The Republican Co. v. John Bonin

WIPO Arbitration and Mediation Center

ADMINISTRATIVE

PANEL DECISION

The Republican Company v. John Bonin

Case No. D2001-1207

1. The Parties

Complainant is The Republican Company, a corporation located in Springfield,

Massachusetts, USA.

Respondent is John Bonin, an individual located in Springfield, Massachusetts,

USA.

2. The Domain Names and Registrar

The domain names at issue are:

<springfieldunionnews.com>,

<springfieldnewspapers.com>,

<springfielddailynews.com>,

(the "Domain Names").

The registrar is Register.com.

3. Procedural History

This action was brought in accordance with the ICANN Uniform Domain Name Dispute

Resolution Policy, approved October 24, 1999 ("the Policy"), and the ICANN Rules

of Uniform Domain Name Dispute Resolution Policy, approved October 24, 1999

("the Rules").

The Complaint was submitted on October 8, 2001. On October 9, 2001, Register.com

confirmed registration of the Domain Names at issue to the Respondent. The Response

was submitted on October 31, 2001.

On February 6, 2002, the WIPO Arbitration and Mediation Center appointed Mark

V. B. Partridge (Presiding), David M. Kelly, and Mike Rodenbaugh as Panelists.

On February 21, 2002, in accordance with Paragraph 12 of the Rules, the Panel

issued a Procedural Order requesting that Complainant submit additional evidence

by way of affidavit and exhibits as to the nature and extent of its use of the

alleged marks SPRINGFIELD DAILY NEWS, SPRINGFIELD UNION-NEWS and SPRINGFIELD

NEWSPAPERS during the past five years. Both parties made submission in response

to that order.

4. Factual Background

The Complainant is a newspaper publishing company located in Springfield,

Massachusetts. Complainant’s company was incorporated in 1878, but it or its

predecessors in interest have been in the newspapers publishing business since

1824. In 1883, Complainant began publishing a daily newspaper entitled "Springfield

Daily News."

In 1987, Complainant received a Massachusetts State trademark registration

for THE DAILY NEWS. This registration was based on the first use of the mark

in February of 1880. Complainant renewed its registration in THE DAILY NEWS

in 1997. According to the Affidavit of Larry A. McDermott, Complainant's Vice

President, the mark SPRINGFIELD DAILY NEWS was used from 1883 until 1987, when

the name of the paper was changed to SPRINGFIELD UNION-NEWS. Complainant has

continuously published the "Springfield Union News" since 1987. Page

2 of the newspaper has included that statement "Union News (incorporating the

Morning Union and Daily News)" also since 1987.

Complainant applied for and received a Massachusetts State trademark registration

for UNION-NEWS in 1987. Complainant also renewed its registration in UNION-NEWS

in 1997. Currently, Complainant publishes two newspapers, the "Springfield

Union News," and the "Sunday Republican."

On October 2, 2000, Respondent registered the domain names <springfielddailynews.com>,

<springfieldunionnews.com>, and <springfieldnewspapers.com> with

Register.com. Before registering the Domain Names, Respondent claims to have

conducted a trademark search and found no trademark registrations in <springfieldunionnews.com>

or <springfieldunionnews.com>, and an expired trademark registration in

<springfielddailynews.com>.

On April 25, 2001, Complainant’s attorneys sent an electronic mail message

to Respondent claiming Complainant’s trademark rights in "Springfield Daily

News," "Springfield Union News," and "Springfield Newspapers,"

and demanding that Respondent transfer ownership of the domain name <springfieldunionnews.com>

to Complainant. Complainant did not receive a reply to the April 25, 2001, electronic

mail message, and its attorneys sent the same letter to Respondent via Federal

Express on May 16, 2001. After receiving no reply from Respondent to either

April or May correspondence, Complainant’s attorneys sent a final letter to

Respondent on June 15, 2001, notifying Respondent that if Complainant or its

counsel did not hear from the Respondent, legal action would be taken.

5. Parties' Contentions

Complainant contends that the Domain Names are confusingly similar to Complainant’s,

"…business and publication names, state trademark registrations and

common law trademarks." Complainant also contends that Respondent has

no rights or legitimate interest in the Domain Names.

Finally, Complainant contends that Respondent’s registration and use of the

Domain Names is in bad faith because he is primarily using the Domain Names

to disrupt Complainant’s business and intentionally attract Internet users to

his web site by the registration of Domain Names that create a confusion with

Complainant’s marks.

Respondent contends that Complainant’s rights are only in the state registered

marks, THE DAILY NEWS and UNION-NEWS, and these marks "have no relation"

to his Domain Names. Respondent also contends Complainant has no rights in the

term "Springfield" because it is a geographic term and there are at

least twenty-four cities with this same name in the United States.

6. Discussion

A. Confusing Similarity

The domain name <springfieldunionnews.com> is confusingly similar to

the mark SPRINGFIELD UNION NEWS in which Complainant has shown common law rights

through a substantial period of use.

