Belo Corp. v. Liquidating Domains

WIPO Arbitration and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Belo Corp.

v. Liquidating Domains

Case No.

D2001-0394

1. The Parties

1.1 The Complainant

is Belo Corp., a United States corporation with its principal place of

business located in Dallas, Texas, USA.

1.2 The Respondent

is Liquidating Domains located at 8635 W. Sahara, Las Vegas, Nevada, USA.

2. The Domain Name and

Registrar

2.1 The disputed

domain name is <belocorp.com>.

2.2 The registrar

of the disputed domain name is Network Solutions, Inc. with a business

address in Herndon, Virginia, USA.

3. Procedural History

3.1 Complainant

initiated the proceeding by filing a complaint, received by the WIPO Arbitration

and Mediation Center ("WIPO") on March 19, 2001.

3.2 On April 2,

2001, all formal requirements for the establishment of the complaint were

checked by WIPO and found to be in compliance with the ICANN 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 Domain Name Dispute Resolution Policy (the "Supplemental Rules").

The Panel accepts the WIPO checklist as evidence of proper compliance

with the Policy, Rules, and Supplemental Rules.

3.3 On April 2,

2001, WIPO transmitted notification of the complaint and commencement

of the proceedings to Respondent.

3.4 On April 24,

2001, WIPO transmitted notification to Respondent of its default in responding

to the complaint.

3.5 On April 27,

2001, WIPO invited the undersigned to serve as panelist in this administrative

proceeding, subject to receipt of an executed Statement of Acceptance

and Declaration of Impartiality and Independence ("Statement and Declaration").

On April 27, 2001, the undersigned transmitted by facsimile the executed

Statement and Declaration to WIPO.

3.6 On May 1,

2001, Complainant and Respondent were notified by WIPO of the appointment

of the undersigned sole panelist as the Administrative Panel (the "Panel")

in this matter. WIPO notified the Panel that, absent exceptional circumstances

it would be required to forward its decision to WIPO by May 15, 2001.

The Panel has not received

any further requests from Complainant or Respondent regarding further submissions,

waivers or extensions of deadlines, and the Panel has not found it necessary

to request any further information from the parties. The proceedings have

been conducted in English.

4. Factual Background

4.1 Complainant

Belo Corp. owns the trademark and service mark BELO for providing media

related services and publications with a claimed first use as early as

1842.

4.2 Complainant

Belo Corp. has filed trademark applications for BELO INTERACTIVE, BELO

MEDIA SOLUTIONS and BELO MEDIA SOLUTIONS & Design prior to February

9, 2000.

4.3 Complainant

Belo Corp. also registered the domain name <belo.com> on April 8, 1996.

The domain name is used to host a web site for Belo Corp. The mark BELO

is displayed prominently on the web site.

4.4 At least as

early as March 9, 2001, the Respondent operated a web site located at

<belocorp.com> which offered the domain name for sale. Respondent's

web site is no longer active.

5. Parties’ Contentions

A. Complaint

Complainant states:

"Complainant

is one of the largest media companies in the United States with approximately

$1.5 billion (USD) in revenue. Complainant operates a diversified

group of television broadcasting, newspaper publishing, cable news

and interactive media assets in markets throughout the United States.

Complainant has been using the trade name "BELO" alone, and in combination

with other components, for providing media-related services since

at least as early as 1842."

"Complainant

has been using the trade name "BELO" and the trade mark "BELO,"

alone and in combination with other components, including but not

limited to, U.S. Trademark Application No. 75/914,433 for the mark

"BELO INTERACTIVE" in international class 42 for "designing,

implementing and maintaining web pages for others; hosting web sites

of others for a global computer network" and U.S. Application

Nos. 75/909,342 and 75/909,258 for the marks "BELO MEDIA SOLUTIONS"

and "BELO MEDIA SOLUTIONS" & Design both in international

class 35 for "preparing, placing, providing and dissemination

of advertising for others in multimedia combination packages via one

or more of the following media – global computer network, printed

publications, television, cable television and radio" (the "Marks"

or "Complainant’s Marks"), since at least as early as 1842.

Complainant’s Marks and Complainant’s Domain Names have been and are

recognized by the public and the industry as originating from a single

source, namely Complainant, and Complainant’s Marks and Complainant’s

Domain Names serve to distinguish Complainant’s services from the

services of others."

