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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Gannett Co. Inc. v. Lee Yi

Case No. D2004-0854

 

1. The Parties

The Complainant is Gannett Co. Inc., McLean, Virginia, United States of America, represented by Dow, Lohnes & Albertson, PLLC, United States of America.

The Respondent is Lee Yi, Taipei, Taiwan, China.

 

2. The Domain Name and Registrar

The disputed domain name <gannett.org> (the “Domain Name”) is registered with eNom, United States of America.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2004. On October 25, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name at issue. On October 27, 2004, eNom transmitted by email to the Center its verification response referring to its WHOIS database, which lists the Respondent as registrant of the Domain Name and contains 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 October 28, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 17, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 18, 2004.

The Center appointed Assen Alexiev as the sole panelist in this matter on November 24, 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.

In accordance with Rules, paragraph 11(a), the language of this administrative proceeding was English, being the language of the Domain Name Registration Agreement.

In accordance with the Rules, paragraph 15, the projected decision date was December 8, 2004.

 

4. Factual Background

Complainant is the owner of the following trademark and service mark registrations in the United States of America:

MARK

REGISTRATION NUMBER

INT’L CLASS

REGISTERED FOR

GANNETT

2,855,619

9

coin actuated newspaper vending machines

GANNETT

2,852,724

38

providing television broadcasting and transmission services

GANNETT

2,852,723

41

providing entertainment services in the nature of television news programs; providing interactive information in the field of general and local, national and international news, information on movies, theater, television and radio programs, sporting events, concerts, books, museums, exhibitions and festivals, and information on sights and attractions of interest to travelers, via the Internet

GANNETT and Design

1,571,637

9

coin actuated newspaper vending machines

G GANNETT and Design

2,134,305

16

newspapers containing news on topics of general interest

G GANNETT and Design

1,401,581

38

television broadcasting and transmission services

GANNETT FOUNDATION

1,716,449

36

philanthropic and eleemosynary services in the field of monetary donation; namely, providing grants and funds to meet community and human needs

In addition, Complainant has two pending United States applications for marks that consist of the GANNETT mark. One of these applications has now been published for opposition by the United States Patent and Trademark Office. These applications are:

MARK

SERIAL NUMBER

INT’L CLASS

DESCRIPTION

STATUS

GANNETT

76/476,468

35

dissemination of advertising for others via television, newspapers and the Internet; providing information about merchandise for sale and job listings via television, newspapers and the Internet

Pre-publication review

GANNETT

76/476,568

16

newspapers containing news on topics of general interest

Published

Complainant has also registered thirty-eight second-level domain names incorporating the GANNETT mark and variations on the GANNETT mark. Each of these domain names (except for the domain name <gannettfoundation.org>) resolves to the Gannett corporate website located at www.gannett.com”. The <gannettfoundation.org> domain name resolves to the Gannett Foundation website located at “www.gannettfoundation.org”.

 

5. Parties’ Contentions

A. Complainant

1. General factual allegations.

Complainant is a large, diversified media and information company that owns and operates numerous broadcast television stations, newspapers (including USA TODAY), information services and websites. Complainant is also engaged in providing other information services, such as marketing, commercial printing, newswire services, data services, and news programming. Complainant has operated and promoted itself and its newspapers under the mark GANNETT since at least as early as 1924, has used the GANNETT mark to promote itself and its goods and services via television since at least as early as 1953, and has used the GANNETT mark to promote itself and its goods and services via the Internet since at least as early as April 21, 1995. The GANNETT mark is used throughout Complainant’s enterprise, both in the United States and abroad, to promote many of Complainant’s diverse goods and services. For example, the GANNETT mark appears in every edition of every print newspaper published by Complainant and its affiliates (including, but not limited to, in the newspaper USA TODAY), and likewise appears on the electronic editions of these publications that are published on the Internet. Complainant’s USA TODAY print newspaper has been distributed in Respondent’s home country of Taiwan under the GANNETT mark since the launch of the international edition in 1985. Complainant currently distributes about 400 copies of the USA TODAY print newspaper a day throughout Taiwan, with most being in Taipei, where Respondent is located. The GANNETT mark is also prominently displayed on the newspaper vending machines where USA TODAY is sold. Moreover, the GANNETT mark is used by the twenty television stations owned by Complainant in connection with station programming, and is displayed on these stations’ Internet websites. Based on Complainant’s widespread use and promotion of the GANNETT mark to identify its many goods and services throughout the world, the GANNETT mark is undeniably famous and is an indication of the high quality of goods and services associated exclusively with Complainant.

