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Cleveland Newspapers, Inc. v. Local Services ICN [2004] GENDND 1178 (28 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cleveland Newspapers, Inc. v. Local Services ICN

Case No. D2004-0634

1. The Parties

The Complainant is Cleveland Newspapers, Inc., of Birmingham, Alabama, United States of America, represented by Bradley Arant Rose & White LLP of Birmingham, Alabama, United States of America.

The Respondent is Local Services ICN, of Hong Kong, SAR of China. The Respondent is not represented.

2. The Domain Name and Registrar

The disputed domain name <bolivarcommercial.com> is registered with Fabulous.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2004. On August 16, 2004, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On August 19, 2004, Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 19, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 8, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2004.

The Center appointed the Honourable Sir Ian Barker Q.C. as the Sole Panelist in this matter on September 22, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The mark THE BOLIVAR COMMERCIAL has been used by the Complainant and its predecessors to identify newspaper goods and services since 1916. Since 1998, the Complainant has offered news services on the Internet using the service mark THE BOLIVAR COMMERCIAL.

The Complainant (or its predecessors) has used the mark THE BOLIVAR COMMERCIAL continuously as a trademark and service mark since 1916. It has spent hundreds of thousands of dollars in advertising and promoting its newspaper and news services under the mark THE BOLIVAR COMMERCIAL.

The Complainant has never licensed or otherwise authorized the Respondent to use its marks THE BOLIVAR COMMERCIAL or BOLIVAR COMMERCIAL either in domain names or otherwise.

On May 15, 2002, the Respondent registered the disputed domain name. Respondent has renewed the registration at least once, most recently on April 15, 2004.

The Respondent operates a commercial information or directory service at the website accessed by the disputed domain name. This website displays pop-up screens and advertisements. It has a link to a pay-by-referral site. There are also link buttons for ‘Domain Registration’, ‘Domain Sales’, ‘Advertise with us’ and ‘Affiliate Program’.

On July 26, 2004, after being apprised of the Complainant’s rights, the Respondent demanded the sum of US$10,000 for the transfer of the disputed domain name.

The above factual matters are taken from the information supplied by the Complainant. The Respondent has not filed any Response to challenge these factual matters.

5. Parties Submissions

A. Complainant

Identical or Confusingly Similar

The disputed domain name is identical to the Complainant’s common law trademark.

As a result of its substantial and continuous use of the service mark THE BOLIVAR COMMERCIAL, both in print newspapers and on the Internet, the Complainant owns substantial common law trademark rights in the mark THE BOLIVAR COMMERCIAL. It has sold and advertised goods and services using THE BOLIVAR COMMERCIAL mark in the United States. The mark THE BOLIVAR COMMERCIAL has become associated with the Complainant and its goods and services. It operates in the minds of consumers as a reliable indicator of the source of the goods and services offered under that mark. THE BOLIVAR COMMERCIAL newspaper and website is well-known in the Southeastern of the United States of America.

Common law rights generated through long, continuous, and exclusive use are sufficient to establish rights in the name and mark THE BOLIVAR COMMERCIAL. See United Drug Co. v. Theodor Rectanus Co., [1918] USSC 182; 248 U.S. 90 (1918) (under United States law the right to use a trademark “grows out of its use”). “It is well established under the Policy that the concept of rights in a trademark do not necessarily mean a complainant must own a registered trademark. Common law rights may be sufficient to support a domain name complaint under the Policy.” Gannett Co., Inc. v. Henry Chan, WIPO Case No. D2004-0117 (April 8, 2004) (recognizing rights in newspaper names including THE BURLINGTON FREE PRESS, THE ARIZONA REPUBLIC and others where there were no United States federal trademark registrations); see also Brooklyn Institute of Arts and Sciences v. Fantastic Sites, Inc., National Arbitration Forum Case No. FA 95560 (November 2, 2000) (same); The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 (July 1, 2003) (finding enforceable rights under Tennessee state law and United States federal law in the unregistered mark THE COMMERCIAL APPEAL to identify a local newspaper).

The Complainant thus has enforceable rights in the mark THE BOLIVAR COMMERCIAL.

Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in the disputed domain name.

The Respondent has never used nor been commonly known under, and has no bona fide intent to use or be commonly known under the name “BOLIVAR COMMERCIAL” or any term or phrase including “BOLIVAR COMMERCIAL” as part of its name, service mark, or trademark. The registration information provided to the Registrar by Respondent identifies its business name as “Local Services ICN”, which is a further indication that the Respondent is not known by the domain name. See Tercent Inc. v. Yi, National Arbitration Forum, Case No. FA96209 (January 23, 2001) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as a factor in determining that Policy paragraph 4(c)(ii) does not apply).

The Respondent does not now, never has, has not prepared to, and has no intent to provide, use, sell, offer for sale, or solicit any goods or services in a bona fide manner in connection with the mark BOLIVAR COMMERCIAL or any term or phrase including BOLIVAR COMMERCIAL except in connection with the registration and offer for sale of the Domain Name.

The Respondent’s first use of the phrase BOLIVAR COMMERCIAL was in Respondent’s application for registration of the Domain Name on or about May 15, 2002, long after Complainant’s first use.

