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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

News Holding Limited v. Steve Kerry/ WWW Enterprise, Inc.

Case No. D2006-1374

 

1. The Parties

The Complainant is News Holding Limited, of New South Wales, Australia, represented by Hogan & Hartson, LLP, United States of America.

The Respondent is Steve Kerry/ WWW Enterprise, Inc., of Los Angeles, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <newscorporation.org> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2006. On October 30, 2006, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On November 3, 2006, OnlineNic, Inc. d/b/a China-Channel.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, 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 November 6, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 26, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 5, 2006.

The Center appointed Ian Blackshaw, Staniforth Ricketson and Terrell C. Birch as panelists in this matter on January 10, 2007. The Panel finds that it was properly constituted. Each member of 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 following facts concerning the Complainant’s trademarks are taken from the Complaint, pars 10-22, have not been contested by the Respondent.

The Complainant uses the mark NEWS CORPORATION and variations thereof including A NEWS CORPORATION COMPANY, TEAM NEWS CORP, NEWS CORP, NEWS CORP WORLD, and NEWS CORP ONE in its business and in relation to a wide variety of goods and services (the mark NEWS CORPORATION and variations thereof are collectively referred to as the “NEWS CORPORATION Marks”) (Complaint, par10).

The NEWS CORPORATION Marks have been and are used in numerous countries, including the United States of America, by and on behalf of Complainant, itself and through its parent company News Corporation, its affiliates, related companies, subsidiaries and/or joint ventures (collectively “News Corporation Companies”). Further, the Complainant owns trademark applications or registrations for certain NEWS CORPORATION Marks in several countries, including registrations for “News Corp One: and “Team News Corp” (but not apparently “News Corporation” itself) in the United States of America, the United Kingdom and Australia. Print-outs providing registration information concerning some of these trademark applications and registrations have been provided to the Panel: Annex D, Complaint.

The News Corporation Companies operate as a diversified international multi-media and entertainment business in Australia, the United States of America, Continental Europe, the United Kingdom, Latin America, Asia and the Pacific Basin (the “News Corporation Business”). Evidence of the extent of these activities is to be found in the News Corporation Annual Report for 2006 which has been provided to the Panel in Annex L.

For approximately twenty years, the News Corporation Business has operated under and been known by the name “News Corporation.” Likewise, the Complainant, itself and through certain of the News Corporation Companies, has offered a variety of goods and services under the mark NEWS CORPORATION, including stationery, notepads, portfolios, pens, clothing, luggage tags and bags. Copies of representative samples of items prominently bearing the mark NEWS CORPORATION have also been provided to the Panel: Complaint, par13 and Annex E.

Further, one or more of the News Corporation Companies operate websites at domain names that incorporate the NEWS CORPORATION Marks, including “www.NewsCorporation.com” and other websites that incorporate the abbreviation of NEWS CORPORATION “News Corp.,” including “www.NewsCorp.com” and “www.NewsCorp.co.uk. The websites located at such domain names make prominent use of one or more of the NEWS CORPORATION Marks, notably the mark NEWS CORPORATION. Printouts from such websites demonstrating use of the NEWS CORPORATION Marks have been provided to the Panel: Complaint, par 14 and Annex F.

In addition to the mark NEWS CORPORATION, the Complainant itself and through certain of the News Corporation Companies has used for over a decade several variations of the mark NEWS CORPORATION. One such usage is the offering of printed advertising materials under the mark A NEWS CORPORATION COMPANY. Specifically, the mark A NEWS CORPORATION COMPANY has appeared on the advertising coupon circular entitled Smart Source since at least as early as March 1999. The Smart Source circular is currently distributed through a nationwide network of approximately 1,200 newspapers in the United States of America to an audience of approximately 150 million people in the United States of America. A copy of the Smart Source circular bearing the Complainant’s Mark dated March 14, 1999, has been provided to the Panel: Complaint, par 15, Annex G.

Another prominent usage of the mark A NEWS CORPORATION COMPANY is in connection with the creation and distribution of motion pictures and television series. As demonstrated in the print out provided to the Panel (Complaint, par 17, Annex H), consumers encounter the mark A NEWS CORPORATION COMPANY at the beginning of movies created and distributed by certain News Corporation Companies, viewed in the theater or elsewhere on video, DVD, or television. These include such motion pictures as Bend it Like Beckham; Cast Away; Don’t Say a Word; Fight Club; Home Alone; How Stella Got Her Groove Back; Ice Age; Master and Commander; The Far Side of the World; Minority Report; Moulin Rouge; Office Space; Planet of the Apes; Shallow Hal; Sideways; Speed; Star Wars: Episode I; Star Wars: Episode II – Attack of the Clones; There’s Something About Mary; Titanic; and X-Men (Complaint, par 17).