"Complainant

is also the owner of numerous related domain names, including but

not limited to, belo.com, registered on April 8, 1996, and

belointeractive.com, belointeractive.net, belointeractive.org,

beloonline.com, beloonline.net, beloonline.org,

beloenterprises.com, beloenterprises.net, beloenterprises.org,

beloonlineinc.com, beloonlineinc.net, and beloonlineinc.org

(collectively, "Complainant’s Domain Names")."

"Complainant,

through its significant efforts, skills and experience, has acquired

and enjoys substantial goodwill and a valuable reputation through

Complainant’s distinctive Marks. The maintenance of high standards

of quality and excellence for Complainant’s services has contributed

to this valuable goodwill and reputation."

"Complainant

has expended and continues to expend a significant amount of time

and money to advertise and promote Complainant’s services through

its distinctive Marks."

"Complainant

asserts that the domain name owned by Respondent for belocorp.com

infringes the rights of Complainant in and to its Marks, the mark

"BELO CORP" and Complainant’s Domain Names."

"On December

28, 2000, Complainant issued a press release entitled "Belo Officially

Changes Name from A. H. Belo Corporation to Belo Corp." This

press release was issued through the PR Newswire and may still be

found at prnewswire.com."

"The Network

Solutions Whois Registry shows that Respondent registered the domain

name belocorp.com on the same day as the press release

issued, December 28, 2000."

"Complainant

subsequently became aware that the domain name belocorp.com

had been registered by Respondent. Upon visiting the web site located

at belocorp.com, Complainant found the page states "[t]he

domain name that has brought you to this website is no longer in use.

Therefore, as we are no longer using it, it is now for sale.""

"Respondent’s

domain name is clearly confusingly similar to Complainant’s Marks

and Domain Names. Respondent’s domain name belocorp.com is

identical to Complainant’s mark "BELO CORP." Additionally,

prior Panel decisions have ignored the domain name suffix when analyzing

the domain name for confusing similarity. Therefore, without the ".com"

suffix, Respondent’s domain name is identical to Complainant’s Mark."

"The Respondent

has no rights or legitimate interest in the domain name belocorp.com

for at least the following reasons: (i) Despite a statement to the

contrary on its web site, Respondent has not used or prepared to use

the domain name belocorp.com in connection with a bona fide

offering of goods or services; (ii) Respondent does not offer goods

or services related to "BELO" nor is Respondent related

to Complainant; and (iii) Respondent’s domain name does not reflect

the name of its corporate identity. Instead, Respondent’s own name

"LIQUIDATING DOMAINS" evidences that Respondent’s only interest

in the domain name is to deprive the owner of the domain name and/or

to sell the domain name and make a profit from such sale."

"The domain

name belocorp.com should be considered as having been registered

and used in bad faith for at least the following reasons:

(1) Respondent

has registered the domain name belocorp.com in order

to prevent the owner of the trademark/service mark from reflecting

the mark in a corresponding domain name and has engaged in a

pattern of similar conduct with other mark owners. For example,

in addition to the registration of belocorp.com, Respondent

is also the registrant of carlsbergasia.com, vivendionline.com,

dingoblueonline.com, corixacorporation.com, corixaonline.com

and dendritejapan.com. The Whois information for each

of these domain names shows Respondent, Liquidating Domains,

as the registrant and H. Wilson, of Liquidating Domains, as

the administrative contact. Additionally, "CARLSBERG"

is a U.S. registered trademark of Carlsberg Breweries Corporation;

"VIVENDI" is a U.S. registered trademark of Vivendi

Corporation; "DINGO BLUE" is an Australian registered

trademark of Dingo Blue Pty. Limited; "CORIXA" is

a U.S. registered trademark of Corixa Corporation; and "DENDRITE"

is a U.S. registered trademark Dendrite International, entities

that do not appear (by comparing address and other identifying

information) to be related to "H. Wilson" or "LIQUIDATING

DOMAINS."