Complainant has invested a substantial amount of time and resources to promote and advertise the GANNETT Marks and associated products and services. As a result, Complainant has developed extremely valuable goodwill and an outstanding reputation in the GANNETT Marks. The GANNETT Marks are undeniably famous and are an indication of high quality and of origin exclusively with Complainant.

On or about November 4, 2002, Respondent registered the Domain Name <gannett.org> without the authorization, knowledge or consent of Complainant. Respondent is not a licensee of Complainant nor is Respondent authorized to use any of Complainant’s GANNETT Marks. The second level domain name of the Domain Name is identical to Complainant’s GANNETT mark.

Sometime after registering the <gannett.org> Domain Name, Respondent began using the Domain Name to direct visitors to a website that provided links to third party websites in categories such as health, lifestyle, and travel under the heading “Gannett.org.” The website also contained banner advertisements promoting travel deals and online gambling. The “www.gannett.org” site also posted a banner that read “FOR SALE,” with a hyperlink connecting users to an email address to which inquiries for purchasing the Domain Name could be directed.

On January 23, 2003, counsel for Complainant sent a letter via Federal Express to Respondent’s address listed in the Whois database in Taipei, Taiwan, demanding that Respondent cease and desist use of the Domain Name, and that Respondent transfer the registration for the Domain Name to Complainant. According to Federal Express records the letter was received by Respondent; however, Respondent never responded to the letter.

Sometime between January 23, 2003 and January 31, 2003, Respondent changed the Whois contact information associated with the Domain Name in the eNom registry. The new Whois entry deleted all the previous contact information for Respondent and replaced the contact information with what appeared to be false information that could not be used to contact Respondent. For example, the Domain Name registrant was listed as “CONTACT NOT AUTHORITATIVE,” the registrant address was listed as “Whois Server: whois.enom.com, Referral URL: “www.enom.com”, City N/A, Postal Code N/A” and the registrant email address was listed as “not@available.org.”

On or about May 15, 2003, counsel for Complainant discovered two new email addresses on Respondent’s website that were posted as contacts for inquiries to purchase the <gannett.org> Domain Name. In addition, on or about May 15, 2003, counsel for Complainant discovered that Respondent had slightly modified the content of the “www.gannett.org” website to focus on web searches featuring links to family history, genealogy and similar websites. Counsel most recently viewed Respondent’s “www.gannett.org” website on October 12, 2004 and, except for changes to the content of the banner ad and links displayed on the site and the addition of several “pop up” windows featuring additional ads, the site has not changed in substance.

On May 19, 2003, counsel for Complainant sent a second demand letter via email to the two new email addresses listed on the “www.gannett.org” website, indicating that Complainant was the owner of federal registrations for the GANNETT mark and that Respondent’s use of the <gannett.org> Domain Name infringed Complainant’s rights in its mark.

On May 23, 2003, Complainant received an email message in response to its May 19, 2003 email message. The response email message was sent from a new email address and was signed with the name “Lee.” In response to Complainant’s demands, “Lee” stated that “we can only accept a settlement arrangement if you are interested.”

On May 28, 2003, counsel for Complainant sent a reply email to “Lee” indicating that, although the registration and use of the Domain Name violated Complainant’s trademark rights in its GANNETT mark, Complainant would be willing to reimburse the registrant for the reasonable cost of transferring the Domain Name in exchange for a voluntary transfer the <gannett.org> Domain Name to Complainant. Complainant never received a response to this email message.

On July 21, 2003, counsel for Complainant sent a follow-up email reiterating the terms of Complainant’s offer to pay the reasonable costs of transferring the Domain Name to Complainant. As of the date of this Complaint, Complainant has not received a response to this email message.

2. The Domain Name is Identical or Confusingly Similar to the GANNETT Marks in Which Complainant has Well-Established Rights

Complainant owns and has well-established rights in the GANNETT Marks. Because the addition of the generic top-level domain (gTLD) name “.org” is without legal significance, the Domain Name registered and used by Respondent to offer a directory of Internet links is identical to Complainant’s GANNETT Marks.