Likewise, the mark A NEWS CORPORATION COMPANY is displayed at the end of broadcasts of television series produced by certain News Corporation Companies, as well as on DVDs or videos of such television series. Instances of such programs are Buffy the Vampire Slayer; The Simpsons; Futurama; The Shield; The X Files; NYPD Blue; 24; Malcolm in the Middle; King of the Hill; Family Guy; Cops; In Living Color; The Simple Life; That 70s Show; and Boston Legal (Complaint, par19).

A further exposure of the NEWS CORPORATION Marks occurred in 2001-2002 when the News Corporation companies fielded a yacht racing team in the prestigious 2001-02 Volvo Ocean Race. The race consisted of nine stages that took the teams 32,000 miles around the world in nine months, and garnered significant worldwide media attention for the participating teams, including Team News Corp. Photographs of the Team News Corp. yacht, as well as samples of press coverage of the 2001-02 Volvo Ocean Race, have been provided to the Panel: Complaint, par19, Annex J). In connection with such activities, clothing and other merchandise were offered bearing one or more of the NEWS CORPORATION Marks. Representative photographs of such items have also been provided to the Panel: Complaint, Annex J.

News Corporation also occupies a position as one of the largest multi-media entertainment entities in the world. For example, in 2005, Global Finance recognized the News Corporation Business as the global leader in the media and entertainment market. A copy of the Global Finance results and other articles recognizing the News Corporation Business as an industry leader have been provided to the Panel: Complaint, par 21. Annex K). Specifically, the News Corporation Business operates in seven primary industry segments: (i) filmed entertainment, through the Twentieth Century Fox Film Corporation and others; (ii) television, including the creation of original network and cable programming and the operation of television networks and stations, through FOX Broadcasting Company, FOX Sports International, FOX Sports Australia, fX, FOX News Channel and others; (iii) direct broadcast satellite television systems, including DirectTV, BSkyB, and Sky in Mexico, Columbia, Brazil, Chile and Italy; (iv) magazines and inserts, including The Weekly Standard and TV Guide; (v) newspapers such as the Daily Telegraph, Fiji Sun, Australia Courier-Mail, The Sun, and New York Post; (vi) book publishing, through HarperCollins Publishers; and (vii) technology products and services through NDS Limited. A copy of News Corporation’s 2006 Annual Report, listing News Corporation’s holdings and divisions, has been provided to the Panel: Complaint, par 21, Annex L).

In light of the foregoing, the Complainant asserts – and there is nothing from the Respondent to contradict this – that its business is famous throughout North America, Europe and Asia, and that the NEWS CORPORATION Marks have become “household words”. Merely by way of example, the News Corporation Business and the News Corporation Companies are regularly covered in articles and features from such publications as Forbes, Business Week, Fortune, the Financial Times, the New York Times, The Economist, the London Times, the BBC, the UK Daily Telegraph, Time Asia, and the Asia Times. Representative samples of such articles have been provided to the Panel: Complaint, par 22, Annex M).

 

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

A1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

The Complainant alleges that the disputed domain name is identical to both the Complainant’s domain name <NewsCorporation.com> and the Complainant’s mark NEWS CORPORATION, a conclusion that is not changed by the fact that the Domain Name includes the top level domain designation “.org.” In this regard, the Complainant refers to OBH, Inc. v. Spotlight Magazine, (86 F. Supp. 2d 176, 188) (W.D.N.Y. 2000), where the court ruled that differences in capitalization, spacing, and the addition of the domain designation were insignificant distinctions between the registrant’s domain name and the complainant’s trademark. (“The ‘Buffalo News’ and <thebuffalonews.com> are, for all relevant purposes, identical”). Administrative panel decisions to similar effect that are cited by the Complainant are: Pomellato S.p.A v. Tonetti, WIPO Case No. D2000-0493 (finding <pomellato.com> identical to complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); Blue Sky Software Corp. v. Digital Sierra Inc., WIPO Case No. D2000-0165 (holding that the domain name <robohelp.com> is identical to complainant’s registered ROBOHELP trademark, and that the “addition of .com is not a distinguishing difference”); AT&T Corp. v. Xinzhiyuan Management Consulting Co., Ltd., WIPO Case No. DCC2004-0001 (“The addition of the top level domain extension ‘.cc’ does not render the signs non-identical.”); cf. Kohler Co. v. Chris Friedland d/b/a/ Faucet Direct Inc., FA0207000115043 (Natl. Arb. Forum August 8, 2002) (“the addition of the generic term ‘faucets,’ which has relation to the product Complainant offers, does not detract from the presence of the KOHLER mark in the second level domain,” and “the kohlerfaucets.com domain name is confusingly similar to Complainant’s KOHLER mark”).

