DECISION

McClatchy Management Services, Inc. v. Please DON'T Kill Your Baby a/k/a William and Mark Purdy II, Willaim S. Purdy

Claim Number:  FA0304000153541

PARTIES

Complainant is McClatchy Management Services, Inc., Sacramento, CA (“Complainant”) represented by Ann Dunn Wessberg, of Faegre & Benson LLP. Respondent is Please DON'T Kill Your Baby a/k/a William and Mark Purdy II, William S. Purdy of South St. Paul, MN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <startribunes.com> and <startribunesays.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com and <startribuneknows.com>, registered with Go Daddy Software, Inc.

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 on April 1, 2003; the Forum received a hard copy of the Complaint on April 2, 2003.

On April 2, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.Com, confirmed by e-mail to the Forum that the domain names <startribunes.com> and <startribunesays.com> are registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com, and that Respondent is the current registrant of the names. On April 2, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <startribuneknows.com> is registered with Go Daddy Software, Inc., and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.Com and Go Daddy Software, Inc. verified that Respondent is bound by their respective registration agreements 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 April 8, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 28, 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@startribunes.com, postmaster@startribunesays.com, postmaster@startribuneknows.com by e-mail.

Having received no formal 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 May 14, 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 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain names registered by Respondent, <startribunes.com>, <startribunesays.com> and <startribuneknows.com>, are confusingly similar to Complainant’s STAR TRIBUNE mark.

2. Respondent has no rights or legitimate interests in the <startribunes.com>, <startribunesays.com> and <startribuneknows.com> domain names.

3. Respondent registered and used the <startribunes.com>, <startribunesays.com> and <startribuneknows.com> domain names in bad faith.

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

FINDINGS

Complainant, McClatchy Management Services, Inc., owns the STAR TRIBUNE mark (U.S. Reg. No. 1,495,070). This mark was registered on the Principal Register of the U.S. Patent and Trademark Office on July 5, 1988. Complainant uses the STAR TRIBUNE mark in connection with a daily newspaper for the Minneapolis-St. Paul area. In addition to its printed edition, Complainant provides news-related services online at the <startribune.com> domain name, and holds the STARTRIBUNE.COM mark (U.S. Reg. No. 2,249,689, registered on the Principal Register on June 1, 1999).

Respondent, Please DON'T Kill Your Baby a/k/a William and Mark Purdy II, William S. Purdy, registered the <startribunes.com> and <startribunesays.com> domain names on July 6, 2002. After receiving a cease-and-desist letter from Complainant, Respondent registered the <startribuneknows.com> domain name on July 14, 2002. Respondent is not licensed or authorized to use Complainant’s STAR TRIBUNE mark for any purpose.

Upon reaching the <startribunes.com> domain name, Internet users are shown content from the <abortioncams.com> website, which includes highly graphic images of dismembered, aborted fetuses. Similar content is posted for users reaching the <startribuneknows.com> domain name, although this content comes from the <abortionismurder.org> domain name. Upon reaching the <startribunesays.com> domain name, Internet users are subjected to content from the <babysave.com> domain name, which displays anti-abortion links.

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 will draw such inferences as the Panel 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 has established in this proceeding that it has rights in the STAR TRIBUNE mark through registration of the mark on the Principal Register of the U.S. Patent and Trademark Office, as well as through use of the mark in commerce.

Respondent’s <startribunes.com> domain name is confusingly similar to Complainant’s STAR TRIBUNE mark. It is well established that the elimination of the space between the words in a mark does not create a notable distinction between a mark and a domain name. Likewise, Respondent’s pluralization of Complainant’s mark is inconsequential for purposes of 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”); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to the end of Complainant’s mark, ‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation”).

Respondent’s <startribunesays.com> and <startribuneknows.com> domain names are also confusingly similar to Complainant’s STAR TRIBUNE mark. Both of these marks entirely incorporate Complainant’s mark, with the addition of a generic word that implies that Complainant endorses or somehow expresses itself through the domain name. The addition of these words fosters confusing similarity between the domain names and the mark. See Brambles Industries Ltd. v. Geelong Car Co. Pty. Ltd., trading as Geelong City Motors, D2000-1153 (WIPO Oct. 17, 2000) (finding the domain name <bramblesequipment.com> confusingly similar because the combination of the two words "brambles" and "equipment" in the domain name implies an association with Complainant’s business); see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).

Accordingly, the Panel finds that the <startribunes.com>, <startribunesays.com> and <startribuneknows.com> domain names are confusingly similar to Complainant’s STAR TRIBUNE mark under Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

Complainant carries the initial burden of demonstrating that Respondent has no rights or legitimate interests in the disputed domain name. Complainant is able to meet this burden by showing that Respondent would not be able to rely upon the examples of circumstances demonstrating rights or legitimate interests in a domain name listed in Policy ¶¶ 4(c)(i)-(iii). In making such a showing, Complainant establishes a prima facie case against Respondent, shifting the burden to Respondent. 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 a 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 each of the disputed domain names to redirect Internet users to content from anti-abortion websites. Two of the disputed domain names post graphic images of aborted fetuses while the other lists a series of links to other anti-abortion web pages. In each instance, Respondent entirely appropriates Complainant’s STAR TRIBUNE mark, and whether Respondent is actively tarnishing that mark with graphic imagery or simply taking advantage of the goodwill surrounding the mark to express its viewpoint, Respondent is not making a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii). See 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”); see also E. & J. Gallo Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug. 3, 2000) (finding that establishing a legitimate free speech/complaint site does not give rights to use a famous mark in its entirety).

No evidence before the Panel refutes Complainant’s allegation that Respondent is not “commonly known by” the disputed domain names or any variation of Complainant’s STAR TRIBUNE mark. Thus, Policy ¶ 4(c)(ii) does not apply to Respondent. 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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <startribunes.com>, <startribunesays.com> and <startribuneknows.com> domain names under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

In determining whether a domain name has been registered and used in bad faith, the Panel may look to Policy ¶ 4(b) for guidance. However, the Panel may also look to the totality of the circumstances surrounding Respondent’s registration and use of any disputed domain names in reaching its conclusion under Policy ¶ 4(a)(iii). See 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”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”).

In the present dispute, the Panel finds that the evidence supports an inferrence that Respondent registered the <startribunes.com> and <startribunesays.com> domain names with actual knowledge of Complainant’s rights in the Star Tribune mark. Respondent is domiciled in the Minneapolis-St. Paul area and it is highly unlikely that Respondent chose to use Complainant’s mark without any knowledge of that mark. Furthermore, Respondent’s registration of the <startribuneknows.com> domain name came after it had received a cease-and-desist letter from Complainant, which establishes to a legal certainty that Respondent knew it was infringing on Complainant’s mark with respect to this domain name. By intentionally taking advantage of the goodwill surrounding Complainant’s mark to further its own political agenda, Respondent registered the disputed domain names in bad faith. Respondent is using each of the domain names in a manner that tarnishes Complainant’s mark and gives the impression to Internet users that Complainant supports or condones the content at the disputed domain names. This amounts to bad faith use and registration of each of the disputed domain names. See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith where the Respondent was aware of Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).

The Panel thus finds that Respondent registered and used the <startribunes.com>, <startribunesays.com> and <startribuneknows.com> domain names in bad faith, and that Policy ¶ 4(a)(iii) is 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 <startribunes.com>, <startribunesays.com> and <startribuneknows.com> domain names be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: May 28, 2003.

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