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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dow Jones & Company, Inc. & Dow Jones LP v. T.S.E. Parts
Case No. D 2001-0381
1. The Parties
Complainants are Dow Jones & Company, Inc., a Delaware corporation with a principal place of business in New York, New York, U.S.A., and Dow Jones LP, a Delaware Limited Partnership with a principal place of business in Chicopee, Massachusetts, U.S.A. Dow Jones & Company, Inc. is the limited partner of Dow Jones LP; Dow Jones Ventures V, Inc., a wholly owned subsidiary of Dow Jones & Company, Inc., is the general partner.
Respondent is T.S.E. Parts, of Glen Cove, New York, U.S.A.
2. The Domain Names and Registrar
This dispute concerns the domain names <ewallstreetjournal.com>, <ewallstreetjournal.net>, <ewallstreetjournal.org>, <ewallstjournal.com>, <ewallstjournal.net>, and <ewallstjournal.org>, all registered with Network Solutions, Inc. ("NSI").
3. Procedural History
The Complainant submitted a Complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("UDRP Policy") implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999, under the Rules for the UDRP Policy implemented by ICANN on the same date ("UDRP Rules"). The Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") by e-mail on March 16, 2001, and in a hard copy on March 20, 2001. A review of the Complaint for compliance with formal requirements was performed March 26, 2001. The Center found that the Complaint complied with the applicable formal requirements.
On March 26, 2001, the Center issued a Notification of Complaint and Commencement of Administrative Proceeding, forwarding the Complaint to the Respondent by courier, facsimile and email. A copy of the Complaint was also communicated to the Registrar, NSI, as well as to ICANN. The Notification set the deadline for response to the Complaint as April 14, 2001.
No response was received from Respondent, and on April 17, 2001, the Center issued a Notification of Respondent Default. On April 23, 2001, the Center issued to this Panel a Request for Declaration of Impartiality and Independence. This Panel provided its Declaration of Impartiality and Independence to the Center on April 24, 2001. On April 25, 2001, the Center transmitted the case file to this Panel for review.
4. Factual Background
Complainant is the owner of several U.S. Trademark registrations for THE WALL STREET JOURNAL, including U.S. Registration No. 408,379 issued on August 8, 1944 in connection with a daily newspaper. Complainant is also the owner of U.S. Trademark Registration No. 1,368,347 in connection with providing access to an electronic database which contains contents of a daily newspaper and summaries thereof; Reg. No. 1,498,049 in connection with television broadcasting services; and Reg. No. 1,960,159 in connection with newspapers for general circulation. Complainant claims use of the mark since July 8, 1889, in connection with daily newspapers.
5. Parties’ Contentions
Dow Jones & Company, Inc. publishes THE WALL STREET JOURNAL newspaper, a print publication that provides business, financial and other news and information. The newspaper was first published in 1889, and Complainant asserts it is one of the best-known and most widely acclaimed newspapers in the world. Its average circulation for the six months ending September 30, 2000, was 1,772,781. Complainant also publishes other, regional editions, including THE WALL STREET JOURNAL EUROPE and the ASIAN WALL STREET JOURNAL, as well as an electronic version of THE WALL STREET JOURNAL available on the Internet.
With the exception of U.S. Reg. No. 1,960,159, all of the above U.S. registrations for THE WALL STREET JOURNAL have become incontestable, and constitute conclusive evidence of the validity of Complainant’s THE WALL STREET JOURNAL marks, Complainant’s ownership of its marks and its exclusive right to use them. As for Registration No. 1,960,159, although the registration has not yet become incontestable (the period for filing an affidavit of incontestability did not commence until March 5, 2001), the period for petitioning to cancel the registration for grounds other than fraud and abandonment expired on March 5, 2001. See 15 U.S.C. § 1064(1). Complainant also asserts that it owns U.S. or foreign registrations or common law rights in connection with other variants of its THE WALL STREET JOURNAL marks, such as THE WALL STREET JOURNAL AMERICAS, THE WALL STREET JOURNAL EUROPE, THE ASIAN WALL STREET JOURNAL, THE WALL STREET JOURNAL SUNDAY, and THE WALL STREET JOURNAL REPORTER. Complainant has not provided copies of these registrations. Complainant further asserts that it owns registrations for its THE WALL STREET JOURNAL mark in 56 countries around the world.
