DECISION

K.R. USA, INC. v. SO SO DOMAINS

Claim Number:  FA0308000180624

PARTIES

Complainant is K.R. USA, INC., San Jose, CA (“Complainant”) represented by Ian C. Ballon, of Manatt, Phelps & Phillips, LLP.  Respondent is So So Domains, Bronx, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are  <philadelphiaenquirer.com> and <tallahassedemocrat.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com (hereinafter “Directnic.Com”).

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 August 5, 2003; the Forum received a hard copy of the Complaint on August 8, 2003.

On August 6, 2003, Directnic.Com confirmed by e-mail to the Forum that the domain names <philadelphiaenquirer.com> and <tallahassedemocrat.com> are registered with Directnic.Com and that Respondent is the current registrant of the names. Directnic.Com has verified that Respondent is bound by the Directnic.Com 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 August 15, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 4, 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@philadelphiaenquirer.com and postmaster@tallahassedemocrat.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 September 15, 2003, 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names are confusingly similar to Complainant’s THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks.

2. Respondent does not have any rights or legitimate interests in the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names.

3. Respondent registered and used the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names in bad faith.

B.  Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant K.R. USA is a subsidiary of Knight-Ridder, Inc., a media company primarily engaged in newspaper and Internet publishing.  Among Knight-Ridder’s publications are The Philadelphia Inquirer and the Tallahassee Democrat.  The THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks have been used in association with the newspapers since 1889 and 1949, respectively. Both of the marks are registered on the Principal Register of the United States Patent and Trademark Office; THE PHILADELPHIA INQUIRER is registered as Reg. No. 270,787 and TALLAHASSEE DEMOCRAT is registered as Reg. No. 2,100,946. 

Respondent registered the <philadelphiaenquirer.com> domain name on April 14, 2002 and the <tallahassedemocrat.com> domain name on February 8, 2002.  Since that time, the names have been used to redirect Internet users to an anti-abortion website, an online pharmacy site, and a web page offering the domain names for sale for $985 each.

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 its rights in the THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks through registration of the marks and continuous use in commerce for several decades.  See Orange Glo Int’l v. 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”).

Each of the domain names is confusingly similar to one of Complainant’s marks, as each incorporates only a minor misspelling into the mark and one drops the word “the” from the mark.  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 Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark); see also Buffalo News v. Barry d/b/a Bronx Consumer, Inc. f/k/a Domains or Best Domains, FA 146919 (Nat. Arb. Forum Mar. 21, 2003) (finding Respondent’s <bufalonews.com> domain name confusingly similar to Complainant’s THE BUFFALO NEWS mark).

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

Rights or Legitimate Interests

Complainant has alleged, without argument from Respondent, that Respondent has no rights or legitimate interests in the disputed domain names.  Given Respondent’s failure to contest this allegation, the Panel may accept it 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 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”).

Complainant has provided solid evidence that Respondent is a reseller of domain name registrations, particularly involving domain names that infringe on the trademark rights of others.  The attempted sale of a domain name registration that incorporates confusingly similar variations of another’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).  See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).  Furthermore, by the commercial nature of the attempted sale, Respondent has not demonstrated a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).

Respondent has also used the disputed domain names to redirect Internet users seeking Complainant’s online publications to an anti-abortion website.  While the content of Respondent’s website may be entitled to free-speech protections, the use of misleading domain names to divert unsuspecting Internet users to Respondent’s site is not.  See Journal Gazette Co. v. Domain For Sale Inc. a/k/a Domain World, FA 12202 (Nat. Arb. Forum Oct. 9, 2002) (finding no rights or legitimate interests where Respondent redirected users from the <fortwaynejournalgazette.com> domain name to <abortionismurder.org> and <thetruthpage.com>).

It appears that Respondent’s primary purpose in redirecting users seeking Complainant’s publications to the abortion-related websites has been to extort payment from Complainant in exchange for the domain names.  Just as this will not establish rights or interests in Respondent, neither will Respondent’s use of the domain names to redirect users to online pharmacy websites.  Such use misappropriates Complainant’s goodwill and smacks of improper opportunism.  See Am. Nat’l Red Cross v. Domains a/k/a Best Domains a/k/a John Barry, FA 143684 (Nat. Arb. Forum March 4, 2003) (finding no rights or legitimate interests where Respondent registered and used the disputed domain names to redirect users to anti-abortion and online pharmacy websites).

The Panel finds that Respondent has no rights or legitimate interests in either of the disputed domain names and, thus, Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent has registered two domain names confusingly similar to Complainant’s marks in order to exact compensation from Complainant, well beyond Respondent’s out-of-pocket costs related to the registration of the domain names.  Such behavior typifies bad faith registration and use as defined in Policy ¶ 4(b)(i).  See Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith); see also World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).

Furthermore, the very practice of typosquatting, in which Respondent has engaged, has been deemed behavior in bad faith.  See 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”); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“in typosquatting cases, such as this one, it would be difficult for Respondent to prove to the Panel that it did not have actual knowledge of Complainant’s distinctive MEDLINE mark when it registered the infringing <wwwmedline.com> domain name”).

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 concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names be TRANSFERRED from Respondent to Complainant.

                                                Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated: September 18, 2003

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