Newstoday Printers and Publishers (P) Ltd. v. INetU, Inc.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Newstoday Printers and Publishers (P) Ltd. v. InetU, Inc.

Case No. D2001-0085

1. The Parties

The Complainant is Newstoday Printers and Publishers (P) Ltd., of No. 15 Vellala

Street, Kodambakkam, Chennai – 600 024, India.

Represented by T.R. Jawahar, Editor and Publisher of News Today.

The Respondent is InetU, Inc., of 744 Roble Road, Suite 70, Allentown, PA 18103,

United States of America.

Represented by: Ari Goldberger, Esq., of 160 Lucerne Boulevard, Cherry Hill,

NJ 08003, United States of America.

2. The Domain Name and Registrar

The domain name with which this dispute is concerned is: <newstoday.com>.

The Registrar with which the domain name is currently registered is Network

Solutions, Inc., of 505 Huntmar Park Drive, Herndon, Virginia 20170, United

States of America.

3. Procedural History

3.1 The Complaint was filed electronically and in hard copy to the World Intellectual

Property Organization Arbitration and Mediation Center (the "WIPO Center") on

January 17, 2001, and January 22, 2001, respectively.

3.2 On January 24, 2001, the Registrar verified:

(i) that the domain name is registered with it;

(ii) that the current registrant of the domain name is the Respondent;

(iii) that the Registrar's 5.0 Service Agreement is in effect.

(iv) that the domain name is currently in "Active" status;

(v) Respondent's Administrative Contact Billing Contact and Technical Contact

is INetU, Inc. of 744 Roble Road, Suite 70, Allentown, PA 18103, United States

of America.

3.3 On February 5, 2001, and February 12, 2001, in response to notification

of deficiencies from WIPO Center, Complainant filed an Amended Complaint by

e-mail and in hard copy respectively.

3.4 On February 12, 2001, all formal requirements for the establishment of

the Complaint having been checked by the WIPO Center, the Amended Complaint

was found to be in compliance with the applicable ICANN Policy, ICANN Rules

("the Rules") for Uniform Domain Name Dispute Resolution Policy ("the

Policy"), and WIPO’s Supplemental Rules. The Panel has checked the file

and confirms the WIPO Center's finding of proper compliance with the Rules and

establishment of the Complaint.

3.5 On February 14, 2001, the WIPO Center sent the Notification of Complaint

and Commencement of Administrative Proceeding as follows:

(i) by courier, by facsimile and by e-mail to Respondent, the Administrative

Contact, Billing Contact and Technical Contact;

(ii) by e-mail to the postmaster at the domain name.

3.6 The Administrative Proceeding commenced on February 14, 2001, and the Response

was due on March 5, 2001.

3.7 The Response was filed on March 6, 2001, and March 7, 2001, by e-mail and

in hard copy.

3.8 Panelists Mary Padbury and Milton L. Mueller, and Presiding Panelist Desmond J.

Ryan, having filed the Statement of Acceptance and Declarations of Impartiality

and Independence, the Panel was appointed on May 9, 2001.

4. Factual Background

4.1 The domain name was registered on September 24, 1998.

4.2 Complainant is incorporated in India and has, for the past eighteen years,

published an English language evening daily newspaper from Chennai in Tamilnadu,

India under the name and title "News Today".

4.3 The title "News Today" is registered with the Registrar of Newspapers of

India which Complainant asserts is the sole competent authority to register

names and trade marks pertaining to newspapers in India.

4.4 Complainant is the registered owner, in the Indian country code domain,

of the domain name <newstoday.co.in>.

4.5 On September 25, 1998 Complainant registered, presumably with the Registrar

of Newspapers of India, an on-line version of the newspaper, and launched that

on-line version on October 8, 1998. Complainant sought to register, as the domain

name for the on-line site, <newstoday.com>. That name was unavailable,

having been registered one day earlier by Respondent. Complainant therefore

registered its second choice <newstodaynet.com> which is the domain name

which resolves to its on-line version of the paper (Complaint Annexures 5 and

8).

4.6 Complainant exhibits (Complaint Annexures 9A and 9B) an unidentified web

site listing <newstoday.com>, and a number of other domain names as being

for sale.