Complainant provides an online edition of THE WALL STREET JOURNAL under the domain name <wsj.com>. Complainant has also registered <wallstreetjournal.com> and <thewallstreetjournal.com> and points them to its online edition of THE WALL STREET JOURNAL at <wsj.com>.
Complainant asserts that it advertises and promotes its THE WALL STREET JOURNAL publications on television and radio, billboards, and print advertising as well as in newspapers, magazines, and other printed publications, and on the websites of others. Complainant asserts it spends tens of millions of dollars each year to advertise and promote its THE WALL STREET JOURNAL products, including 68 million dollars spent on such advertising and promotion in 1999. Complainant asserts that it has developed enormous recognition for its products and services offered under the mark THE WALL STREET JOURNAL; and that the mark is well-known and widely recognized by consumers in the United States and worldwide and has acquired and now enjoys an immensely valuable reputation and tremendous goodwill.
Complainant asserts that on or about January 10, 2000, it learned Respondent was using the domain names at issue to direct Internet users to Respondent’s website at <www.getridofstuff.com>. Respondent’s home page invited visitors to post paid advertisements. On January 13, Complainant informed Respondent of its rights in its THE WALL STREET JOURNAL mark, and demanded that Respondent cease using the domain names and cancel its registrations. Complainant asserts that it received a telephone contact on January 24, 2000 from a Mr. Gregg Schmitt, who identified himself as the Chief Executive Officer of T.S.E. Parts, Respondent herein. Complainant asserts that Mr. Schmitt said he had rerouted the domain names to Complainant’s <wsj.com> website and was willing to transfer the domain names to Complainant. Complainant checked the domain names and discovered they were indeed pointing to its site at <wsj.com>. Then, Complainant responded to Mr. Schmitt by forwarding him forms to transfer the domain names, and requested that Mr. Schmitt fill in the relevant portions, sign the forms, have them notarized and return them to Complainant for filing with the Registrar, NSI. Having not received the signed transfer forms by February 14, 2000, Complainant sent a follow-up email to Mr. Schmitt, asking when he could expect to receive the completed transfer forms.
Complainant asserts that on March 1, 2000, Respondent sent an email to Complainant requesting a meeting in person. Complainant replied by email that a personal meeting was unnecessary, and reiterated its request that Respondent return the completed, notarized and signed transfer forms. Respondent then requested assistance in avoiding "any further cost in transitioning of these names" to Complainant. Respondent wrote Complainant again by email on March 4, 2000, stating that "this seems akin to a free ride on me. We both had an opportunity to purchase these names. Yet only after I purchased them you show an interest. Now I am to finance your marketing Dept."
Complainant asserts that on March 9, 2000, its outside counsel telephoned Mr. Schmitt, who again agreed to transfer the domain names to Complainant. Outside counsel confirmed this agreement by letter, and enclosed further copies of the transfer forms. Receiving no response, Counsel sent a second letter on March 16, 2000, requesting that the completed forms be returned by March 21. Complainant was contemporaneously contacted by an attorney representing Mr. Schmitt, who informed Complainant that Respondent wanted some compensation but would transfer the domain names for a total of $140. Complainant agreed to this request, but still did not receive the completed transfer forms. Thereafter, Complainant’s counsel left numerous messages for Respondent’s attorney seeking the completed transfer forms, but the transfer forms were never received.
Complainant wrote one last time to Respondent’s outside counsel on May 25, 2000 and offered to reimburse Respondent in the amount of $420, the cost of registering all the domain names, if the completed transfer forms were received by June 1, 2000. Up to the date of Complainant’s complaint, Complainant asserts it has not received the completed transfer forms for any of the domain names.
Complainant asserts that three of the domain names --<ewallstreetjournal.com>, <ewallstreetjournal.net>, and <ewallstreetjournal.org>-- mirror Complainant’s THE WALL STREET JOURNAL marks exactly but for the omission of the definite article "the," which is not a material difference. Complainant asserts that adding the prefix "e" is not material, citing Busy Body, Inc. v. Fitness Outlet Inc., WIPO No. D2000-0127 (March 17, 2000) because addition of the prefix "e" constitutes "the mere addition of a generic or common descriptive identifier for a type of business activity." Id.