3. Respondent Has No Rights or Legitimate Interests in Respect of the Domain Name

Respondent has never been authorized by Complainant to use any of the GANNETT Marks. This fact gives rise to a presumption that Respondent cannot establish that it has rights or any legitimate interest in the Domain Name.

Respondent has a history of registering the well-known trademarks and service marks of others as domain names and then attempting to sell those domains for a profit to their rightful owners. Each time Respondent was found to have no legitimate right or interest in the relevant domain names. For example, in Sime Darby Berhad v. Lee Yi, WIPO Case No. D2003-0558 (September 10, 2003), the owner of the mark SIME DARBY sent a demand letter to Respondent Lee Yi asking him to cease and desist his use of the domain name <simedarby.com> and transfer the disputed domain name to the complainant. Respondent Lee Yi subsequently sent an email message to the complainant asking if it would “accept a settlement arrangement.” The complainant offered Respondent US$200 to voluntarily transfer the domain name; however, Respondent Lee Yi never responded to the complainant’s offer. The panel in that case found that the fact Respondent Lee Yi was prepared to negotiate for a monetary settlement “strongly suggests” that he did not register the disputed domain name with bona fide intentions to use it in connection with the offering of its goods or services, but rather, to profit from the sale of such domain name to its rightful owners or its competitors. The panel further found that “Respondent has a history of registering domain names in bad faith, and is doing the same again in the present case.” See also Bioland e.V v. Lee Yi, WIPO Case No. D2002-1147 (February 4, 2003).

Respondent cannot establish rights in the Domain Name under Paragraph 4(c)(i) of the Policy and cannot show that he used or demonstrably prepared to use the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute, because he has only used the Domain Name as a heading on a page offering third party advertisements and a listing of links to third party websites. See Tercent Inc. v. Lee Yi, NAF Claim No. FA0301000139720 (February 10, 2003). The links on Respondent’s website do not appear to be related to Respondent, are not related to the GANNETT mark and are certainly not associated with Complainant and its businesses. Thus, Respondent’s use of the Domain Name cannot be considered to be made in connection with a bona fide offering of goods or services.

In addition, Respondent cannot establish rights in the Domain Name under Paragraph 4(c)(ii) of the Policy because Respondent is not commonly known by the Domain Name <gannett.org> and has not acquired trademark or service mark rights in the Domain Name. Nothing in Respondent’s Whois information implies that Respondent is commonly known by the disputed Domain Name, and Complainant is not aware of any trademark rights owned by Respondent for the name “gannett”. Indeed, Respondent’s only known association with the phrase “Gannett.org” is through its website, which uses this phrase solely as a pretext to confuse visitors into thinking Respondent’s website is somehow related to or offers services in connection with Complainant’s GANNETT mark, which it does not. The fact that Respondent is infringing Complainant’s trademark rights and is potentially causing confusion among consumers precludes a finding that Respondent has any legitimate interest in the Domain Name.

Further, Respondent cannot establish rights in the Domain Name under Paragraph 4(c)(iii) of the Policy because Respondent is not making a legitimate non-commercial or fair use of the Domain Name, without intent to misleadingly divert consumers for commercial gain. Quite the contrary, in addition to the fact that Respondent offers the Domain Name for sale on its website, Respondent is using the Domain Name to direct visitors to its own and various third party commercial websites. Respondent’s use of the Domain Name to misdirect potential visitors to Complainant’s commercial website and then to third party commercial websites, for which activity Respondent presumably receives compensation, is not a bona fide use of the Domain Name, and does not constitute a legitimate, non-commercial use of the Domain Name under the Policy.

Moreover, this same conduct by Respondent has previously been found by other Panels to be motivated by commercial gain in contravention of the Policy. Accordingly, Respondent’s use of the Domain Name “Gannett.org” to re-direct visitors to a site featuring a series of hyperlinks and banner advertisements is not a legitimate noncommercial or fair use and cannot be relied upon to establish rights to the Domain Name.

4. The Domain Name Has Been Registered and Used in Bad Faith

From the nature of Respondent’s website, it is clear that Respondent has in fact acquired the Domain Name primarily for the purpose of selling it. Since the time when Complainant was made aware of Respondent’s site, Respondent has never offered anything more than directory listings on the website. Moreover, Respondent’s site has consistently indicated that the Domain is “FOR SALE.” Moreover, Respondent has indicated his willingness to enter into a “settlement arrangement” with Complainant regarding ownership of the Domain Name. Such actions also indicate Respondent’s bad faith.