(2) Respondent

registered the domain name belocorp.com on the same day

that Complainant issued its formal press release regarding its

name change to BELO CORP. In addition to this remarkable coincidence

in thought between Complainant and Respondent, Respondent was

apparently at least deceptive at the web page for belocorp.com,

wherein Respondent states that "the domain name that has

brought you to this website is no longer in use." Additionally,

this same notice is also posted on the web sites for Respondent’s

other registered domain names, carsbergasia.com, vivendionline.com,

dingoblueonline.com, corixaonline.com, corixacorporation.com,

and dendritejapan.com. It seems highly unlikely that

each of these domain names, which also incorporate the registered

trademarks of unrelated third party entities, were actually

web sites wherein Respondent offered legitimate goods or services

related to those names. Additionally, Respondent’s own name

"LIQUIDATING DOMAINS," strongly suggests that Respondent’s

true motivation for registering these domain names was to sell

them for a profit.

(3) Complainant

recognizes that the mere registration of multiple domain names

does not necessarily indicate a pattern of bad faith on the

part of a registrant. However, the Panel in Bellevue Square

Managers, Inc. v. Web, WIPO Case No. D2000-0056,

held that the registration of just three domain names, all incorporating

third party marks, was a "sufficient basis for the inference

to be drawn that a pattern of conduct exists." A search

by Network Solutions, Inc. revealed that "H. Wilson"

is the administrative contact for almost 150 domain names. Therefore,

by registering the domain name at issue belocorp.com,

as well as carsbergasia.com, vivendionline.com,

dingoblueonline.com, corixaonline.com, corixacorporation.com,

and dendritejapan.com, among others, Complainant respectfully

asserts that Respondent has registered same in bad faith by

establishing a pattern of registering domain names in order

to prevent the owner of the trademark or service mark from reflecting

the mark in a corresponding domain name. Indeed, the U.S. Court

of Appeals for the First Circuit recently held that a registrant’s

ownership of numerous domain names similar to famous trademarks

suggested bad faith under the U.S. Anticybersquatting Consumer

Protection Act. Northern Light Technology Inc. v. Northern

Lights Club, No. 00-1641."

B. Response

Respondent did not

file a response to the complaint.

6. Discussion and Findings

6.1 The Uniform

Domain Name Dispute Resolution Policy (the "Policy"), adopted

by the Internet Corporation for Assigned Names and Numbers (ICANN) on

August 26, 1999, (with implementing documents approved on October

24, 1999), is addressed to resolving disputes concerning allegations of

abusive domain name registration. The Panel will confine itself to making

determinations necessary to resolve this administrative proceeding.

6.2 It is essential

to dispute resolution proceedings that fundamental due process requirements

be met. Such requirements include that a respondent have notice of proceedings

that may substantially affect its rights. The Policy, and the Rules for

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

establish procedures intended to assure that respondents are given adequate

notice of proceedings commenced against them, and a reasonable opportunity

to respond (see, e.g., paragraph 2(a) of the Rules).

6.3 WIPO forwarded

notification of the complaint to the Respondent and its separate administrative

and technical contacts via post/courier and email in accordance with the

contact details found in the appropriate WHOIS database. WIPO also forwarded

notification of default to the Respondent and its administrative and technical

contacts via email.

6.4 Based on the

methods employed to provide the Respondent with notice of the complaint

and default, including forwarding notification of the complaint and the

default to Respondent's technical contact, the Panel is satisfied that

WIPO took all steps reasonably necessary to notify the Respondent of the

filing of the complaint and initiation of these proceedings. The Panel

also finds that the failure of the Respondent to furnish a reply is not

due to any omission by WIPO.

6.5 Paragraph

4(a) of the Policy sets forth three elements that must be established

by a Complainant to merit a finding that a Respondent has engaged in abusive

domain name registration, and to obtain relief. These elements are that:

(i) Respondent’s

domain name is identical or confusingly similar to a trademark or

service mark in which the complainant has rights; and

(ii) Respondent

has no rights or legitimate interests in respect of the domain name;

and

(iii) Respondent’s

domain name has been registered and is being used in bad faith.

In the administrative

proceeding, the Complainant must prove that each of these three elements

are present.

6.6 Complainant

asserts that the domain name <belocorp.com> is likely to be confused

with Complainant's trademark and service marks BELO.

6.7 As the Respondent

has failed to submit a response to the complaint, the Panel may accept

as true all of the allegations of the complaint. Talk City, Inc.

v. Michael Robertson, WIPO Case No. D2000-0009, February 29, 2000.