The Complainant further submits that the disputed domain name is confusingly similar to other of the Complainant’s NEWS CORPORATION Marks such as NEWS CORP and its domain name NewsCorp.com (Complaint, par 24). The Complainant refers here to various Panel decisions that have held that the abbreviation for a word or trademark should be considered confusingly similar to such word or trademark: See Minn. State Lottery v. Mendes, FA 96701 (Natl. Arb. Forum April 2, 2001) (finding that the <mnlottery.com> domain name is confusingly similar to complainant’s MINNESOTA STATE LOTTERY registered mark); Microsoft Corp. v. Montrose Corp., WIPO Case No. D2000-1568 (finding the domain name <ms-office-2000.com> to be confusingly similar, even though the mark MICROSOFT is abbreviated). Accordingly, the Complainant submits that the disputed domain name is confusingly similar to other of the Complainant’s NEWS CORPORATION Marks, such as NEWS CORP, that use the term “CORP” in lieu of “CORPORATION.”

Likewise, it is submitted that the disputed domain name is confusing similar to other of the NEWS CORPORATION Marks, such as TEAM NEWS CORP, A NEWS CORPORATION COMPANY and NEWS CORP ONE, in view of the fact that the term “NEWS CORPORATION” or “NEWS CORP” comprises the dominant portion of such marks: Complaint, par 25). In this regard, the Complainant cites Westfair Foods, Ltd. v. Zelizney, AF-0153 (eResolution May 30, 2000) (WESTFAIRFOODS.COM confusingly similar to WESTFAIR FOODS, LTD.); Solomon R. Guggenheim Foundation v. Jesus J. Ruiz Zuazu, FA 95319 (Natl. Arb. Forum October 5, 2000) (domain names including <guggenheimvirtual.com> confusingly similar to GUGGENHEIM VIRTUAL MUSEUM mark); Benchmark Staffing, Inc. v. Benchmark Jobs, LLC, WIPO Case No. D2001-0663 (BENCHMARKJOBS.COM confusingly similar to BENCHMARK STAFFING SERVICES mark).

A2. The Respondent has no rights or legitimate interests in respect of the domain name;

The Complainant submits that The News Corporation Companies have continuously used the mark NEWS CORPORATION since at least as early as 1980. As previously mentioned, since adopting the mark NEWS CORPORATION, the News Corporation Companies have expanded the use of the mark NEWS CORPORATION to include additional marks that include the term NEWS CORPORATION or variations thereof, including the marks NEWS CORP, NEWS CORP ONE, and A NEWS CORPORATION COMPANY and have done so in connection with a wide variety of business endeavors, as outlined above. Such ownership and use is evidenced by the trademark registrations obtained by the Complainant for its NEWS CORPORATION Marks, as well as the representative samples of actual uses of the marks as provided, both as mentioned above: Complaint, par 26).

Significantly, the Complainant says that at no time has it ever authorized or otherwise consented to the Respondent’s use of the disputed domain name or any variation thereof: Complaint, par 27).

The Complainant submits further that there is no evidence that the Respondent is engaged in any legitimate use of the disputed domain name: Complaint, par 28). Specifically, the Complainant refers here to paragraph 4(c) of the Policy which provides that evidence of one or more of the following shall demonstrate a respondent’s rights or legitimate interests to a domain name:

(i) before any notice to respondent of the dispute, respondent used, or made 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;

(ii) respondent (as an individual, business, or other organization) had been commonly known by the domain name; or

(iii) respondent is 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.