As for the domain name <springfieldnewspapers.com>, Complainant does

not prove sufficient trademark rights in the descriptive phrase SPRINGFIELD

NEWSPAPERS. Indeed, Complainant points to nothing in the record to show that

it used or uses same as a trademark. The sole possible evidence the Panel notes

from the record (a photograph of a "SPRINGFIELD NEWSPAPERS" building

sign in 1969), is insufficient to prove current trademark use, let alone protectable

rights.

We also believe that Complainant has failed to meet its burden of proof with

respect to the Domain Name <springfielddailynews.com>. Complainant admits

that the mark SPRINGFIELD DAILY NEWS has not been used as the name of a paper

since 1987. Under U.S. trademark law, three consecutive years of non-use is

prima facie evidence of abandonment. 15. U.S.C. 1127. To counter that presumption

of abandonment, Complainant cites the fact that page 2 of its newspaper includes

the statement "Union News (incorporating the Morning Union and Daily News)".

Similar evidence was deemed insufficient use to avoid abandonment of trademark

rights in American Photographic Publishing Co. v. Ziff-Davis Publishing Co.,

135 F.2d 569 (7th Cir. 1943), (holding that historical reference

to prior title on magazine masthead did not avoid abandonment of rights). We

agree that more would be necessary to overcome the presumption of abandonment

resulting from Complaint's non-use of the mark. Therefore, on the record before

us, we do not believe Complainant has met its burden of proving current rights

in the mark SPRINGFIELD DAILY NEWS.

We also do not find <springfielddailynews.com> and <springfieldnewspapers.com>

to be confusingly similar to the mark SPRINGFIELD UNION NEWS, the mark in which

Complainant has demonstrated its rights.

Accordingly, we will consider the remaining issues only with respect to the

domain name <springfieldunionnews.com>. Based on the record presented,

Complainant fails to prove sufficient trademark rights as to the descriptive

phrases SPRINGFIELD NEWSPAPERS or SPRINGFIELD DAILY NEWS, which could refer

to any or several of the newspapers in other towns named Springfield. Therefore,

the domain names <springfieldnewspapers.com> and <springfielddailynews.com>

shall remain with Respondent.

B. Legitimate Interest

Complainant avers that it "never granted Respondent the right to use

or register its publication names or … trademarks," and therefore Respondent

has no legitimate interest in the Domain Names. Respondent does not appear to

be commonly known by any of the Domain Names and does not appear to be using

the Domain Names in connection with a bona fide offering of goods and services.

The web sites for each Domain Name merely contain links to Respondent’s electronic

mail address and to sites using the other Domain Names. Two of the sites include

the phrase, "It's great to be in publishing." The phrase on

the third site reads, "It’s good to be in publishing."

We conclude that Respondent lacks any right or legitimate interest in the domain

name <springfieldunionnews.com> which corresponds to Complainant’s publication

name and mark.

C. Bad Faith

There is no evidence that Respondent registered the Domain Names primarily

for the purpose of selling them for profit. The record demonstrates that Respondent

may intentionally use the Domain Names to attract Internet users to his web

sites by creating a likelihood of confusion with Complainant’s publication names

and trademarks, but there is no evidence that he is doing so for commercial

gain.

Nevertheless, other circumstances suggest bad faith. It is inconceivable that

Respondent registered and used the names without knowing that his actions would

prevent Complainant using the name of its newspaper as a domain name. Respondent's

lack of bona fide use of any of the names for other purposes suggests an intent

to warehouse the names until Complainant made a suitable offer. We believe these

circumstances support a finding of bad faith registration and use. Moreover,

given that Respondent has registered three domains directly relating to Complainant's

business, there appears to be a pattern of conduct in which Respondent seeks

to prevent Complainant from using domain names that correspond to the names

by which its business is known. Although we have found that Complainant failed

to prove trademark rights in two of the names, we are satisfied that Respondent's

pattern of registration is indicative of bad faith, especially since Respondent

is a resident of the town where Complainant's papers originate.

7. Conclusion

We find in favor of Respondent on the domain names <springfieldnewspapers.com>

and <springfielddailynews.com>. Complainant has not sufficiently proved

current trademark rights in the descriptive phrases SPRINGFIELD NEWSPAPERS or

SPRINGFIELD DAILY NEWS, and therefore Complainant's demand for transfer of the

domain names <springfieldnewspapers.com> and <springfielddailynews.com>

is denied.

We find in favor of Complainant on the domain name <springfieldunionnews.com>.

The Domain Name is confusingly similar to a mark in which Complainant has rights.

Respondent lacks any right or legitimate interest in the <springfieldunionnews.com>

Domain Name and has registered and used the Domain Name in bad faith. Therefore,

we conclude that the domain name <springfieldunionnews.com> should be

transferred to Complainant.

Mark V. B. Partridge

Presiding Panelist

David M. Kelly

Panelist

Mike Rodenbaugh

Panelist

Dated: March 26, 2002