DECISION

Lee Enterprises, Incorporated v. Polanski

Claim Number: FA0212000135619

PARTIES

Complainant is Lee Enterprises, Incorporated, Davenport, IA (“Complainant”) represented by Dana M. Craig, of Lane & Waterman.  Respondent is Polanski, Krakow, Poland (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <billingsgazzette.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 December 5, 2002; the Forum received a hard copy of the Complaint on December 9, 2002.

On December 12, 2002, Enom, Inc. confirmed by e-mail to the Forum that the domain name <billingsgazzette.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 December 16, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 6, 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@billingsgazzette.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 15, 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

1. Complainant argues that Respondent’s <billingsgazzette.com> domain name is confusingly similar to Complainant’s BILLINGS GAZETTE mark.

2. Complainant argues that Respondent does not have rights to or legitimate interests in the <billingsgazzette.com> domain name.

3. Complainant argues that Respondent registered and used the <billingsgazzette.com> domain name in bad faith.

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

FINDINGS

Complainant, Lee Enterprises Inc., is a Delaware corporation with its principal place of business in Davenport, Iowa. Complainant owns and operates various newspapers throughout the United States.  In Billings, Montana, Complainant owns the “Billings Gazette,” a daily newspaper, which it has published for over 100 years within Montana and Wyoming.

Complainant registered the BILLINGS GAZETTE trademark with the State of Montana on November 8, 1991 (Reg. No. 016776) and in Wyoming on May 3, 1993 (Reg. No. 281,813).  Complainant therefore owns the exclusive right to use the BILLINGS GAZETTE mark in Montana and Wyoming with regard to newspapers and newspaper services.

Complainant also operates a website that corresponds to the daily newspaper located at <billingsgazette.com>.

Respondent registered the <billingsgazzette.com> domain name on September 9, 2000.  Respondent’s <billingsgazzette.com> redirects Internet traffic to the commercial website <gotoo.com>, where Internet users encounter various pop-up windows advertising and providing links to online casino websites.

Respondent has a history of purchasing domain names that are misspellings of others’ websites or trademarks and redirecting the misspelled domain names to casino sites or other commercial websites that were unrelated to any legitimate purpose. 

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 state trademark officials, as well as continuous use of the mark in its publication of the “Billings Gazette” daily newspaper for over 100 years.  See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which a Respondent operates.  It is sufficient that a Complainant can demonstrate a mark in some jurisdiction).

Respondent’s <billingsgazzette.com> domain name is confusingly similar to Complainant’s BILLINGS GAZETTE mark.  Respondent’s domain name incorporates an obvious typographical error into Complainant’s BILLINGS GAZETTE mark.  More specifically, Respondent’s second-level domain inserts an extra “z” into Complainant’s mark.  An obvious misspelling of a famous and distinct mark fails to create a domain name capable of overcoming a claim of confusing similarity under Policy ¶ 4(a)(i).  See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to Complainant’s mark, ICQ); see also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to Complainant’s registered service mark, “Kelson”).

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

Rights or Legitimate Interests

Respondent did not respond to the Complaint that stated, inter alia, that Respondent lacks rights and legitimate interests in the <billingsgazzette.com> domain name.  Because Complainant’s evidence and arguments are unopposed, the Panel is permitted to accept all reasonable inferences made in the Complaint as true.  See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”);  see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence). 

Respondent’s <billingsgazzette.com> domain name has been used to link Internet users to the commercial website <gotoo.com>.  Respondent’s use and management of the domain name shows that it is intentionally capitalizing on Complainant’s mark to attract Internet traffic to another website, which has no relationship with Complainant.  Respondent’s conduct regarding the domain name does not represent a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).  See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks its use of the names was not in connection with the offering of goods or services or any other fair use); see also 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).

Respondent has submitted no evidence that it is “commonly known” by the <billingsgazzette.com> domain name.  Conversely, Complainant has submitted evidence establishing itself as the principal holder of all rights and legitimate interests in the BILLINGS GAZETTE mark.  Thus, the Panel accepts Complainant’s allegations that Respondent has no rights or legitimate interests to the domain name under Policy ¶ 4(c)(ii).  See Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of 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).

Complainant has sufficiently supported its allegation that Respondent is not engaging in a noncommercial or fair use manner of the disputed domain name under Policy ¶ 4(c)(iii).  Respondent intentionally misspelled the distinctive BILLINGS GAZETTE mark to benefit from the reputation and goodwill associated with Complainant’s mark.  Additionally, Respondent is diverting Internet traffic to a commercial website not associated with Complainant.  Neither of these circumstances lead the Panel to conclude that the <billingsgazzette.com> is being used in accord with Policy ¶ 4(c)(iii).  See Encyclopaedia Brittanica, 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); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s management of the <billingsgazzette.com> domain name illustrates bad faith registration and use under Policy ¶ 4(b)(iv).  Respondent is engaged in linking the disputed domain name to advertisements for gambling websites.  A finding for bad faith can be made under Policy ¶ 4(b)(iv) when one intentionally misdirects Internet traffic to either gambling pop-up advertisements or gambling websites.  See Mars, Inc. v. Double Down Magazine, D2000-1644 (WIPO Jan. 24, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked the domain name <marssmusic.com>, which is identical to Complainant’s mark, to a gambling website); see also Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (WIPO Sept. 6, 2000) (finding that the Respondent violated Policy ¶ 4(b)(iv) by using the domain name <britannnica.com> to hyperlink to a gambling site).

Respondent’s bad faith use of the domain name is also demonstrated by Respondent’s “typosquatting”.  By adding the letter “z” to the BILLINGS GAZETTE mark, Respondent incorporated a common typographical error into Complainant’s mark, causing Internet users who make a slight spelling or typing error to reach an unintended website.  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).

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

DECISION

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

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

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

Dated: January 22, 2003

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