4.7 On January 1 and 2, 2001, there was a chain of e-mail correspondence between

Srikanthan Jagannathan apparently acting as agent for Complainant, to <info@suncompany.com>

stating:

"From visiting the webpage www.newstoday.com I understand that this domain

name is available for sale. I may have an interest in procuring this domain

name. Can you give me an indicative/expected price figure for this sale?"

To this a reply was received from "Jason Kristofer - <jkristofer@suncompany.com>

stating:

"We are looking in the 6 figures for the name <newstoday.com>. Let

us know if there is anything else we can do."

4.8 Respondent is a U.S. Corporation founded in 1996 and describes itself as

an e-Business application service provider that provides e-Business outsourcing

services including web hosting, dedicated servers, server management, web development

and e-Business solutions. Respondent operates from physical premises at Allentown,

Pennsylvania, and claims to have 1,000 current clients including several well-known

multi-national corporations.

4.9 Respondent asserts that at the time of registration of the domain name,

it had no knowledge of Complainant's newspaper or trade mark, and did not register

the domain name for the purpose of selling it to Complainant or to any other

party.

4.10 Respondent asserts that it registered the domain name for use in respect

of a service to be developed by Respondent together with a customer Jason Kristofer,

which would deliver daily news information to Respondent's clients. Respondent

asserts that it chose the name News Today for that service as a generic name

meaning "new of today" or "today's news".

4.11 Respondent asserts that pending development of the site, Respondent directed

the domain name to Mr. Kristofer's web site.

4.12 Respondent asserts that:

"Mr. Kristofer, unilaterally, without the authorisation, or knowledge, of Respondent,

listed <NEWSTODSAY.COM> for sale on his web site together with 10 other

domain names, only one other of which was owned by Respondent (rated – X.com)

4.13 Respondent further asserts that it has never offered the domain name for

sale to any party and that Mr. Kristofer did not forward to, or otherwise inform

Respondent of the enquiry by Srikanthan Jagannathan, nor did he inform Respondent

of his reply. Respondent asserts that Mr Kristofer is not an employee or agent

of Respondent, and has no rights to the domain name and was never authorised

by Respondent to offer the domain name for sale.

4.14 Respondent has registered approximately 29 domain names, all of which,

Respondent asserts, are generic names.

4.15 Each of the above assertions by Respondent is supported by sworn affidavits

from Jason Kristofer and Dev Chanchani, President of Respondent (Respondent

Annexures 2 and 4).

5. Applicable Dispute

5.1 This dispute is one to which the Policy applies. By registering the domain

name, Respondent accepts the dispute resolution policy adopted by the Registrar.

The Registrar's current policy set out in its domain name registration agreement

is the Policy.

5.2 To succeed in its Complaint, Complainant must show that each of the conditions

of paragraph 4(a) of the Policy are satisfied, namely that:

(i) the domain name is identical or confusingly similar to a trade mark or

service mark in which the Complainant has rights; and

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

and

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

6. The Parties' Contentions

A. Complainant

6.1 Complainant asserts that the domain name is identical to its trade mark

"Newstoday" registered by the Registrar of Newspapers.

6.2 Complainant contends that Respondent does not have any business or trade

that warrants the use of the domain name and does not seem to have anything

to do with the trade, business or profession of news publishing or information

service, and that the site to which the domain name resolves does not carry

any activity or information pertaining to the news business. Respondent has

never been referred to or commonly known by the domain name, and accordingly,

Respondent does not have any legitimate right or interest in the name.

6.3 Complainant contends that since the domain name is now for sale and the

site has been inactive, that is evidence of registration in bad faith. Respondent

refers to the e-mail exchange with Mr. Kristofer as evidence beyond all reasonable

doubt that Respondent had acquired the domain name with the sole idea of selling

it to Complainant or to one of its competitors. Complainant therefore contends

that Respondent has registered and is using the domain name in bad faith.

B. Respondent

6.4 Respondent does not contest that Complainant’s alleged trade mark and the

domain name are identical.

