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Media West-PNI, Inc. and Phoenix Newspapers, Inc. v. Bruce Watson [2005] GENDND 15 (29 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Media West-PNI, Inc. and Phoenix Newspapers, Inc. v. Bruce Watson

Case No. D2004-0974

1. The Parties

The Complainants are Media West-PNI, Inc., Reno, Nevada, United States of America and Phoenix Newspapers, Inc., Phoenix, Arizona, United States of America, both represented by Dow, Lohnes & Albertson, PLLC, United States of America.

The Respondent is Bruce Watson, Glendale, Arizona, United States of America.

2. The Domain Name and Registrar

The disputed domain name <theazrepublic.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2004. On November 19, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On November 19, 2004, Go Daddy Software 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, billing, 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 December 3, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2004.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on January 5, 2005. 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.

On January 28, 2005, the Center notified the parties that the date by which the Panel was required to forward its decision to the Center had been extended to January 31, 2005.

4. Factual Background

As Respondent failed to respond to the Complaint, the following facts asserted by Complainants and supported by documents attached to the Complaint are undisputed.

Complainant Phoenix Newspapers, Inc., headquartered in Phoenix, Arizona, is the owner and publisher of The Arizona Republic newspaper and the associated website located at <arizonarepublic.com>. Complainant Media West-PNI, Inc., with offices in Reno, Nevada, is a subsidiary of Complainant Phoenix Newspapers, Inc. that owns and manages the various marks, including THE ARIZONA REPUBLIC, that are used under license by the newspaper businesses operated by Phoenix Newspapers, Inc.

The Arizona Republic is a daily newspaper that has used THE ARIZONA REPUBLIC mark since 1930. It is the largest newspaper in Arizona and one of the largest daily newspapers in the United States, with a circulation of nearly half a million readers.

Complainant Phoenix Newpapers, Inc. has published the online version of The Arizona Republic, using the domain names <arizonarepublic.com> and <azcentral.com>, since 1997, featuring the same masthead design that is used for the print edition of the newspaper. Complainant Media West-PNI, Inc. has registered numerous other similar domain names, as evidenced by WHOIS search results, including <azrepublic.com> (since 1999) and <thearizonarepublic.com> (since 2002), preceding the first registration by Respondent of the Domain Name at issue.

Complainant Media West-PNI, Inc. owns a United States trademark registration for THE ARIZONA REPUBLIC (registered in 1998 and amended from ARIZONA REPUBLIC in 2004), as well as an Arizona State trade name registration for THE ARIZONA REPUBLIC issued in 1997. The US federal trademark is registered in Class 16 for “printed matter, namely, newspapers for general circulation.”

Complainant has invested substantial resources to operate and promote The Arizona Republic newspaper over the last 75 years, and the associated website over the last 8 years, using THE ARIZONA REPUBLIC mark.

In December 2003, Respondent registered <theazrepublic.com> (“Domain Name”) with the Go Daddy domain name registrar. Complainants assert, without contradiction, that this was done without the authorization, knowledge, or consent of Complainants, and that Respondent was never licensed to use the mark THE ARIZONA REPUBLIC “or any variation thereof” (Complaint at 6).

Currently, the Domain Name does not resolve to any website. According to the undisputed assertions of the Complaint and attached copies of screen shots dated in September and November 2004, the URL for the Domain Name previously redirected visitors to the Victory Policy Center website at “www.vpcenter.org”, a website devoted to news and political commentary and featuring links to websites operated by third-party political, journalistic, and commercial organizations, the latter predominantly gun sellers and sponsors of gun shows.

The Panel notes that the WHOIS database shows that <vpcenter.org> is registered (also by Go Daddy) to “Americans for Gun Rights,” with contact information given as “Bruce W” at the same postal and email addresses as are listed for Respondent Bruce Watson in the registration for <theazrepublic.com>.

Screen shots from September and October 2004 show that <vpcenter.org> displayed a link at that time for “TheArizonaRepublic.com,” which linked not to Complainant’s website at “www.thearizonarepublic.com” but rather to another page on the “www.vpcenter.org” website headed “THE AZ REPUBLIC.COM.” That page expressly refers to Complainants’ newspaper, The Arizona Republic, and highlights the statement that “WE, NOT THEM ARE THE ‘OFFICIAL’ PAPER OF ARIZONA Online or Otherwise.” The page calls “Reeves” a “trash bag reported [sic] with no dignity or respect” (Mr. Reaves is a reporter for The Arizona Republic) and includes the reporter’s work and mobile telephone numbers so that readers “can tell him what you think.”

