ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
Parties and Contested Domain Name
The Complainant is American Media Operations, Inc. of Lantana, Florida, United States of America.
The Respondent is Erik Simons, an individual resident in Tallinn, Estonia. He is the registrant of the domain name in issue.
The domain name at issue is áwwwnationalenquirer.comñ which is registered with Network Solutions, Inc., based in Virginia, U.S.A. (the "Registrar").
2. Procedural History
A complaint in this matter was originally submitted on August 25, 1999 to the Registrar, Network Solutions, Inc. pursuant to that company's then current Domain Name Dispute Policy. On August 26, 1999, the technical contact for the Respondent, a web hosting company that hosted the disputed domain name's website, advised counsel for the Complainant that he had been in contact with the owners of the disputed domain name and that those owners had agreed to "disable the domain" until the dispute subject of the Complaint had been resolved pursuant to the Network Solutions, Inc. Domain Name Dispute Policy.
On or about November 17, 1999, the Registrar advised counsel for the Complainant that it would be adopting the new Dispute Policy mandated by the Internet Corporation for Assigned Names and Numbers (the "ICANN Policy") effective January 1, 2000 and that therefore it would not be able to conclude the administration of the complaint prior to the implementation of the new Policy. Network Solutions indicated to counsel that the Complainant's future alternatives lay with the new Policy, as of January 1, 2000, or by way of civil litigation.
On February 24, 2000, the Complainant filed a Complaint against the Respondent pursuant to the new ICANN Policy. The Complainant filed its Complaint with Disputes.org/eResolution Consortium ("eResolution") in electronic form through eResolution's website. The hard copy of the Complaint form was received by eResolution on February 25, 2000. The applicable fee was also received by eResolution on February 25, 2000.
Upon receipt of the Complaint, the Clerk of eResolution confirmed the identity of the Registrar of the domain name as Network Solutions, Inc. and confirmed that the Registrar's Whois database contained the required contact information for the Respondent. The Clerk also determined that the contested domain name resolves to an inactive web page. Having determined that the Complaint was administratively compliant, the Clerk proceeded to forward the Complaint form and the required cover sheet in accordance with ICANN's Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), paragraph 2(a) on February 29, 2000.
The Clerk's office sent the Complaint to all postal-mail and facsimile addresses shown in the domain names registration data in the Registrar's Whois database for the registered domain name holder, administrative contact, the technical contact and the registration's billing contact. The Clerk's office also sent the Complaint in electronic form by email to the addresses specified in the ICANN Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") Article 2(a)(ii). However, all emails were returned. In view of the latter, the Clerk's office decided to extend the commencement date of the administrative proceeding to March 4, 2000 in order to afford the Respondent additional time to file his response. On February 29, 2000, the Clerk's office notified the Complainant, the Respondent, the Registrar and ICANN of the date of commencement of the administrative proceeding.
eResolution's Clerk's office requested a copy of the original Registration Agreement for the disputed domain name and received a copy of the same from the Registrar. On May 17, eResolution's Clerk's office contacted Henri Alvarez and requested that he act as the sole panellist in this case. On May 19, Henri Alvarez accepted to act as the panellist in this case and filed his Declaration of Independence and Impartiality on May 23. On May 30, the Parties were notified of the appointment of the sole panellist and the file was transferred to him.
The Respondent did not submit a response within the time limits provided for in the Rules and eResolution's Supplemental Rules, or at all.
3. Factual Background
The Complainant is the parent corporation of National Enquirer, Inc. It has provided evidence that it is the holder of a valid United States trademark to the trade name "National Enquirer". The certified copy of the trademark registration indicates that the trademark registration has been in effect since August 20, 1962 (Complaint, Annex A). National Enquirer, Inc. has published a newspaper under the trade name "National Enquirer" for approximately 25 years and is stated to have a weekly circulation in excess of two million.
The Complainant registered the domain name ‹nationalenquirer.com› with Network Solutions, Inc. on April 14, 1996. Since June of 1997, the Complainant has published a world wide web version of the National Enquirer newspaper which is found at the ‹nationalenquirer.com› domain name. The Complainant has also licensed the name "National Enquirer" to use for a syndicated television program called "National Enquirer TV".
The Respondent registered the domain name ‹wwwnationalenquirer.com› for a term of two years from March 1, 1999 (extract from the Registrar's Whois database provided by the Clerk's office of eResolution).