The Complainant alleges that, prior to notice of the dispute, the disputed domain name was not used in connection with a bona fide offering of goods or services by the Respondent under Paragraph 4(c)(i) of the Policy: Complaint, par 29). While the Respondent’s use of the disputed domain name has modified over time, at no point has the Respondent engaged in any bona fide offering of goods or services. Earlier in 2006, the home page at the domain name (the “Webpage”) listed a number of pre-set searches that took users to lists of third party websites. A number of pre-set search links were prominently displayed along the top of the Webpage, including not only a pre-set search for the Complainant’s newspaper The New York Post, but significantly pre-set searches for numerous direct competitors of News Corporation Companies such as the New York Times, Washington Post, and CNN on such Webpage. Evidence of this has been provided to the Panel: Complaint, par 30, Attachment C of Annex N. Thus, when an Internet user went to the Domain Name, they were presented with the names of not only the Complainant’s newspaper, but also several of its competitors. In addition to these prominent uses at the top of the Webpage, the Respondent included additional pre-set searches for even more competitors of the Complainant, such as ABC and NBC, on the left hand side of the Webpage. At that time, the Respondent was also using as metatags in such Webpage other trademarks of News Corporation Companies such as “FoxNews,” “FoxKids”, and “American Idol”: Complaint, par 30).

After learning of such use of the disputed domain name by the Respondent, the Complainant says that it wrote to the Respondent on February 28, 2006, advising it of its trademark rights and of the Respondent’s improper registration and use of the Domain Name. A copy of such letter has been provided to the Panel: Complaint, par 31, Annex N. After receiving no response to such letter, the Complainant sent a follow-up email message to the Respondent on March 16, 2006. The Respondent failed to respond in any fashion to the Complainant’s initial letter, as well as its subsequent email message: Complaint, par 31.

The Complainant goes on to assert that, on or about March 2006, the Webpage at the disputed domain name was modified to remove all content from the Webpage; Complaint, par 32. Then, in or about September 2006, the Webpage at the disputed domain name began resolving to “http://web-10000.com/”, which provides a page of pre-set search links, which in turn resolve to “http://landings.trafficz.com”. Trafficz, the company which operates the “www.trafficz.com” website, describes itself as a “domain service company dedicated to generating revenue from parked domains while providing accurate metrics of each domain.” Printouts from the Trafficz website have been provided to the Panel: Complaint, par 32, Annex O. Accordingly, the Complainant submits that the disputed domain name appeared to be a “parked” domain name at this time. In addition, the Webpage currently lists “popular categories” for searches, such as “Movies” and “Entertainment”, which list the names of legitimate movie rental sites, sites for apparently unlicensed downloading of movies, talent agents, event ticket agents and, again, competitors of certain of the News Corporation Companies, including New Line Cinema and MSN. Corresponding print-outs have been provided to the Panel: Complaint, par 32, Annex P.

The Complainant submits that neither the prior or current uses of the disputed domain name are legitimate uses, and do not constitute a bona fide offering of goods or services, citing here Prada S.A. v. Mr. Chuan Sheng Wang, WIPO Case No. D2003-0758; Hewlett-Packard Company v. Alvaro Collazo, FA0302000144628 (Natl. Arb. Forum March 5, 2003); Consorzio per la Tutela dell’Asti v. Mr. Giulio Bennatto, WIPO Case No. D2004-0350: Complaint, par 33.

Indeed, the Complainant submits (Complaint, par 34) that the Respondent’s actions in registering the mark NEWS CORPORATION as a domain name and listing competitors of the News Corporation Companies, either prominently on the Webpage or in the search results, leads to the inference that the “Respondent was aware of Complainant’s well-known business and its mark and intended to exploit the mark” (Edmunds.com, Inc. v. Ult. Search, Inc., WIPO Case No. D2001-1319). The Complainant asserts that it is well-established that “use which intentionally trades on the fame of another can not constitute a ‘bona fide’ offering of goods or services” (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com,” WIPO Case No. D2000-0847; see also Delta Corporate Identity, Inc. v. Ameriasa, FA0206000114657 (Natl. Arb. Forum, July 30, 2002) (“Any use by Respondent of the delta-airline-resevation.com domain name, confusingly similar to Complainant’s famous mark, would be an opportunistic attempt to attract customers via Complainant’s famous mark and therefore not considered to be a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Furthermore, in light of the famous nature of the NEWS CORPORATION Marks and the extensive use and media coverage of such marks, “it would be very difficult for Respondent to show that it had rights and legitimate interests in the disputed domain name,” as use of such a confusingly similar domain name gives rise to the presumption that the Respondent’s use is “an opportunistic attempt to attract customers via Complainant’s famous mark and therefore not considered to be a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶h 4(c)(iii).” (Delta Corporate Identity, Inc. v. Ameriasa, FA0206000114657 (Natl. Arb. Forum, July 30, 2002).