5. Parties’ Contentions

A. Complainants

Complainants argue that Complainant Media West-PNI, Inc. owns the long-established mark THE ARIZONA REPUBLIC and that the Domain Name is confusingly similar to this mark, differing only in using the postal abbreviation rather than the full name for the State of Arizona.

Complainants assert that Respondent was never licensed or otherwise authorized to use the mark or any variation thereof. Complainants cite WIPO decisions concluding that a respondent has no right or legitimate interest in an identical or confusingly similar domain name where it has not been authorized to use the pre-existing mark.

Examining the three (nonexclusive) possible justifications for a respondent’s use of an identical or confusingly similar domain name found in Paragraph 4(c) of the Policy, Complainants argue that none of them could apply in this instance. They cite WIPO decisions holding that a domain name that deceptively misdirects users is not used “in connection with a bona fide offering of goods or services” (Policy, Paragraph 4(c)(i)). To the contrary, the site may have tarnished the reputation of the Complainants’ mark and redirected users to other commercial sites linked from the site to which the Domain Name resolved.

Complainants reject the possibility that Respondent could establish rights in the Domain Name under Paragraph 4(c)(ii) of the Policy, because there is no evidence that Respondent has been “commonly known” by that name as an individual, business, or organization.

Complainants also contend that Respondent could not be making a “legitimate non-commercial or fair use” of the Domain Name, “without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue,” under Paragraph 4(c)(iii) of the Policy. Complainants argue that the association of THE ARIZONA REPUBLIC mark with the Domain Name (and the use of “The Arizona Republic.Com” as a link on the page to which the Domain Name resolved) tarnishes the mark, because of the “extreme partisan viewpoint” expressed on the Victory Policy Center website to which users were redirected. They argue further that the diversion of Internet users seeking the online version of The Arizona Republic impacts Complainants’ business, and that Respondent likely profited from this diversion by selling space for the commercial links found on the Victory Policy Center website.

Perhaps most importantly, Complainants address the issue of whether a page formerly found under the heading “THE AZ REPUBLIC.COM,” which criticizes The Arizona Republic and one of its reporters, is evidence of “legitimate non-commercial or fair use” of the Domain Name. Complainants cite cases, discussed further below, that outline the circumstances under which websites expressing protected opinions may still be found to have illegitimately diverted users with a misleading domain name.

Finally, Complainants urge the Panel to find that the Domain Name was registered and used in bad faith. Complainants’ use of the mark THE ARIZONA REPUBLIC was long established and well known before Respondent registered the Domain Name, and Complainants argue that Respondent had actual or constructive knowledge of the mark and infer that Respondent used the similar Domain Name to confuse visitors and divert traffic to the Victory Policy Center website and the companies and organizations advertised and linked on that website. Respondent “presumably” received compensation for those commercial links, while tarnishing the good name of The Arizona Republic. Complainants also cite cases holding that the use of a domain name likely to cause “initial interest confusion” among users constitutes bad faith, even without commercial gain.

Accordingly, Complainants request the Panel to order that the Domain Name be transferred to Complainant Media West-PNI, Inc.

B. Respondent

The Respondent did not reply to the Complainants’ contentions, despite being notified at the postal and electronic addresses provided by Respondent to the Registrar. Under Paragraph 14(b) of the Rules, the Panel may draw such inferences as it deems “appropriate” from Respondent’s failure to comply with the Center’s request for a response.

6. Discussion and Findings

In order to divest Respondent of the Domain Name, Complainant must demonstrate each of the following:

- The Domain Name is identical or confusingly similar to Complainant’s mark; and

- Respondent has no rights or legitimate interests in the Domain Name; and

- The Domain Name has been registered and is being used in bad faith.

(Policy, Paragraph 4(a)).

As in other cases where a respondent fails to reply, the Panel must still satisfy itself that Complainants have met their burden of proof under Paragraph 4 of the Policy. Thus, the uncontested facts (along with any “appropriate” inferences from the respondent’s silence) must provide a sufficient basis for finding confusing similarity to a protected mark and for inferring that, more probably than not, the respondent has no right or legitimate interest in the domain name at issue and has registered and used it in bad faith.

A. Identical or Confusingly Similar

The Domain Name <theazrepublic.com> differs from the established and registered mark THE ARIZONA REPUBLIC only by the use of the postal abbreviation “AZ” rather than the full name of the state, “Arizona.” The Panel notes that Complainants themselves registered <azrepublic.com> and other domain names using “AZ” rather than “Arizona” before Respondent registered the Domain Name <theazrepublic.com>.