On or about August 5, 1999, the Complainant learned that the Respondent had registered the domain name áwwwnationalenquirer.comñ and was using the website to market a pornographic "tabloid for men" (see Complaint, Annex B: screen shot, wwwnationalenquirer.com, 08/04/99). The screen shots attached to the Complaint as Annex B display prominently the title "World Wide Wet National Enquirer". The screen shots also reflect repeated reference to a "tabloid" and a "Headlines Tabloid News For Men". They contain a series of vulgar, sex-related titles as well as a series of photographs and links to a number of pornographic sites. These are found under page headings which read "Extra Extra Read All About It", "Headlines Tabloid News for Men" and "World Wide Wet Enquirer - Tabloid The Internet's First News Tabloid For Men" and "Welcome to the Net's Hottest XXX Adult Sites".
On August 12, 1999, counsel on behalf of the Complainant sent a written notice to the Respondent by certified mail, courier, email and facsimile to the addresses listed in the Registrar's Whois database. The notice was also sent by the same means to the administrative, technical and billing contacts set out in the Registrar's Whois database. The notice sent by counsel for the Complainant alleged that the use of the domain name "www.wwwnationalenquirer.com" violated the trademark rights of the Complainant and demanded immediate termination of the use of the Complainant's trademark (Complaint, Annex: letter to E. Simons, et al. from M. Leotta, 8/12/99). On August 13, 1999, counsel for the Complainant received an "anonymous" reply to his email communication in which the author denied any knowledge of the website complained of by counsel for the Complainant and asked "what proof can you show me that it exists?" (Complaint, Annex: email from lawyersRweasels@hotmail.com, August 13, 1999). The author also denied selling magazines or newspapers and demanded an immediate apology. The message also stated "if your real desire is to acquire the domain in question, I suggest you attempt a reasonable offer, as it will cost your client less than the route you have chosen". The author of the message also indicated that the server logs for the site in question showed "insignificant traffic" and suggested that as a result there would be "no damages".
On August 13, 1999, counsel also received a response from the technical contact for the domain name in dispute. On the same day the web page at the domain name in question was changed so that it linked to another web page offering mp3 music downloads (see Complaint, Annex E: screen wwwnationalenquirer.com 8/13/99).
On August 18, 1999, after an exchange of communication, counsel for the Complainant received a further email from the technical contact for the Respondent. In that message, the technical contact confirmed that he, or the company for which he worked, hosted "wwwnationalenquirer.com for a client" (Complaint, Annex: letter from Nathan Barnes, August 18, 1999). This person directed counsel for the Complainant to the Network Solutions Inc. Whois database for further information on the identity of the registrant of the domain name in question as well as the dispute resolution procedures then administered by Network Solutions Inc.
Counsel for the Complainant replied to this message by email on August 25 advising that he had initiated a complaint with Network Solutions Inc. regarding the disputed domain name and web page. In his message, counsel for the Complainant repeated his request that the technical contact disable the web page in question pending the resolution of the dispute by the Network Solutions dispute resolution process. On August 26, 1999, the technical contact for the Respondent responded that he had "...spoken with the domain owners and explained to them that their best approach is to allow me to disable the domain until the dispute is settled through Network Solutions ...". Some time later the web page was disabled with the result that there is currently no web page operating at "www.wwwnationalenquirer.com".
On August 25, 1999, counsel for the Complainant filed a Complaint with Network Solutions Inc. pursuant to its then current Domain Name Dispute Policy regarding the domain name "www.wwwnationalenquirer.com" (Complaint, Annex: letter to Network Solutions Inc., from M. Leotta, 8/25/26). On November 17, 1999, Network Solutions Inc. wrote to counsel for the Complainant to advise that as a registrar with ICANN, Network Solutions was required to implement a new Dispute Policy mandated by ICANN, effective January 1, 2000. The letter went on to explain that since the Registrar would be unable to administer the Complaint under its current Domain Dispute Policy prior to the effective date of the new ICANN Policy, it declined to invoke its Domain Name Dispute Policy in response to the Complaint. It invited the Complainant to consider the alternatives of awaiting the effective date of the new ICANN Policy or to proceed by way of civil litigation.
On February 24, 2000 the present Complaint was filed with eResolution.