The Respondent is using the disputed domain name merely to offer directory services. “Using someone else’s mark to offer directory services is not a bona fide offering of goods or services, pursuant to Policy paragraph 4(c)(i), nor a legitimate noncommercial or fair use of the domain name pursuant to Policy paragraph 4(c)(iii).” The Napoleon Hill Foundation v. Local Services ICN, National Arbitration Forum, Case No. FA0403000245920 (April 27, 2004).

The Respondent is not making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain, misleadingly to divert consumers or to tarnish the BOLIVAR COMMERCIAL mark. To the contrary, Respondent’s use of the domain name in connection with a site that provides links to domain registration, domain sales, advertising, an affiliate program, and which subjects the user to numerous “pop-up” advertisements, are means for the Respondent to derive revenue or otherwise obtain financial benefit.

Bad Faith

The Respondent has registered the Domain Name in bad faith and is using the Domain Name in bad faith by posting a web page at that URL. The Respondent’s practice of using the domain name for the purpose of diverting users to an unrelated Internet site is classic bad faith. The Respondent has used the name intentionally. After notice from the Complainant of its rights, The Respondent has continued to use the name intentionally and willfully to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark.

The Respondent was aware of the existence of THE BOLIVAR COMMERCIAL mark prior to the Respondent’s first use of the phrase “BOLIVARCOMMERCIAL” and prior to its registration of the Domain Name. It is appropriate to infer bad faith and notice where the Respondent registered a domain name identical to the Complainant’s mark and offered a service that had nothing to do with the Complainant. See The Napoleon Hill Foundation v. Local Services ICN, National Arbitration Forum, Case No. FA0403000245920 (April 27, 2004).

Respondent has registered or acquired the Domain Name primarily for the purpose of intentionally deriving revenue from persons seeking goods or services of the Complainant or selling the Domain Name to either the Complainant or to another entity for valuable consideration in excess of Respondent’s out-of-pocket cost, directly related to the Domain Name. After being apprised of the Complainant’s rights in the mark THE BOLIVAR COMMERCIAL, Respondent demanded the sum of US$10,000 to sell the domain name to the Complainant.

The Respondent has registered the disputed Domain Name in order to sell it to persons already having trademark ownership of THE BOLIVAR COMMERCIAL, knowing that by registering the Domain Name, the Respondent will prevent the owner of THE BOLIVAR COMMERCIAL mark from reflecting the mark in a corresponding domain name.

The Respondent has engaged in a pattern of registering domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, as evidenced by the Respondent’s conduct as outlined in Society for Human Resource Management v. Local Services ICN, (WIPO Case No. D2004-0127 (April 7, 2004)) (dispute involving domain name <hrmagazine.com> where the Complainant published HR Magazine), and in The Napoleon Hill Foundation v. Local Services ICN, National Arbitration Forum. Case No. FA0403000245920 (April 27, 2004) (dispute involving domain name <napoleonhill.com>).

B. Respondent

The Respondent has filed no response and has made no submissions.

6. Discussions and Findings

Paragraph 15(a) of the Rules instructs the 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.”

The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:

- that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- that the Respondent has no legitimate rights or interests in respect of the domain name; and

- that the domain name has been registered and is being used in bad faith.

Identical or Confusingly Similar

The disputed domain name, other than the gTLD and the definite article, is identical to the mark in which the Complainant has rights. The Complainant has clearly established a common law trademark by means of the continuous use of the mark as the name of its newspaper since 1916. Common law trademarks have frequently been recognized in numerous decisions under the UDRP as being sufficient to justify the invocation of the UDRP by a Complainant.

Rights or Legitimate Interests

The Complainant gave the Respondent no legitimate rights or interest in respect of the disputed domain name. The fact, on its own, is usually sufficient to prove the second criterion. Paragraph 4(c) of the Policy sets out matters which a Respondent is entitled to raise which, if found by a Panel to be proved after an evaluation of all evidence presented, could demonstrate a Respondent’s rights or legitimate interests to a domain name. None of these has been demonstrated, let alone raised. The second criterion is therefore proved.

Bad Faith

Likewise, bad faith is demonstrated by the Respondent’s ongoing use of the disputed domain name for the reasons outlined in the Complainant’s submissions. The website operated under the disputed domain name is clearly operated by the Respondent for commercial gain. The Respondent’s demand of US$10,000 for the transfer of the name is clear evidence of its continuing bad faith.

Bad faith registration can be inferred from the fact that the Respondent chose to register a distinctive name that had been used by a newspaper for 48 years. This is not a case of registration of a generic name but of a very distinctive name which suggests that Respondent must have known of the Complainant’s rights to the name at the date of registration, even although the parties lived in different countries and there was no evidence of the Complainant’s newspaper being known in Hong Kong. Bad faith registration can also be inferred from the Respondent’s willingness to sell the disputed domain name for a large profit.

This is a classic case of cybersquatting and all criteria under the Policy have been proved.

7. Decision

For the foregoing reasons, the Panel decides:

(a) That the domain name <bolivarcommercial.com> is confusingly similar to the trademark in which the Complainant has rights; and

(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and

(c) That the domain name has been registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <bolivarcommercial.com> be transferred to the Complainant.

Hon. Sir Ian Barker QC
Sole Panelist

Dated: September 28, 2004