As Complainants observe, other domain name decisions have concluded that the use of a commonly understood abbreviation in a domain name in place of the full word found in a mark is not a sufficient differentiation to avoid a likelihood of confusion. See Minnesota State Lottery v. Bryan Mendes, Claim No. FA0102000096701 (NAF Apr. 2, 2001) (<mnlottery.com> found confusingly similar to the MINNESOTA STATE LOTTERY mark because the postal abbreviation “MN” is commonly used in place of “Minnesota”); Dow Jones & Company, Inc. & Dow Jones LP v. T.S.E. Parts, WIPO Case No. D2001-0381 (May 4, 2001) (“ewallstjournal” found confusingly similar to the WALL STREET JOURNAL mark, despite the use of the abbreviation “st” for “street”); Microsoft Corporation v. Montrose Corporation, WIPO Case No. D2000-1568 (January 25, 2001) (<ms-office-2000.com> found confusingly similar to the MICROSOFT OFFICE 2000 mark because “MS” is commonly used as shorthand for “Microsoft”).

The Domain Name in this case, using the abbreviation “AZ” in place of the full name “Arizona,” is confusingly similar to Complainants’ mark, well-known at least in Arizona as that of the state’s leading newspaper. Respondent exacerbated the likelihood of confusion by including a link to “TheArizonaRepublic.com” on the home page of the Victory Policy Center website to which <theazrepublic.com> was redirected, which then displayed a page headed “THE AZ REPUBLIC.COM.”

B. Rights or Legitimate Interests

The Panel concurs with the reasoning of Western Research 3000, Inc. v. NEP Products, Inc., WIPO Case No. D2004-0755 (November 5, 2004), to the effect that Paragraph 4(c) of the Policy “contemplates an obligation on the part of Respondent to come forward with evidence of rights and legitimate interests,” and that the Panel can “appropriately” infer the absence of such rights or legitimate interests under Paragraph 14(b) of the Rules in cases where the Respondent fails to submit any response to the Complaint. See also Parfums Christian Dior v. QTR Corporation, WIPO Case No. D2000-0023 (March 9, 2000). Thus, while Complainants continue to bear the burden of proof under Paragraph 4 to discredit any rights or legitimate interests that Respondent asserts or that reasonably appear from the evidence submitted by Complainant, they need not imagine all such possible arguments on behalf of an absent Respondent and then attempt to “prove a negative” in each instance.

In this case, however, the evidence submitted by Complainants themselves concerning Respondent’s use of the Domain Name suggests the possibility that one of the “rights or legitimate interests” mentioned in Paragraph 4(c) of the Policy may conceivably apply:

“(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Unquestionably, Respondent has a free-speech right in the United States (as in much of the world) to criticize The Arizona Republic online or off, which Respondent seems to have done on at least one page formerly posted on the Victory Policy Center (“VPC”) site to which users were redirected when they entered the Domain Name as a URL or found it in response to a search engine query (see Complaint, Appendix J). Two distinct factors militate against Respondent, however, in hypothetically availing himself of the defense outlined in Paragraph 4(c)(iii) of the Policy: initial interest confusion and the presence of commercial advertising on the VPC site to which the Domain Name resolved.

Even assuming the bona fide of Respondent’s journalistic and political motives in redirecting <theazrepublic.com> to the VPC site (with which Respondent appears to be connected), it is not a legitimate expression of free speech for one journal to appropriate the name of a more famous one in order to divert readers to its own publication, even if readers are likely to be confused only initially as to the source of the communications. A competing newspaper could not legitimately do it, and neither can a competing website.

A very similar case was decided by a US Federal District Court in 2000, OBH, Inc. v. Spotlight Magazine, Inc., Decision and Order, 86 F. Supp. 2d 176 (WDNY 2000). There, the defendant publisher registered <thebuffalonews.com>, a site which featured criticism of The Buffalo News newspaper, a link to the defendant’s own publication, and also a disclaimer stating that the site was not connected with The Buffalo News. The court granted the owners of The Buffalo News an injunction based on likely infringement of US trademark law, despite the defendant’s assertions that the disclaimer and the “parody” nature of the site eliminated any potential confusion once a reader viewed its content. The court observed that free speech rights protect “communicative messages,” not “source labels” simply (and in this case misleadingly) identifying the source of a message. A label that mimics the mark of another publisher is a trademark violation because it misleads readers concerning the source of the message, causing at least initial confusion in the case of Internet users typing in a URL or clicking on search engine results in an effort to find the newspaper’s own website. As the court concluded:

“[D]efendants chose to use plaintiff’s mark as their domain name in order to deceive Internet users into believing that they were accessing plaintiff’s web site. Such a use of plaintiff’s mark is not protected by the First Amendment. Use of another’s trademark is entitled to First Amendment protection only when the use of that mark is part of the communicative message, not when it is used merely to identity the source of the product.” (Id. at 197)