The Domain Name Registration Agreement which applies to the registration of the domain name at issue provides that the registrant agrees, as a condition of registration, that the registrant shall be bound by Network Solutions, Inc.'s then current Dispute Policy. With respect to changes in the Dispute Policy, the Agreement provides as follows:
Registrant agrees that NSI, in its sole discretion, may change or modify the Dispute Policy, incorporated by reference herein, at any time. Registrant agrees that Registrant's maintaining the registration of a domain name after changes or modifications to the Dispute Policy become effective constitutes Registrant's continued acceptance of these changes or modifications. Registrant agrees that if Registrant considers any such changes or modifications to be unacceptable, Registrant may request that the domain name be deleted from the domain name database. (Network Solutions, Inc. - Domain Name Registration Agreement, paragraph D)
Effective January 3, 2000, Network Solutions, Inc. adopted the ICANN Policy. There is no evidence that the Respondent requested that the domain name at issue in this case be deleted from the domain name database. Therefore, the Respondent is bound by the provisions of the ICANN Policy and Rules.
4. Parties' Contentions
(a) The Complainant
The Complainant contends that the Respondent has registered a domain name which is identical or confusingly similar to the Complainant's trademark and trade name, that the Respondent has no rights or legitimate interests in respect of the domain name in question, and that the Respondent has registered and used the domain name in question in bad faith. The Complainant requests as remedy that the domain name at issue be transferred to it. In support of its position, the Complainant offered evidence and detailed argument which are examined below.
(b) The Respondent
The Respondent has not filed a response or otherwise contested the allegations contained in the Complaint.
5. Discussion and Findings
Prior to examining the merits of the Complaint, the Panel wishes to confirm that it has reviewed the steps taken to notify the Respondent of the Complaint and is satisfied that eResolution has discharged its responsibility under paragraph 2(a) of the Rules to take reasonably available means calculated to achieve actual notice to the Respondent. The Clerk's office of eResolution sent the Complaint to all postal-mail and facsimile addresses shown in the domain name's registration data in the Registrar's Whois database for the registered domain name holder, the administrative contact and the technical contact as well as to the address supplied by the Registrar for the registration's billing contact. The Complaint was also sent in electronic form by email to the same addresses. Although the email communications were returned, acknowledgement of receipt by facsimile and registered mail was obtained with respect to the technical contact for the Respondent.
Further, the Panel finds that counsel for the Complainant effectively communicated the Complainant's original complaint to the Respondent by email on or about August 12, 1999. This is evidenced by the "anonymous" response received by counsel to his original demand to cease use of the Complainant's trademark. A review of the letter itself and the circumstances in which it was sent satisfies the Panel that the response was authored by the Respondent. Further, the exchange of email between counsel for the Complainant and the technical contact for the Respondent's domain name, Nathan Barnes, indicates that the Respondent had received effective notice of the Complainant's demand regarding the use of its trademark through Mr. Barnes.
The basis upon which a panel is to decide a Complaint under the Rules, is set out in paragraph 15(a) of those Rules:
A panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
Paragraph 14(a) of the Rules provides that in the absence of exceptional circumstances, a panel is required to proceed to consider and decide a complaint where a party does not comply with a time limit or otherwise participate in the proceedings. Further, paragraph 14(b) provides that in the absence of exceptional circumstances, a panel may draw such inferences as it considers appropriate from the failure of a party to comply with any provision of, or requirement under, the Rules.
Paragraph 4(a) of the ICANN Policy requires that the Complainant, in order to succeed, must prove each of the following:
1. The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2. The Respondent has no rights or legitimate interests in respect of the domain name in issue; and
3. The domain name has been registered and used in bad faith.
The Complainant addresses each of these elements in detail in the Complaint. In the absence of a response or participation by the Respondent, the Panel has not had the benefit of any evidence or argument from the Respondent. However, it has carefully reviewed and tested the evidence and argument tendered by the Complainant.
Identity or Confusing Similarity
It is abundantly clear that the domain name ‹wwwnationalenquirer.com› is identical or confusingly similar to the Complainant's trademark and trade name "National Enquirer". The almost exact duplication of the Complainant's trademark in the context of a "tabloid" or "newspaper for men" suggests that the web page in question was created or sponsored by the National Enquirer and thereby creates additional confusion. The Panel accepts the Complainant's argument that the addition of "www" to the beginning of the domain name does not create a material difference from the Complainant's trademark since "www" is generally recognized as a functional prefix which signifies that a world wide web domain name follows. In this regard, the Panel finds the discussion of the use of the suffix ".com" in Brookfield Communications Inc. v. West Coast Entertainment Corp., 174 F 3rd 1036 (9th Cir. 1999) and the cases cited at p. 1055 particularly helpful. In the Brookfield case, the court finds that because many companies use domain names comprised of ".com" as the top-level domain with their corporate name or trademark as the second level domain, the addition of ".com" was of diminished importance in distinguishing between the trademark "Movie Buff" and the domain name "moviebuff.com". The court concluded that the domain name in question was essentially identical to the trademark. In the Panel's view, similar reasoning applies to the use of "www" in this case.