To the Complainant’s knowledge, the Respondent has not commonly been known by the Domain Name or any variation thereof prior to the Respondent’s registration of the disputed domain name, as contemplated under Paragraph 4(c)(ii) of the Policy: Complaint, par 35.

In addition, the Complainant submits that the Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the NEWS CORPORATION Marks, as contemplated under Paragraph 4(c)(iii) of the Policy. This is demonstrated by the Respondent’s use of the disputed domain name to generate revenue through use of the services of Trafficz, which is “dedicated to generating revenue from parked domains while providing accurate metrics of each domain.” Printouts from the Trafficz website have been provided to the Panel: Complaint, par 36 and Annex O and see also Edmunds.com, Inc. v. Ult. Search, Inc., WIPO Case No D2001-1319; V&S Vin & Sprit v. Young Nah, WIPO Case No. D2004-0961 (“The domain name is hosted by a company called TrafficZ.com, which is dedicated to generating revenue from parked domains while providing accurate metrics of each domain. It certainly must be the purpose of the Respondent to intentionally trade off of the Complainant’s considerable good will and value in the mark ABSOLUT and to divert traffic intended for the Complainant.”).

Furthermore, the Complainant submits that the Respondent’s use of the disputed domain name appears to be for the purpose of diverting consumers seeking information concerning, or the website of, one of the News Corporation Companies, as evidenced by not only the Respondent’s prior listing of The New York Post and prior and current listings of competitors of the Complainant, but also by its prior use of trademarks of News Corporation Companies as metatags: Complaint, par 37.

In light of the above, the Complainant submits that it is clear that the Respondent lacks any rights or legitimate interests in the disputed domain name under Paragraph 4(c) of the Policy.

A3. The domain name was registered and is being used in bad faith.

The Complainant submits (Complaint, par 38) that the facts of the case demonstrate that Respondent clearly registered and is using the disputed domain name in bad faith. A review of the Respondent’s prior Webpage shows use of “www.NewsCorporation.org” in large type in the upper right hand corner, and below that a listing of pre-set searches for several newspapers. One such newspaper is the New York Post, which is published by a News Corporation Company. Thus, when users reach the website, they could believe through seeing the prominent use of “NewsCorporation.org” and “New York Post,” that the website is provided, sponsored or approved by the Complainant. Significantly, this Webpage also included pre-set searches for direct competitors of News Corporation Companies; notably direct competitors of the New York Post, such as the “New York Times” and “Washington Post” that were identified in bold lettering across the top of the Webpage, as well as other competitors such as NBC and ABC listed along the left-hand side of the Webpage. In addition, the Respondent used additional trademarks of certain News Corporation Companies, such as “Fox News” and “American Idol” as metatags, which further evidences the Respondent’s bad faith intent.

While the Respondent temporarily took down the content, as mentioned above, after the Complainant objected to its registration and use of the disputed domain name, it later recommenced use of the domain name that is likewise objectionable: Complaint, par 39. In this regard, the Complainant refers to the current Webpage which lists “Most Popular” and other such searches. Clicking on some of the terms led to a page with search results that included direct links to the News Corporation Companies’ competitors; while clicking on other terms took a user to a webpage full of ads for unrelated “services.” For example, while clicking on the term “Movies” returned search results to some movie-related sites; clicking on the term “MSN” resulted in a user seeing results for purchasing stocks, software to create newsletters, stock analysis software, “free stuff,” and a variety of other parking services, among others. Corresponding printouts have been provided to the Panel.

Overall, the Complainant submits that such uses show that the Respondent is not making any legitimate use of the disputed domain name, as well as that the disputed domain name was registered and is being used in bad faith: Complaint, par 40. Specifically, the Complainant argues that providing links to competitors’ websites or concerning competitors’ business is strong evidence that the Respondent’s registration and use of the disputed domain name was done in bad faith, citing here NetWizards Inc. v. Spectrum Enters, WIPO Case No. D2000-1768; Cisco Systems, Inc. v. Mike Haag, AF-0585a-b (eResolution December 29, 2000); Zwack Unicum Rt. v. Erica J. Duna, WIPO Case No. D2000-0037; Oly Holigan, L.P. v. Private, FA 95940 (Natl. Arb. Forum December 4, 2000).