Respondent’s conduct also constitutes bad faith under Paragraph 4(b)(ii) of the Policy, which states that bad faith can be demonstrated by evidence that Respondent 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 you have engaged in a pattern of such conduct.” As indicated above, Respondent has repeatedly refused to transfer the Domain Name to Complainant, thus preventing Complainant from using its GANNETT mark with the top level domain “.org.” Furthermore, Respondent has repeatedly been found to be in the business of registering well known marks as domain names in order to profit from the sale of those domains, and other panelists have found that such behavior by Respondent constitutes bad faith. This pattern of conduct by Respondent is evidence that the Domain Name was registered in bad faith.

In addition, Respondent’s use of the Domain Name to misdirect visitors and increase traffic to Respondent’s commercial “www.gannett.org” website further evidences Respondent’s bad faith under the Policy, paragraph 4(b)(iv). Respondent has no legitimate business connection with the Domain Name; the only evident reason that Respondent uses the Domain Name in this manner is to increase traffic to Respondent’s website by creating confusion with Complainant's famous GANNETT Marks. Respondent’s use of the Domain Name to direct visitors to Respondent’s “www.gannett.org” website is in bad faith because it unfairly trades on Complainant’s GANNETT Marks, and threatens the integrity and valuable goodwill the Complainant has built up in its GANNETT Marks.

 

5. Remedy requested

Complainant requests that Respondent’s Domain Name <gannett.org> be transferred to Complainant.

B. Respondent

The Respondent did not file a Response to the Complaint.

 

6. Discussion and Findings

Policy, paragraph 4(a) provides that, to justify transfer of a domain name, the Complainant must prove each of the following:

(i) 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

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Respondent has registered and is using the Domain Name in bad faith.

In this case, the Center has employed all measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a). The Notification of Complaint was sent to the address provided by the Respondent to the Registrar, by courier, and by e-mail, and was delivered to the Respondent.

Therefore, the Respondent was given a fair opportunity to present its case.

Under Rules, paragraph 5(b)(i), a Respondent is expected to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”

In the event of a default, under Rules, paragraph (14)(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”

As stated by the Panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the Panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. … In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”

In this administrative proceeding, the Respondent’s default entitles the Panel to conclude that Respondent has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to take his decision on the basis of the statements and documents submitted by the Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Complainant has established its rights in several US federal trademarks and service marks, all containing the distinctive “GANNETT” element, and some of them consisting of this element exclusively.

The Complainant has also shown that it is the registrant of thirty-eight domain names, all incorporating the distinctive GANNETT element.

The Domain Name <gannett.org> is identical to the “GANNETT” word marks, as it is an established practice under the Policy to disregard the suffixes such as “.net”, “.com” and “.org” for the purposes of the comparison under Policy, paragraph 4(a)(i), and the “gannett” element is identical in the Domain Name and the “GANNETT” word marks.

The Domain Name is confusingly similar to the combined GANNETT”marks, as “gannett” is the most prominent and distinctive part of both the Domain Name and these marks.

Therefore, the Complainant has succeeded under Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name, and has never been authorized by Complainant to use any of the GANNETT Marks.

Thus, the Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.

Once Complainant makes out a prima facie case under Policy, paragraph 4(a)(ii), the burden shifts to the Respondent to rebut the showing by providing evidence that it has rights to or legitimate interests in the Domain Name. 

The assertions of the Complainant remained uncontested by the Respondent, so the Panel, in order to reach its decision on the issue of rights and legitimate interests, has to base its findings on evidence presented in the case by the Complainant.

Studying the contents of the website in different periods after the registration of the Domain Name, as evidenced by the Complainant and further verified by the Panel itself, by opening the website at “www.gannett.org”, the Panel finds that the website associated with the Domain Name contains only directory listings and a prominent “FOR SALE” advertisement.

The website has no element showing that the Respondent has been commonly known by the Domain Name (Policy, paragraph 4(c)(ii)). The same applies to the WHOIS information supplied by eNom. Also, the continuous posting of a “FOR SALE” announcement implies that the Respondent is not strongly connected to the Domain Name and is ready to transfer it. Normally, a person or entity would not offer a domain name for sale to the general public if the same person or entity was commonly known by this domain name.