The Complainant alleges that the Respondent intended to take advantage of the fact that some users, in intending to type the URL to National Enquirer's website, would omit the period following "www", with the result that their computer would automatically insert the "www." prefix. The result would be the entry of "www.wwwnationalenquirer.com" and direction of those users to the Respondent's website. While the Complainant's allegation is plausible, it is not necessary for the Panel to make a finding in this regard in order to conclude that the Respondent's domain name is identical or confusingly similar to the Complainant's trademark. However, the possibility of what the Complainant suggests does add to the confusing similarity between the registrant's domain name and the Complainant's trademark. This is particularly so where both the Complainant and the Respondent offer or purport to offer "newspapers" or "tabloids" on the world wide web.
Therefore, the Panel finds that the requirement of identity or confusing similarity of the Policy, paragraph 4(a)(i) is satisfied.
Rights or Legitimate Interest
The Complainant states that the Respondent has no legitimate interests in respect of the domain name at issue and argues that none of the factors set forth in the Policy, paragraph 4(c), exist. The Panel agrees.
Although it appears that the Respondent used the domain name at issue before notice of the dispute, such use cannot qualify as a bona fide offering of goods or services. In the circumstances, it can fairly be concluded that the Respondent only used the domain name ‹wwwnationalenquirer› to attract Internet users to his website by creating a likelihood of confusion with the Complainant's trademark and domain name and web address. A review of the screen shots of the Respondent's website reflect an attempt to create confusion with the "National Enquirer" mark as to the source, sponsorship or affiliation of the Respondent's website. The repeated reference to "National Enquirer" in conjunction with the use of words connoting a news source or newspaper reflect an attempt to create an impression of affiliation with the National Enquirer.
Further, there was no evidence that the Respondent has been commonly known by the domain name at issue, nor that the Respondent has been making a legitimate non-commercial or fair use of the domain name.
As a result, the Panel finds that the Respondent has no rights or legitimate interest in the domain name and that the requirement of the Policy, paragraph 4(a)(ii) has been met.
With respect to the requirement for registration and use in bad faith, the Complainant maintains that the Respondent intentionally attempted to attract, for commercial gain, Internet users to his own website by creating a likelihood of confusion with the Complainant's "National Enquirer" mark. In the Panel's view, this is a fair conclusion on the basis of the evidence available in this proceeding.
As discussed above, the domain name at issue is identical or confusingly similar to the Complainant's trademark. The screen shots annexed to the Complaint indicate a deliberate attempt to craft a website similar to a tabloid or newspaper such as the National Enquirer. When these conclusions are considered in light of the existence of a world wide web version of the "National Enquirer" and the possibility that Internet users seeking to access the National Enquirer's website might omit the period following "www" in doing so, with the result that their computer would automatically append a "www." prefix, the Panel is led to the conclusion that the domain name at issue was registered and used in bad faith by the Respondent. There was no evidence before the Panel which would indicate a different result. The only statement before the Panel which could be attributed to the Respondent, the "anonymous" letter of August 13, 1999, is consistent with a finding of bad faith.
Although the Panel has been advised that there is no web page currently operating at the website in dispute, this does not affect the Panel's finding that the domain name has been registered and "is being used" in bad faith. The circumstances referred to in paragraph 4(a)(iv) of the Policy as giving rise to bad faith are that "...by using the domain name, you have intentionally attempted to attract, for commercial gain...". The tenses in this subparagraph do not indicate the requirement for an ongoing intentional use. Rather, what is required is that by use of the domain name, a person has intentionally attempted to attract, for commercial gain, Internet users to its website. Further, when the Complainant originally filed a complaint in August of 1999, the Respondent's website was still being used. Its use was only discontinued after the Respondent's technical contact advised that the "domain" would be "disabled" pending resolution of the dispute surrounding the domain name at issue.
Therefore, the Panel finds that the Respondent has registered and is using the domain name at issue in bad faith and that the requirement of the Policy paragraph 4(a)(iii) has been met.
On the basis of the statements and documents submitted and the reasons set out above, the Panel concludes that the domain name ‹wwwnationalenquirer.com› registered by the Respondent is identical or confusingly similar to the trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondent's domain name has been registered and is being used in bad faith. Accordingly, pursuant to paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name ‹wwwnationalenquirer.com› be transferred to the Complainant.
Dated June 12, 2000.
(s) Henri Alvarez