The Complainant submits further (Complaint, par 40) that the Respondent’s bad faith use and registration of the disputed domain name is supported by the fact that the “search” function located at the Webpage returns search results that are wholly irrelevant to certain search terms, and which in fact serve no purpose other than to advertise entirely unrelated services. The Complainant refers here to Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330 (respondent showed bad faith by registering various misspellings of complainant’s mark and using them to hyperlink to advertisement web pages); Shields v. Zuccarini, 89 F. Supp. 2d 634, 640 (E.D. Pa. 2000) (defendant violated plaintiff’s rights by registering five variations of plaintiff’s trademarks and using them to subject site visitors to advertisements).

Further evidence of bad faith referred to by the Complainant (Complaint, par 41) includes the fact that the Respondent has also engaged in a pattern of registering in bad faith domain names containing the trademarks of third parties, as anticipated by Paragraph 4(b)(ii) of the Policy. This is evidenced by the following Panel decisions involving the Respondent: Deutsche Telekon AG v. WWW Enterprise Inc., WIPO Case No. D2004-1078 (transfer ordered of the domain name <tmobile.net> registered by the Respondent under similar circumstances to the present case); Deutsche Telekon AG v. WWW Enterprise Inc., WIPO Case No. D2005-0311 (collection of “typo” domain name similar to “tmobile” transferred); Sociйtй Air France v. WWW Enterprise Inc., WIPO Case No. D2005-1160 (domain name <airfrancecom.net> transferred); Amanresorts Limited v. WWW Enterprise Inc., WIPO Case No. D2005-0384 (domain names <amanresorts.org> and <amanresorts.net> transferred); Wyndham IP Corp. v. WWW Enterprise, Inc., FA411811 (Natl. Arb. Forum March 18, 2005) (domain names <wwwwyndhamhotel.com> and <wwwwyndhamhotels.com> transferred); Summerfield Hotel Co., L.P. v. WWW Enterprise, Inc., FA411803 (Natl. Arb Forum March 21, 2005) (domain name <summerfieldsuite.net> transferred): Air Austral v. WWW Enterprise, Inc., WIPO Case No. D2004-0765 (domain name <airastral.net> transferred). The Complainant refers also to other Panel decisions in which it has been recognized that repeated registration of the trademarks of third parties can give rise to a presumption that such registrations were performed in bad faith: see Research in Motion Limited v. Pacific Rim System, WIPO Case No. D2001-0408 (registration of three domain names incorporating the trademarks of third parties raises presumption of bad faith registration and use); Encyclopaedia Britannica Inc. v. Shedon.com, WIPO Case No.D2000-0753 (finding of bad faith where Respondent engaged in the practice of registering domain names containing the trademarks of others); Armstrong Holdings, Inc. v. JAZ Associates, FA 95234 (Natl. Arb. Forum August 17, 2000) (finding that the Respondent violated Policy Paragraph 4(b)(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks); Pep Boys Manny, Moe, and Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (same); Hachette Filipacchi Presse v. Fortune Int'l Dev., FA 96685 (Natl. Arb. Forum, April 6, 2001) (finding that where the Respondent has registered over 50 domain names that correspond to different well-known trademarks, evidence of a pattern exists). Previous decisions that the Respondent has acted in bad faith are further indications that the Respondent has acted in bad faith in this particular case: see further Network Solutions, LLC v. South East Enterprise, Inc., WIPO Case No. D2005-1243 (transferring domain names after considering prior WIPO decisions finding bad faith by the Respondent, South EastEnterprise, Inc., and its “apparent alterego” WWW Enterprise, Inc.).

Moreover, the Complainant submits (Complaint, par 42) that the fact that the Respondent registered the disputed domain name with apparent knowledge of the NEWS CORPORATION Marks, and did so without any legitimate rights or interests in the disputed domain name, is additional evidence of the Respondent’s bad faith in the use and registration of the Domain Name. Cases cited in support of this include: Kohler Co. v. Chris Friedland d/b/a/ Faucet Direct Inc., FA 0207000115043 (Natl. Arb. Forum, August 8, 2002); Samsonite Corp. v. Colony Holding, FA 94313 (Natl. Arb. Forum, April 17, 2000 (respondent acted in bad faith if it had either actual or constructive knowledge of a commonly known mark at the time of registration); Exxon Mobil Corp. v. Fisher, WIPO Case No. D2000-1412 (respondent had actual and constructive knowledge of EXXON mark given its world-wide prominence and thus respondent registered the domain name in bad faith); Ticketmaster Corp. v. Spider Web Design, Inc., WIPO Case No D2000-1551. In the present case, the Complainant argues that Respondent cannot credibly claim to have been unaware of the News Corporation Companies and NEWS CORPORATION Marks, which have been used in connection with extensive commercial activities around the world, including the United States of America (the Respondent’s apparent place of residence), for many years. This conclusion is supported by the fact that the Webpage has included links to the News Corporation Companies’ competitors (but not to News Corporation or any News Corporation Company), as discussed above, which further points towards the fact that the registration of the disputed domain name was done in bad faith.

