DECISION

McClatchy Management Services, Inc. v. Please Don't KILL Your Baby, Inc. a/k/a William & Mark Purdy II

Claim Number:  FA0401000231684

PARTIES

Complainant is McClatchy Management Services, Inc. (“Complainant”), Sacramento, CA, represented by Ann Dunn Wessberg, of Faegre & Benson LLP, 2200 Wells Fargo Center, 90 South Seventh St., Minneapolis, MN 55402.  Respondent is Please Don't KILL Your Baby, Inc. a/k/a William & Mark Purdy (“Respondent”), 1312 Kassan Drive, South Saint Paul, MN 55075 and 1266 Kruse, West Saint Paul, MN 55118.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <startribunenewspaper.com>, registered with Computer Services Langenbach Gmbh d/b/a Joker.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.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 26, 2004; the Forum received a hard copy of the Complaint on January 26, 2004.

On January 27, 2004, Computer Services Langenbach Gmbh d/b/a Joker.com confirmed by e-mail to the Forum that the domain name <startribunenewspaper.com> is registered with Computer Services Langenbach Gmbh d/b/a Joker.com and that Respondent is the current registrant of the name. Computer Services Langenbach Gmbh d/b/a Joker.com has verified that Respondent is bound by the Computer Services Langenbach Gmbh d/b/a Joker.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 February 9, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 1, 2004 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@startribunenewspaper.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 March 11, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 <startribunenewspaper.com> domain name is confusingly similar to Complainant’s STAR TRIBUNE mark.

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

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

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

FINDINGS

Complainant McClatchy Management Services, Inc. owns and is responsible for protecting the brands used by the subsidiaries of its parent company, the McClatchy Company.  Complainant is wholy owned by various McClatchy Company subsidiaries. 

Complainant registered the mark STAR TRIBUNE (Reg. No. 1495070) with the United States Patent and Trademark Office (“USPTO”) on July 5, 1988.  Complainant asserts registration of the STARTRIBUNE.COM mark (Reg. No. 2249689). See 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 used the STAR TRIBUNE mark since as early as July 1, 1987 in connection with daily newspapers in the Minneapolis and St. Paul, Minnesota areas.  These newspapers also maintain an online presence at the <startribune.com> domain name website. 

Respondent registered the disputed domain name <startribunenewspaper.com> on August 14, 2003.  The domain name connected to the <savebaby.com> and <pleasedontkillyourbaby.com> domain names which are pro-life websites that display aborted babies in graphic detail.

In the past, Respondent has been required to transfer numerous domain names that infringed upon third-party registered marks. E.g. McClatchy Mgmt. Servs., Inc. v. Please Don’t KILL Your Baby, FA 153541 (Nat. Arb. Forum May 28, 2003); McClatchy Mgmt. Servs., Inc. v. Purdy & Please Don’t KILL Your Baby, Inc., FA 165944 (Nat. Arb. Forum Aug. 12, 2003); Faegre & Benson LLP v. Purdy, 2004 WL 167570 (D.Minn. 2004); Coca-Cola Co. v. Purdy, 2003 WL 202582 (D.Minn. 2003).

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 rights in the STAR TRIBUNE mark through registration with the USPTO and continuous use in commerce since 1987. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”).

The disputed domain name <startribunenewspaper.com> is confusingly similar to Complainant’s STAR TRIBUNE mark because the name incorporates the mark in its entirety and merely adds the term “newspaper,” which describes the product that Complainant’s provides. See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“The fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy.”); see also Magnum Piering, Inc. v. Mudjackers & Wilson, D2000-1525 (WIPO Jan. 29, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name); see also Am. Online, Inc. v. Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum April 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); 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).

Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has failed to respond to the Complaint; therefore, the Panel may interpret such an omission as an admission that Respondent lacks rights to and legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); 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); see also 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 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).

The WHOIS information for the disputed domain name registration lists Respondent’s organization as Please Don’t KILL Your Baby, Inc. and nothing in the record indicates that Respondent is commonly known by the domain name; thus, the Panel finds that Respondent is not commonly known by the domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a 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"); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Respondent is not using the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) because the confusingly similar name was selected for the purpose of causing confusion with Complainant’s mark in order to display content unrelated to Complainant’s business. 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 Am. Online, Inc. v. Tencent Communications 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 eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) ("[using] Complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use"); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that Respondent’s diversionary use of Complainant’s mark to attract Internet users to its own website was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).

Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent has a history of registering domain names that prevent the trademark holder from reflecting the mark in a corresponding domain name. In this case, Respondent registered the <startribunenewspaper.com> domain name, which wholly incorporates Complaiannt’s STAR TRIBUNE mark. Thus, Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(ii) by preventing Complainant from reflecting its mark in the disputed domain name. See Australian Stock Exch. v. Cmty. Internet, 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 businesses); see also Pep Boys Manny, Moe, & Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that, where Respondent registered many domain names, held them hostage, and prevented the owners from using them, the behavior constituted bad faith).

Furthermore, there is no indication in the record that Respondent’s motivation in registering the domain name was done in good faith.  In fact, it is to the contrary. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding bad faith where Respondent failed to provide evidence to controvert Complainant's allegation that Respondent registered the name in bad faith and any future use of the name would only cause confusion with Complainant’s mark); see also Kraft Foods v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (“[T]he fact that Respondent [chose] to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue.”).

Respondent’s address is located in Saint Paul, MN, the very area where the Complainant’s newspapers are distributed daily.  Therefore, since Respondent registered Complainant’s mark and even added the term “newspaper” to describe Complainant’s products that operate under the STAR TRIBUNE mark, Respondent had knowledge of Complainant’s rights in the mark and ignored them. Thus, the Panel finds that Respondent acted in bad faith. See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

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

James A. Carmody, Esq., Panelist

Dated:  March 19, 2004

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