Complainant asserts that the remaining three domain names --<ewallstjournal.com>, <ewallstjournal.net>, and <ewallstjournal.org>-- are also confusingly similar to Complainant’s marks, because "st" is a standard English abbreviation for "street", and is recognized as such by persons who speak English. Complainant asserts that an English-speaking Internet user who enters or encounters a domain name that includes the characters "wallstjournal" will conclude the domain name is an abbreviation for THE WALL STREET JOURNAL.
Complainant asserts that Respondent can not demonstrate any actual or intended use of the domain names, or of any name corresponding to the domain names, in connection with the bona fide offering of goods and services. Complainant asserts that, to its knowledge, Respondent conducts no legitimate business and offers no goods and services in any way connected to THE WALL STREET JOURNAL. Complainant asserts that it has not given Respondent permission to use any of its THE WALL STREET JOURNAL marks in any form, and has no relationship with Respondent which would entitle Respondent to use its marks. Complainant asserts that the domain names at issue do not resemble Respondent’s business or personal name, nor is Respondent commonly known by any of the domain names.
Complainant asserts that Respondent has used the domain names in connection with a commercial classified-advertising venture, being originally linked to Respondent’s <getridofstuff.com> website, which seeks paid advertising. Although Respondent’s domain names at issue no longer link to this site, this Panel notes that Respondent’s <getridofstuff.com> website is still operational (as of the writing of this decision), and still seeks paid advertising. Nothing prevents Respondent from un-linking its website from the <wsj.com> website, and having the domain names at issue revert to linking with Respondent’s <getridofstuff.com> website.
Complainant asserts that Respondent registered and is using its domain names in bad faith, because Complainant’s mark THE WALL STREET JOURNAL enjoys such fame in the United States and throughout the world that Respondent can not credibly argue it was unaware of the trademark rights vested in THE WALL STREET JOURNAL name when he registered the domain names at issue. Complainant asserts that it gave Respondent actual notice of its intellectual property rights in its THE WALL STREET JOURNAL marks and that despite this notice, although Respondent’s representative verbally agreed to transfer the domain names to Complainant and began linking the names to Complainant’s <wsj.com> website, to date Respondent has not yet transferred them. Complainant asserts that Respondent’s use of Complainant’s famous and well-respected name to lure Internet users to Complainant’s website for financial gain exploits Complainant’s long-standing and costly efforts to promote its THE WALL STREET JOURNAL mark and develop and promote products and services bearing that mark. Complainant asserts that consumers who encounter one of the domain names on the web would recognize THE WALL STREET JOURNAL name and be enticed to access Respondent’s website, and thus be confused, at least initially, as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
Complainant asserts that even when there is no similarity of products or services offered by Complainant and Respondent, Respondent’s deliberate use of Complainant’s mark to lure users to Respondent’s website is compelling evidence of bad faith, citing V Secret Catalogue Inc. v. Internet Investment Firm Trust "In Trust," NAF FA0003000094344 (May 9, 2000). Complainant asserts that Respondent registered the subject domain names at a time when success of Complainant’s online edition of THE WALL STREET JOURNAL had received considerable publicity, and that the Respondent intentionally registered and used the domain names to "free-ride on the renown and popularity of THE WALL STREET JOURNAL for its own commercial gain, by steering traffic searching for Complainant’s well publicized websites through its own less-known site."
Complainant asserts that there is further evidence of Respondent’s bad faith in that Respondent has registered at least 50 other domain names, two of which include the names of publications preceded by the letter "e": <enewsday.com> and <enewsday.net>. NEWSDAY is a trademark owned by Time Mirror License, Inc. Complainant believes Time Mirror License, Inc. has not licensed or granted permission to Respondent to reflect its mark in Respondent’s domain names. Respondent asserts that four of the 50 domain names correspond to the names of baseball players who play currently for the New York Yankees baseball team, namely David Cone, Tino Martinez, Paul O’Neill, and Bernie Williams. Complainant asserts that all four of these domain names resolve to Respondent’s <getridofstuff.com> website.