Indeed, the Complainant submits that the very fact that the Respondent failed to respond to the Complainant’s letter objecting to such use, and thereafter recommenced objectionable use of the Domain Name, is further evidence of the bad faith registration and use of the disputed domain name, referring here to the decision of a prior WIPO Panel ordering transfer of a disputed domain name in similar circumstances involving the Complainant: The News Corporation Ltd. v. Yoon Jinsu, WIPO Case No. D2005-0504.

B. Respondent

The Respondent, having been duly notified of the Complaint and these proceedings, did not reply to the Complainant’s contentions or take any part in them.

 

6. Discussion and Findings

To qualify for cancellation or transfer of the domain name at issue, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. Paragraph 5(e) of the Rules provides further that, where no response is submitted, in the absence of exceptional circumstances, the Panel is to decide the dispute based upon the complaint.

In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous WIPO UDRP cases in which the respondent failed to file a Response, the Panels’ decisions were based upon the complainant’s assertions and evidence, as well as inferences drawn from the respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Kцstritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936.

Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default (Cortefiel S.A. v. Miguel Garcнa Quintas, WIPO Case No. D2000-0140). The Panel must still decide whether the Complainant has established that each of the requirements of the Policy, in particular those under paragraph 4(a), are satisfied.

A. Identical or Confusingly Similar

In light of the evidence presented by the Complainant (and not contested in any way by the Respondent), the Panel accepts that the Complainant has well established common law rights in the mark NEWS CORPORATION and variations thereof including A NEWS CORPORATION COMPANY, TEAM NEWS CORP, NEWS CORP, NEWS CORP WORLD, and NEWS CORP ONE (the mark NEWS CORPORATION and variations thereof are collectively referred to as the “NEWS CORPORATION Marks”) (Complaint, par10). In this regard, the Complainant refers to a prior WIPO arbitration panel which determined that the Complainant, then known as News Corporation Ltd., owned trademark rights in the NEWS CORPORATION and NEWS CORP marks and that such marks were widely known: see The News Corporation Ltd. v. Yoon Jinsu, WIPO Case No. D2005-0504. Accordingly, the Panel is satisfied that the first part of the requirement under par 4(a)(i) of the Policy is established.

As to the second part of par 4(a)(i), it is clear that the disputed domain name incorporates the Complainant’s trademark NEWS CORPORATION.

It is well established in previous WIPO UDRP cases that, where a domain name incorporates a complainant’s mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The fact that the Complainant’s mark NEWS CORPORATION appears in the disputed domain name as one name and not two is irrelevant and does not act as distinguishing feature for trademark purposes.

Likewise, the addition of the suffix “.org”, which is required for registration purposes only, is also irrelevant, for trademark purposes, and does not, therefore, serve to distinguish the disputed domain name from the trademark of the Complainant. See on this general principle, Pomellato S.p.A v. Tonetti, WIPO Case No. D2000-0493, in which the panel found that the domain name <pomellato.com> was identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name “pomellato”, is not relevant. And also Blue Sky Software Corp. v. Digital Sierra Inc., WIPO Case No. D2000-0165, in which the panel held that the domain name <robohelp.com> was identical to the complainant’s registered “robohelp” trademark, and that the “addition of the suffix .com is not a distinguishing difference”. The same principle and rationale also apply to the addition of the suffix “.org”.

Thus, the use by the Respondent of the Complainant’s mark NEWS CORPORATION in the disputed domain name will in all likelihood result in confusion in the marketplace amongst Internet users and potential consumers seeking information about the Complainant’s products and services in the United States of America and other parts of the world.

In view of all this, the Panel finds that the domain name registered by the Respondent is confusingly similar to the trademark NEWS CORPORATION, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has well-established and commercially valuable rights.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- Whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’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;

- whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;

- whether the Respondent is 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 trademark or service mark at issue.

There is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain name. Indeed, in view of the Complainant’s widely-known trademark NEWS CORPORATION and its well-known business activities not least in the United States of America and world-wide, the Respondent must have known, when registering the disputed domain name, that the Respondent could not have - or, indeed, claimed - any such rights or interests. Neither is there any evidence before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s widely-known trademark NEWS CORPORATION as part of the disputed domain name. In any case, had the Respondent had any such rights or legitimate interests, the Respondent would have been expected to assert them; the Respondent has not done so and the Panel, therefore, draws the corresponding inferences.