Further, the content of the website is not by itself evidence of any of the circumstances under Policy, paragraph 4(c)(i) and (iii). The Panel sees no justification to regard the use of the Domain Name for offering directory listings on various topics having no relation to the Domain Name as proof of a bona fide offering of goods or services. The Panel also finds no justification to consider this use of the Domain Name as a legitimate non-commercial use, as the directory listings in the website contain commercial topics as ‘hotel reservation”, “health insurance”, “e-commerce”, “web hosting”, “domain name registration”, etc. As to the possibility that the use of the Domain Name be regarded as a “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”, the Panel is convinced that the circumstances strongly suggest the opposite. Posting of links to commercial websites is commonly practiced in the Internet for commercial gain, and the Respondent uses a Domain Name that is identical to someone else’s mark for a website featuring such links, thus probably misleadingly diverting consumers.

Another circumstance suggesting that the Respondent has no rights or legitimate interests in the Domain Name is his behavior after the Complainant’s counsel sent him the cease and desist letter of January 23, 2003. The Respondent chose not to answer this letter, and within several days changed the contact details for the Domain Name at eNom. The new contact details, being obviously fictitious (the e-mail address given for the Domain Name contact was “not@available.com”), show that the Respondent tried to hide himself from the Complainant. It is difficult to conceive such a conduct as the behavior of a rightful domain name registrant.

The Respondent, by its default, has chosen not to present the Panel with any allegations or documents in its defence, despite its burden under Rules, paragraph 5(b)(i) and 5(b)(ix) or the consequences that a Panel may extract from the fact of a default (Rules, paragraph 14). If Respondent had any justification for the registering or using the disputed Domain Name, it could have provided it.

Therefore, the Panel concludes that the Respondent has no rights and legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Complainant contends that the nature of Respondent’s website shows that Respondent has in fact acquired the Domain Name primarily for the purpose of selling it. The website has never contained anything more than directory listings and an indication that the Domain Name is “FOR SALE.” The Respondent has indicated his willingness to enter into a “settlement arrangement” with Complainant regarding ownership of the Domain Name. The Respondent did not accept the offer of May 28, 2003 from the Complainant to transfer the Domain Name for the sum of 250 US Dollars.

There is no explanation of these circumstances by the Respondent, and the Panel is prepared to agree with the Complainant that the Respondent registered the Domain Name primarily in order to profit from its sale.

Complainant further contends that the Respondent has repeatedly refused to transfer the Domain Name to Complainant, thus preventing Complainant from using its GANNETT mark with the top level domain “.org.” Respondent has been repeatedly found acting in bad faith in other proceedings under the Policy.

The Panel studied the decisions cited in this regard by the Complainant and finds that the conduct of the respondent described in these decisions is very similar to its conduct as alleged in these proceedings. The Respondent has provided no rebuttal of the allegations of the Complainant, so the Panel accepts that it was the present Respondent that was a party to the other administrative proceedings cited by the Complainant. The Respondent has never explicitly refused to transfer the Domain Name to the Complainant. However, by registering and maintaining the Domain Name, and not agreeing to the offer for transfer of the Domain Name made by the Complainant in its letters dated May 28, 2003 and July 21, 2003, the Respondent has effectively prevented the Complainant from reflecting the GANNETT mark in a corresponding domain name. As the evidence shows, the Respondent has engaged in a pattern of such conduct in at least three other cases.

The Complainant has shown its rights in thirty-eight domain names, all incorporating the distinctive GANNETT element. The Complainant has also shown that it uses its GANNETT mark in the Respondent’s territory – Taiwan. These facts show the high probability that the Respondent registered the Domain Name with knowledge about the Complainant’s trademark.

As found in Sections A and B above, the Domain Name is identical to the GANNETT marks in which the Complainant has rights, and the Respondent has no rights or legitimate interests in the Domain Name. Therefore, the Panel accepts the allegation of the Complainant, that the Respondent uses the Domain Name to misdirect visitors and increase traffic to its own website by creating confusion with Complainant's GANNETT marks.

Considering the above, and in the light of the evidence produced, the arguments of the Complainant, and the absence of any explanation from the Respondent in rebuttal of the allegations of the Complainant, the Panel concludes that the registration and use of the Domain Name by the Respondent was done in 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 <gannett.org> be transferred to the Complainant.


Assen Alexiev
Sole Panelist

Date: December 8, 2004

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2004/d2004-0854.html

 

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