DECISION

John Fairfax Publications Pty Limited v. Pro-Life Domains Not for Sale

Claim Number: FA0311000213460

PARTIES

Complainant is John Fairfax Publications Pty Limited, 201 Sussex St., Sydney NSW 2000, Australia (“Complainant”). Respondent is Pro-Life Domains Not for Sale, 5444 Arlington Avenue, #g14, Bronx, NY 10471 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <thesydneymorningherald.com> registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on November 20, 2003; the Forum received a hard copy of the Complaint on November 21, 2003.

On November 21, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the Forum that the domain name <thesydneymorningherald.com> is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a 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 November 25, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 15, 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@thesydneymorningherald.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 December 23, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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 makes the following assertions:

1. Respondent’s <thesydneymorningherald.com> domain name is confusingly similar to Complainant’s SIDNEY MORNING HERALD mark.

2. Respondent does not have any rights or legitimate interests in the <thesydneymorningherald.com> domain name.

3. Respondent registered and used the <thesydneymorningherald.com> domain name in bad faith.

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

FINDINGS

Complainant publishes the newspaper The Sydney Morning Herald and also produces its affiliate daily news service at the <smh.com.au> domain name. Complainant owns an Australian trademark registration for the SYDNEY MORNING HERALD mark (Reg. No. 243,640 registered on November 3, 1970) in relation to printed matter, newspapers and periodicals, books, photographs, instructional and teaching material.

Respondent registered the <thesydneymorningherald.com> domain name on November 12, 2003. Respondent is using the disputed domain name to redirect Internet traffic to an anti-abortion website at the <abortionismurder.org> domain name. Complainant has detailed Respondent’s modus operandi of registering domain names confusingly similar to registered marks and using the domain names to redirect Internet traffic to an anti-abortion website at the <abortionismurder.org> domain name.

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 demonstrated its rights in the SYDNEY MORNING HERALD mark through its Australian trademark registration. 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 Respondent operates. It is sufficient that Complainant can demonstrate a mark in some jurisdiction; see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) holding that ICANN Policy ¶ 4(a)(i) does not require Complainant to demonstrate “exclusive rights”, but only that Complainant has a bona fide basis for making the Complaint in the first place.

Complainant contends that Respondent’s <thesydneymorningherald.com> domain name is confusingly similar to Complainant’s SYDNEY MORNING HERALD mark because the disputed domain name incorporates Complainant’s entire mark and simply adds the generic term “the” to the beginning of the mark. The addition of the article “the” does not significantly distinguish the domain name from the mark for purposes of Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term; see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied.

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not responded to the Complaint in this proceeding. Therefore, the Panel accepts as true all of Complainant’s reasonable allegations and inferences. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint; 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.

Furthermore, Respondent has failed to invoke any circumstances that could demonstrate rights to and legitimate interests in the <thesydneymorningherald.com> domain name. Once Complainant asserts a prima facie case, the burden shifts to Respondent to show that it has rights to and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). 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 Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) finding no rights or legitimate interests where Respondent fails to respond.

Respondent is using the <thesydneymorningherald.com> domain name to redirect Internet traffic to an anti-abortion website at the <abortionismurder.org> domain name. This use constitutes neither a bona fide offering of goods or services with regard to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name with regard to ¶ 4(c)(iii). See eBay Inc. v. Sunho Hong, D2000-1633 (WIPO Jan. 18, 2001) stating that the "use of complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use"; 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”.

Moreover, Respondent has proffered no proof and no evidence in the record suggests that Respondent is commonly known by THE SYDNEY MORNING HERALD or <thesydneymorningherald.com>. Accordingly, the Panel finds that Respondent has failed to demonstrate any rights to or legitimate interests in the disputed domain name pursuant to 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 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".

The Panel finds that Policy ¶ 4(a)(ii) has been established.

Registration and Use in Bad Faith

Respondent’s registration and use of the <thesydneymorningherald.com> domain name to redirect Internet traffic to an anti-abortion website at the <abortionismurder.org> domain name evidence Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii) because Respondent is capitalizing on the goodwill associated with Complainant’s mark to further Respondent’s political beliefs regarding a highly contentious issue. See Journal Gazette Co. v. Domain For Sale Inc. a/k/a Domain World, FA 12202 (Nat. Arb. Forum Oct. 9, 2002) finding “Respondent chose the domain name to increase the traffic flowing to the <abortionismurder.org> and <thetruthpage.com> websites”; see also McClatchy Mgmt. Servs., Inc. v. Please DON'T Kill Your Baby a/k/a William and Mark Purdy II, William S. Purdy, FA 153541 (Nat. Arb. Forum May 28, 2003) finding “[b]y 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”.

Furthermore, Complainant has detailed Respondent’s modus operandi of registering domain names confusingly similar to registered marks and using the domain names to redirect Internet traffic to an anti-abortion website at the <abortionismurder.org> domain name. The pattern of registering domain names confusingly similar to a trademark to prevent the owner of the trademark from reflecting its name in a domain name constitutes registration and use in bad faith pursuant to Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) finding that Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks; see also Australian Stock Exch. v. Cmty. Internet (Australia), D2000-1384 (WIPO Nov. 30, 2000) finding bad faith under Policy ¶ 4(b)(ii) where Respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses.

Accordingly, the Panel finds that Complainant has established Policy ¶ 4(a)(iii).

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 <thesydneymorningherald.com> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  January 6, 2004

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