In particular, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, the Respondent has used the disputed domain name for a website that purports to be and gives the impression of emanating from or, at least, in some way, being associated with the well-known, substantial and successful global business being carried on by the Complainant and such website contains links not only to some of the Complainant’s products but also to those of its competitors. Such conduct on the part of the Respondent can hardly be described as being in good faith. Indeed, it has been held in a number of previous WIPO UDRP cases, including Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com,” WIPO Case No. D2000-0847, that “use which intentionally trades on the fame of another can not constitute a ‘bona fide’ offering of goods or services.”

Likewise no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor is making a legitimate non-commercial or fair use of the domain name. In fact, as regards the latter point, the Respondent is offering on its website links to products which compete with those of the Complainant. Again, such conduct on the part of the Respondent can hardly be described as being non-commercial, legitimate or fair.

Indeed, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s widely-known trademark NEWS CORPORATION inevitably leads to the diversion of the Complainant’s consumers to the Respondent’s website (see further on this point below) and, the consequential tarnishing of the Complainant’s valuable trademark and reputation. In other words, the Respondent is trading for commercial gain on the good name and reputation of the Complainant’s business, trade name and trademark and thereby unfairly attracting to its own business the substantial goodwill that the Complainant has established in many parts of the world over many years in its mark, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so. This view is reinforced by the Complainant’s contentions that some months after being informed of the Complainant’s objection to the Respondent’s use of the disputed domain name, as referred to above, the webpage at the disputed domain name began resolving to “http://web-10000.com/”, which provides a page of pre-set search links, which in turn resolve to “http://landings.trafficz.com”. Trafficz, the company which operates the “www.trafficz.com” website, describes itself as a “domain service company dedicated to generating revenue from parked domains while providing accurate metrics of each domain.” In a similar situation to the present case, it was held in V&S Vin & Sprit v. Young Nah, WIPO Case No. D2004-0961, that “It certainly must be the purpose of the Respondent to intentionally trade off of the Complainant’s considerable good will and value in the mark ABSOLUT and to divert traffic intended for the Complainant.”

Therefore, the Panel concludes that the Respondent has neither rights to nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.”

Based on the evidence provided in the case file, the Panel agrees with the Complainant’s contention that the Respondent, by registering the disputed domain name, is unfairly trading on the Complainant’s valuable goodwill established in its well-known trademark NEWS CORPORATION over many years throughout the world. Indeed, in the absence of any evidence to the contrary, of which none is forthcoming on the part of the Respondent, the Respondent’s registration of the disputed domain name does not appear to be accidental, but deliberate and calculated to exploit the Complainant’s considerable reputation in its particular field of business for the Respondent’s own purposes and benefits. Such conduct, in the view of the Panel, amounts to bad faith.

Again, by registering and using the disputed domain name incorporating the Complainant’s trademark, NEWS CORPORATION, the Respondent is misleading Internet users and consumers into thinking that it is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business, or the Respondent’s activities are approved or endorsed by the Complainant, neither of which, according to the evidence before the Panel, is the situation in the present case.

Also, the failure of the Respondent to answer the Complainant’s letter of February 28, 2006, and the subsequent reminder sent to the Respondent objecting to the Respondent’s use of the disputed domain name, and the subsequent behavior of the Respondent in relation to the content of the webpage at the disputed domain name (all of which is referred to above by the Complainant), in the opinion of the Panel, constitute bad faith on the part of the Respondent.

Furthermore, this view of the Panel is reinforced by the examples and the corresponding WIPO UDRP decisions against the Respondent, cited above by the Complainant, of previous registrations made by the Respondent of bad faith domain names incorporating the trademarks of third parties, which, in the view of the Panel, are further indications of bad faith on the part of the Respondent. Such a pattern of past conduct, moreover, falls within the circumstances referred to in paragraph 4(b)(ii) of the Policy.

Finally, the failure of the Respondent to file any answer to the Complaint or otherwise participate in these proceedings, in the view of the Panel, is another indication of bad faith on the part of the Respondent.

Therefore, for all the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name 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 <newscorporation.org> be transferred to the Complainant.


Ian Blackshaw
Presiding Panelist


Staniforth Ricketson
Panelist


Terrell C. Birch
Panelist

Dated: January 24, 2006

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2006/d2006-1374.html

 

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