbiased, neutral news-gathering service
are instead directed to a graphic website hosting highly
politicized content.
Using the goodwill surrounding Complainant’s mark for such a purpose is not a
bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i), nor is it
a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(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 Encyclopaedia Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO June
7, 2000) (finding that fair use does not apply where the domain names are
misspellings of Complainant's mark).
Respondent has not named itself BUFALO NEWS or <bufalonews.com> in its WHOIS contact information. Considering
that Respondent’s domain name is a simple misspelling of Complainant’s mark,
the Panel
finds that Respondent is not “commonly known by” the domain name
pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly
known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also MRA Holding, LLC
v. Costnet, FA 140454
(Nat. Arb. Forum Feb. 20, 2003) (noting that “the disputed domain name does not even correctly
spell a cognizable phrase” in finding that Respondent was not “commonly known
by”
the name GIRLS GON WILD or <girlsgonwild.com>).
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<bufalonews.com> domain
name under Policy ¶ 4(a)(ii).
In determining
whether a domain name was registered and used in bad faith, the Panel may look
to Policy paragraph 4(b) for guidance.
However, that list is not exhaustive,
but rather is meant to illustrate possible situations evidencing bad faith use
and registration
of a domain name. See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets
forth certain circumstances, without limitation,
that shall be evidence of
registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028
(WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy
is not an exhaustive list of bad faith
evidence).
In the current
dispute, Respondent registered a confusingly similar misspelling of
Complainant’s THE BUFFALO NEWS mark. In registering
a misspelling of a famous
mark, the Panel infers that Respondent had actual knowledge of the mark it
misspelled prior to registration
of the <bufalonews.com> domain name. Moreover, as Complainant’s
mark is registered on the Principal Register of the USPTO, and both parties are
domiciled in the U.S., the Panel finds that Respondent
had actual and
constructive knowledge of Complainant’s rights in the THE BUFFALO NEWS mark
prior to its infringing registration,
which amounts to bad faith registration. See
Orange Glo Int’l v. Jeff Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO,
a status
that confers constructive notice on those seeking to register or use
the mark or any confusingly similar variation thereof”); see also Nat’l
Ass’n of Prof’l Baseball Leagues v.
Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the
intentional misspelling of words with intent to intercept and siphon off
traffic from its intended destination, by preying on Internauts who make common
typing errors. Typosquatting is
inherently parasitic and of itself evidence of bad faith”).
Respondent’s
use of the disputed domain name to redirect Internet users to an anti-abortion
website at <abortionismurder.com>
evidences bad faith. Respondent’s
unauthorized use of Complainant’s mark to host such highly politicized and
graphic content tarnishes
the goodwill Complainant has developed for its mark. See
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); see also Household Int’l, Inc. v.
Cyntom Enter., FA 95784
(Nat. Arb. Forum Nov. 7, 2000) (“Just as the employment of a well-known
business name for no particularly good reason
undermines any claim to
legitimate interest, so it may also support an inference of a bad-faith attempt
to use the name to harass
or exploit its legitimate owner . . . Respondent, if
he ever was serious in the registration of this domain name, must have relied
on the good chance he would attract [Complainant’s] customers”).
The Panel thus
finds that Respondent registered and used the <bufalonews.com> domain name in bad faith, and that Policy ¶
4(a)(iii) is satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <bufalonews.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
March 31, 2003
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