Complainant submitted the declarations of Messrs. Cone and O’Neill, stating they have not licensed or otherwise granted permission to Respondent to use their names.
Complainant asserts that Respondent’s multiple registrations and unauthorized use of domain names corresponding to the distinctive names of these baseball players, and to another publication demonstrate a pattern of infringing conduct and further compel an inference of bad faith in Respondent’s registration and use of the domain names at issue.
Finally, Complainant asserts that after notifying Respondent of its trademark rights in its THE WALL STREET JOURNAL mark, Respondent informed Complainant on several occasions that he would transfer the domain names at issue to Complainant, yet he never did so. Complainant asserts that Respondent’s retention and continued use of the domain names at issue despite its apparent acknowledgment of Complainant’s rights is a further indicator of bad faith.
Complainant has requested that this Panel issue a decision that the domain name be transferred to Complainant Dow Jones & Company, Inc.
Respondent has failed to file a Response to the complaint, and is therefore in default.
6. Discussion and Findings
A. Applicable Policy Provisions
The UDRP Policy requires Complainant to prove each of the following three elements, in order to prevail in this proceeding:
(i) That the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used in bad faith.
UDRP Policy, Section 4(a).
It is not sufficient to prevail that a Complainant prove only registration in bad faith; rather, the Complainant must prove both registration and use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bossman, Dispute No. D99-0001; Robert Ellenbogen v. Mike Pearson, Dispute No. D2000-0001.
However, the UDRP Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that [the Registrant has] registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) [the Registrant has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Registrant has] engaged in a pattern of such conduct; or
(iii) [the Registrant has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the Registrant has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [its] web site or location or of a product or service on [its] web site or location.
UDRP Policy, Section 4(b).
These circumstances are non-inclusive, and the Panel may consider other circumstances as constituting registration and use of a domain name in bad faith. Id.
The Respondent may demonstrate rights or legitimate interests to the domain name by any of the following, without limitation:
(i) Before any notice of the dispute, Registrant's use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Registrant, as an individual, business, or other organization has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) Registrant is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
UDRP Policy, Paragraph 4.c.
B. Opinion of the Panel
Complainant has demonstrated that it is entitled to the relief it seeks. All six of the domain names at issue are confusingly similar to Complainant’s THE WALL STREET JOURNAL mark. The Panel agrees with Complainant that deletion of the article "the", and addition of the letter "e" would simply confuse Internet users into believing that the subject domain names are electronic versions of Complainant’s publications. Furthermore, the substitution of the common abbreviation "st" for "street" in three of the domain names does not avoid confusing similarity.
Furthermore, Complainant has demonstrated that Respondent has no rights or legitimate interest in respect of any of the domain names at issue. As Complainant asserts and Respondent has failed to controvert, Respondent has made no use of or demonstrable preparations to use the domain names in connection with the bona fide offering of goods or services; Respondent has not been commonly known by the domain name as an individual, business or other organization; and Respondent is making no legitimate non-commercial or fair use of the domain names. Therefore, Complainant has demonstrated Respondent has no rights or legitimate interest in respect of the domain names.
Finally, Complainant has demonstrated that the domain names were registered and used in bad faith. Respondent’s six domain names each resolved originally to a website selling advertising; a service competitive with Complainant. Although Respondent redirected each of the sites to point to Complainant’s website once Respondent was notified of Complainant’s rights, there is nothing preventing Respondent from redirecting the domain names to point to Respondent’s classified advertising site immediately upon issuance of this decision. Therefore, this Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. UDRP Policy, Paragraph 4(b)(iv).
For the reasons stated hereinabove, and pursuant to Paragraph 4(i) of the UDRP Policy, and Paragraph 15 of the UDRP Rules, this Panel grants the remedy requested by Complainant in the Complaint, namely that the domain names <ewallstreetjournal.com>, <ewallstreetjournal.net>, <ewallstreetjournal.org>, <ewallstjournal.com>, <ewallstjournal.net>, and <ewallstjournal.org> are hereby transferred to Complainant.
Jordan S. Weinstein
Date: May 4, 2001