6.5 Respondent contends that it has a legitimate interest in the domain name

because it registered it with the intent of using it for a site offering current

news to its clients and for "promoting marketing" including sending advertising

supported news to users via e-mail. Respondent cites the decision in Case

D2000-0967, Asphalt Technology Inc, v. Anything.com, and contends

that delay in launching does not diminish its rights. Respondent points to the

generic nature of the domain name and cites a number of prior panel decisions

favouring the domain name registrant where the name concerned comprises a common

generic word or name – e.g. CRS Technology Corp. v. Condenet, Inc. Case

No. FA-009 347, EAuto, L.L.C. v. Net Me Up, WIPO

Case D2000-0104, and Shirmax Retail Ltd, v. C.E.S. Marketing, Inc.,

Case AF-0104.

6.6 Respondent contends that Complainant has failed to show bad faith use and

registration by Respondent. Respondent contends that as it had no knowledge

and no basis for knowledge of Complainant's trade mark, there cannot have been

bad faith in its registration.

6.7 Respondent contests Complainant's allegation of bad faith use based on

the attempted sale by Jason Kristofer and refers to Mr. Kristofer's unknown

and unauthorised offering of the domain name for sale.

6.8 Respondent contends in the alternative that in any event an offer to sell

a generic domain name after being contacted by a trade mark holder does not

constitute bad faith. Respondent cites in support a number of panel decisions

including Piper Aircraft, Inc. v. Piper.com, Case No. FA 009 4367.

7. Discussion and Findings

Identical or Confusingly Similar Trade Mark

7.1 The operative part of the domain name consists of Complainant's trade mark

with the words "News" and "Today" run together. Respondent does not contest

that the domain name and the trade mark are confusingly similar. The Panel therefore

finds that the domain name is confusingly similar to a trade mark in which Complainant

has rights and paragraph 4(a)(i) of the Policy is satisfied.

Rights and Legitimate Interests

7.2 Complainant's contention that Respondent does not have any business or

trade that warrants the use of the domain name is rebutted by Respondent who

contends that it registered the domain name, along with a number of other generic

domain names in the course of its business which includes a number of e-Business

activities including web hosting and web development. Respondent further alleges

that it had the intention, and took initial steps, to develop a web site in

conjunction with Jason Kristofer to provide a news service to its clients.

7.3 It appears clear that Respondent conducts a bona fide business and

that it has an established web site and an established physical presence for

its business. Even if that business, in the relevant context here, were to comprise

the registration, for sale, of generic domain names either generally or to its

customers, that would not be an illegitimate use of the domain name. This has

been accepted in a number of prior panel decisions including those cited by

Respondent. Furthermore, in the present case, Respondent's contention that it

planned a joint development with Jason Kristofer in connection with the domain

name, is supported by the sworn evidence of Mr Kristofer himself. In the face

of this sworn testimony and the sworn testimony of Respondent's President and

absent any opportunity to test the credibility of the witnesses, the Panel feels

bound to accept Respondent's assertion. On the face of the record, Respondent

has successfully rebutted Complainant's assertion that Respondent has no rights

or legitimate interests in the domain name.

7.4 The Panel therefore finds that Complainant has failed to satisfy the condition

required by paragraph 4(a)(ii) of the Policy.

Bad Faith Use and Registration

7.5 In the light of the Panel's finding that Complainant has failed to prove

absence of Respondent's right or legitimate interest in the domain name, it

is unnecessary to consider whether bad faith registration and use has been shown.

However, for the record, the Panel notes that in its opinion, having regard

to the generic nature of the domain name and the sworn testimony of Respondent

that it had no knowledge of Complainant or its trade mark at the time of registration,

Complainant's allegation of bad faith use and registration is successfully rebutted

and the condition required by paragraph 4(a)(iii) of the Policy is not satisfied.

8. Decision

8.1 The Panel decides and orders:

(i) The domain name is identical or confusingly similar to a trade mark in

which Complainant has rights;

(ii) Complainant has failed to establish that Respondent has no rights or legitimate

interests in respect of the domain name.

(iii) Complainant has failed to establish that the domain name has been registered

and is being used in bad faith.

(iv) The Complaint is dismissed.

D.J. Ryan

Presiding Panelist

Milton Mueller

Panelist

Mary Padbury

Panelist

Dated: May 23, 2001