6.8 The Panel

finds the <belocorp.com> domain name is legally identical and confusingly

similar to the BELO common law mark, and that the Complainant has established

it has rights in the mark BELO, pursuant to paragraph 4(a)(i) of the Policy.

The inclusion of the generic terms "corp" and .com" in

the domain name in dispute has little, if any, affect on a determination

of legal identity between the domain name and the mark. Quixtar Investments,

Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253, May 29, 2000.

6.9 Based upon

the continuous use of the BELO trademark and service mark, the Panel also

finds that the <belocorp.com> domain name is confusingly similar

to the Complainant's common law BELO trademark and service mark.

6.10 Paragraph

4(c) of the Policy lists several circumstances, without limitation, that

if found by the Panel shall demonstrate the Respondent's rights or legitimate

interests to the domain name for purposes of paragraph 4(a)(ii). In particular,

paragraph 4(c) states:

(i) before

any notice to you [Respondent] of the dispute, your 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; or

(ii) you

(as an individual, business, or other organization) have been commonly

known by the domain name, even if you have acquired no trademark

or service mark rights; or

(iii) you

are 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.

6.11 The length

of time the mark has been used, the amount of advertising conducted and

the popularity of Complaint's services offered under the BELO mark leads

to the conclusion that Respondent was or certainly should have been aware

of the mark prior to registering the domain name. Expedia, Inc.

v. European Travel Network, WIPO Case No. D2000-0137, April 18,

2000.

6.12 There is

no evidence in the record that would indicate that Respondent has any

rights or legitimate interests in respect of the domain name <belocorp.com>.

6.13 The Panel

finds that the Respondent has no rights or legitimate interests in respect

of the domain name <belocorp.com>, pursuant to paragraph 4(a)(ii)

of the Policy.

6.14 Paragraph

4(b) of the Policy lists several factors, without limitation, that if

found by the Panel to be present, shall be evidence of the registration

and use of a domain name in bad faith. In particular, paragraph 4(b)(i)

states:

(i) circumstances

indicating that you have registered or you have acquired the domain

name primarily for the purpose of selling, renting, or otherwise

transferring the domain name registration to the complainant who

is the owner of the trademark or service mark or to a competitor

of that complainant, for valuable consideration in excess of your

documented out-of-pocket costs directly related to the domain name.

6.15 The only

use of record by Respondent of the domain name <belocorp.com> was

to offer the domain name for sale. See Exhibit F from Complaint

(hard copy).

6.16 Respondent

registered the domain name <belocorp.com> on the same day that Complainant

announced a name change from A. H. Belo Corporation to Belo Corp.

6.17 Respondent

has registered other domain names, <carlsbergasia.com>, <vivendionline.com>,

<dingoblueonline.com>, <corixaonline.com>, <corixacorporation.com>,

and <dendritejapan.com>, all of which contained the same notice

offering the domain name for sale, as was posted on the web site <belocorp.com>.

See Complaint paragraph C. (2) pages 8-9 and Exhibit F.

6.18 Respondent’s

own name, Liquidating Domains, is suggestive that Respondent’s only interest

in the domain name is to deprive the trademark owner of the domain name

and/or sell the domain name and make a profit from such a sale. Microsoft

Corporation v. Amit Mehrota, WIPO Case No. D2000-0053, April

10, 2000.

6.19 In the absence

of contrary evidence, Respondent’s registration of the domain name <belocorp.com>

on the same day that Complainant changed its corporate name to Belo Corp.,

Respondent’s name Liquidating Domains suggesting that Respondent is in

the business of selling domain names and Respondent’s web pages offering

<belocorp.com>, along with other domain names, for sale are evidence

of registration and use in bad faith.

6.20 The Panel

finds that the Respondent acquired the domain name <belocorp.com>

primarily for the purpose of selling the domain name registration to the

complainant who is the owner of the trademark and service mark BELO. Therefore,

the Panel finds that the Complainant has established that the Respondent

registered and used the domain name <belocorp.com> in bad faith,

pursuant to paragraph 4(b)(i) of the Policy.

7. Decision

As the Complainant,

Belo Corp., has established that the Respondent, Liquidating Domains, has

engaged in abusive registration of the domain <belocorp.com> within

the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain

name <belocorp.com> be transferred to the Complainant.

R. Eric

Gaum

Sole Panelist

Dated: May

15, 2001

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