national arbitration forum

 

DECISION

 

Bell Globemedia Publishing Inc. v. LaPorte Holdings c/o Admin

Claim Number:  FA0512000606134

PARTIES

Complainant is Bell Globemedia Publishing Inc. (“Complainant”), represented by Lisa Martz of McCarthy Tetrault LLP, 1300 - 777 Dunsmuir Street, Vancouver, BC, V7Y 1K2.  Respondent is LaPorte Holdings c/o Admin (“Respondent”), 5482 Wilshire Blvd #1928, Los Angeles, CA 90036.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <golbeandmail.com>, registered with Nameking.com, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 7, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 9, 2005.

 

On December 8, 2005, Nameking.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <golbeandmail.com> domain name is registered with Nameking.com, Inc. and that Respondent is the current registrant of the name.  Nameking.com, Inc. has verified that Respondent is bound by the Nameking.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On December 12, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 3, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@golbeandmail.com by e-mail.

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On January 5, 2006 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1.      Respondent’s <golbeandmail.com> domain name is confusingly similar to Complainant’s THE GLOBE AND MAIL mark.

 

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

 

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

 

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

 

FINDINGS

Complainant, Bell Globemedia Publishing Inc., is the owner and publisher of the The Globe and Mail newspaper, Canada’s largest nationally-distributed newspaper.  This newspaper was created through a merger of The Globe and The Mail and Empire newspapers in 1936.  Complainant’s newspaper has the second highest circulation of any newspaper in Canada and is read by approximately 2.5 million people per week in Canada. 

 

Complainant owns trademark registrations with the Canadian Intellectual Property Office (“CIPO”) and with the United States Patent and Trademark Office (“USPTO”) for the THE GLOBE AND MAIL (CIPO Reg. No. TMA210954 issued January 6, 1976; USPTO Reg. No. 1,658,189 issued September 24, 1991) and GLOBEANDMAIL.COM (CIPO Reg. No. TMA567615 issued September 18, 2002; USPTO Reg. No. 2,833,593 issued April 20, 2004) marks.  Complainant has used its THE GLOBE AND MAIL mark in the United States and Canada since at least as early as November 23, 1936 in connection with the dissemination of news and information via newspaper.  Complainant began using its GLOBEANDMAIL.COM mark in the United States and Canada as early as July 1996 in association with the dissemination of news and information on the Internet. 

 

Complainant publishes a version of its newspaper on the Internet via the <theglobeandmail.com> and <globeandmail.com> domain names.

 

Respondent registered the <golbeandmail.com> domain name on December 29, 2002.  The domain name is being used to operate a directory website that displays links to commercial websites selling various products and services.  Some of the links have some relation to Complainant, including one that uses the name of a well-known reporter and columnist who writes exclusively for Complainant’s newspaper. 

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Paragraph 4(a) of the Policy requires Complainant must prove each of the following three elements to obtain an order a domain name should be cancelled or transferred:

 

(1)   the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

 

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

 

(3)   the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

The Panel finds Complainant’s registration with CIPO is sufficient to establish Complainant’s rights in the THE GLOBE AND MAIL mark pursuant to Policy ¶4(a)(i).  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

The <golbeandmail.com> domain name differs from Complainant’s THE GLOBE AND MAIL mark with the omission of the term “the” and the transposition of the letters “l” and “o.”  These changes do not create a domain name distinct from Complainant’s mark.  Additionally, the use of the generic top-level domain “.com” is irrelevant to determining similarity under Policy ¶4(a)(i).  Therefore, the Panel finds the domain name is confusingly similar to Complainant’s mark in satisfaction of Policy ¶4(a)(i).  See Buffalo News v. Barry, FA 146919 (Nat. Arb. Forum Mar. 31, 2003) (finding the respondent's <bufalonews.com> domain name confusingly similar to Complainant's THE BUFFALO NEWS mark); see also Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . ."). 

 

The requirements of Policy ¶4(a)(i) are satisfied. 

 

Rights or Legitimate Interests

The initial burden under Policy ¶4(a)(ii) is on Complainant to prove Respondent does not have rights or legitimate interests in the disputed domain name.  Once Complainant has made a prima facie case, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to the directions provided in Policy ¶4(c).  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (describing the burden shifting from the complainant to the respondent regarding rights and legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).  The Panel finds Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶4(c).

 

Complainant asserts there is no evidence Respondent has ever been commonly known by the <golbeandmail.com> domain name.  Complainant further contends it has not licensed or otherwise permitted Respondent to use its THE GLOBE AND MAIL mark for any purpose.  Under these circumstances, the Panel finds Respondent has not established rights in the disputed domain name under Policy ¶4(c)(ii).  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question). 

 

Complainant argues Respondent is using the <golbeandmail.com> domain name to operate a website featuring sponsored links for the generation of revenue through click-through fees.  Respondent has not come forward with an alternative assertion, and the Panel finds no bona fide offering of goods or services under Policy ¶4(c)(i) where Respondent is using a confusingly similar version of Complainant’s THE GLOBE AND MAIL mark to generate revenue for Respondent.  Such infringing use of the domain name for personal profit is also not considered a legitimate noncommercial or fair use of the domain name under Policy ¶4(c)(iii).  See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also Am. Online, Inc. v. Tencent Communicatins Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding use of the complainant’s mark “as a portal to suck surfers into a site sponsored by [the respondent] hardly seems legitimate”); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).

 

The requirements of Policy ¶4(a)(ii) are satisfied.

 

Registration and Use in Bad Faith

Respondent’s use of the <golbeandmail.com> domain name to divert Internet users searching for Complainant’s services to Respondent’s directory website demonstrates  Respondent’s intent to attract Internet users to its website by creating confusion with Complainant’s mark.  This likelihood of confusion is increased due to Respondent’s use of Complainant’s mark and the name of a reporter associated with Complainant.  The registration and use of a domain name comprised of a confusingly similar version of Complainant’s THE GLOBE AND MAIL mark to divert Internet users for Respondent’s commercial gain is evidence of bad faith registration and use under Policy ¶4(b)(iv).  See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding the respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).

 

The requirements of Policy ¶4(a)(iii) are satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <golbeandmail.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: January 16, 2006