This conclusion is similar to that reached by another US federal court in Planned Parenthood Federation of America, Inc. v. Bucci, 42 USPQ 2d 1430 (SDNY 1998), aff’d 152 F.3d 920, cert. denied 525 US 834 (1998), where defendant’s registration of <plannedparenthood.com> for an anti-abortion website was found to infringe the PLANNED PARENTHOOD mark, since it made the site appear to originate from Planned Parenthood. See also Annette Antoun d/b/a The Paxton Herald v. Truth Squad, Claim No. FA0207000114766 (NAF August 21, 2002) (respondent’s domain name using the trademarked name of the complainant’s newspaper was not itself a “protectable, communicative message”); Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300 (June 13, 2000) (nothing in the domain name indicated that the site featured criticism of the complainant rather than the complainant’s own material, and the use of complainant’s mark in the domain name illegitimately diverted Internet traffic to the respondent’s site).

Thus, regardless of the content of the website to which Respondent diverted traffic in this case, Respondent could not sustain an argument that he made a legitimate noncommercial or fair use of the Domain Name. The Domain Name is confusingly similar to Complainants’ mark and is not itself a communicative message that is protected free speech.

In addition, the defense suggested by Paragraph 4(c)(iii) of the Policy requires that a domain name be used “without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” The presence of advertising on the VPC site strongly suggests that commercial gain was included among the motives for diverting consumers from Complainant’s website – and Respondent has not answered to produce an alternative explanation.

C. Registered and Used in Bad Faith

Complainants’ long-established use of the registered mark THE ARIZONA REPUBLIC, well known particularly in the very region in which Respondent resided, and the criticism of The Arizona Republic newspaper on the VPC website to which the Domain Name resolved, indicate that Respondent was actually as well as constructively aware of Complainant’s mark, both at the time he registered the Domain Name in December 2003 and while redirecting site visitors to the VPC website, which used both “TheArizonaRepublic.com” and “AZ REPUBLIC.COM” on its pages as recently as November 2004.

Such registration and use of a domain name confusingly similar to a well-known mark, with the foreseeable effect of diverting traffic from the Complainants’ own website, has been held to be evidence of bad faith registration and use under Paragraph 4(a) of the Policy. See Annette Antoun d/b/a The Paxton Herald v. Truth Squad, Claim No. FA0207000114766 (NAF August 21, 2002) (registration of a domain name with knowledge of complainant’s existing rights in the mark as the name of its newspaper deemed bad faith).

Paragraph 4(b)(iv) of the Policy gives the following as one instance of “Evidence of Registration and Use in Bad Faith”:

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

Respondent appears guilty of just such behavior, given the numerous commercial advertisements and links appearing on the VPC website to which the Domain Name resolved (and which also appears to have been registered by Respondent). See Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102 (April 18, 2000) (links to commercial websites on a website using a well-known mark in its domain name found to constitute evidence of bad faith registration and use under Paragraph 4(b)(4) of the Policy).

As Complainants observe, even if Respondent did not himself sell products through the VPC website, using a domain name to divert Internet users with initial interest confusion from Complainants’ website and to disparage Complainants’ business is misleading, has a commercial impact on Complainants, and evinces bad faith. See People for the Ethical Treatment of Animals v. Doughney, [2001] USCA4 201; 263 F.3d 359, 365 (USCA 4^th Cir. 2001) (defendant who registered <peta.com> made no commercial use of the site but “clearly intended to confuse, mislead and divert internet users into accessing his web site which contained information antithetical and therefore harmful to the goodwill represented by the PETA mark”); Council of American Survey Research Organizations v. The Consumer Information Organization, LLC, a/k/a Pinelands Web Services, WIPO Case No. D2002-0377 (July 19, 2002) (use of complainant’s mark as a domain name for a website disparaging complainant’s business threatened an adverse commercial impact and indicated bad faith); Stanley Works v. McNeil & Assocs., Claim No. FA0004000094671 (NAF August 31, 2002) (a domain name that appears to belong to a party criticized on the website causes initial interest confusion and is evidence of bad-faith registration and use); Annette Antoun d/b/a The Paxton Herald v. Truth Squad, Claim No. FA0207000114766 (NAF August 21, 2002) (use of a mark in a domain name for a website that tarnishes the mark and damages the mark holder’s goodwill is evidence of bad faith).

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <theazrepublic.com> be transferred to Complainant Media West-PNI, Inc.

W. Scott Blackmer
Sole Panelist

Date: January 29, 2005