Gannett Co., Inc. v. Henry Chan

WIPO Arbitration and

Mediation Center

ADMINISTRATIVE PANEL

DECISION

Gannett Co., Inc.

v. Henry Chan

Case No. D2004-0117

1. The Parties

The Complainants are Gannett Co., Inc., and each of its subsidiaries that have

ownership rights in the trademarks at issue, of Reno, Nevada, United States

of America, represented by Dow, Lohnes & Albertson, PLLC, United States

of America.

The Respondent is Henry Chan, of Nassau, Bahamas.

2. The Domain Names and Registrar

The disputed domain names:

<arizonarepblic.com>

<arizonarepublicjobs.com>

<artusatoday.com>

<ashvillecitizentimes.com>

<bagannet.com>

<burlingtonfreeprees.com>

<cincinnatienqurier.com>

<citizenstimes.com>

<clarinledger.com>

<clarionledgar.com>

<clarionledge.com>

<claronledger.com>

<courialjournal.com>

<couriorpost.com>

<couriorpostonline.com>

<courrierpost.com>

<democratandchroncile.com>

<democratandcronical.com>

<democrateandchronical.com>

<democratechronicle.com>

<demoinesregister.com>

<desmoinsregister.com>

<gannetnews.com>

<greenbaypressgazett.com>

<greenvillnews.com>

<jacksonclarionledger.com>

<lifeusatoday.com>

<montgomeryadvertisor.com>

<montgomeryadvertizer.com>

<pensacolanewsjournel.com>

<renogazzettejournal.com>

<rockfordregistarstar.com>

<rockfordstar.com>

<springfieldnewleader.com>

<stargazett.com>

<statesmansjournal.com>

<tenesseean.com>

<tennesian.com>

<tennesseeian.com>

<tennesseian.com>

<theburlingtonfreepress.com>

<thecoloradoan.com>

<thedailytowntalk.com>

<themontgomeryadvertiser.com>

<theoshkoshnorthwestern.com>

<thepostcrescent.com>

<therocklandjournalnews.com>

<thetennessan.com>

<westchesterjournalnews.com>

are registered with iHoldings.com Inc. d/b/a DotRegistrar.com

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center")

on February 13, 2004. On February 16, 2004, the Center transmitted

by e-mail to iHoldings.com Inc. d/b/a DotRegistrar a request for registrar verification

in connection with the domain names at issue. iHoldings.com Inc. d/b/a DotRegistrar.com

transmitted by e-mail to the Center its verification response confirming that

the Respondent is listed as the registrant and providing the contact details

for the administrative, billing, and technical contact. The Center verified

that the Complaint satisfied the formal requirements of the 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 Uniform Domain Name Dispute Resolution Policy (the "Supplemental

Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally

notified the Respondent of the Complaint, and the proceedings commenced on February 20, 2004.

In accordance with the Rules, paragraph 5(a), the due date for Response was

March 11, 2004. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default.

The Center appointed Christiane Féral-Schuhl as the sole panelist in

this matter on March 25, 2004. The Panel finds that it was properly

constituted. The Panel has submitted the Statement of Acceptance and Declaration

of Impartiality and Independence, as required by the Center to ensure compliance

with the Rules, paragraph 7.

4. Factual Background

The Complainants are the owners of the following United States federal registrations,

which are used through trademark licenses for newspaper titles: ARIZONA REPUBLIC

(Reg. No. 2,136,804), ASHEVILLE CITIZEN-TIMES (Reg. No. 2,017,084), THE CINCINNATI

ENQUIRER (Reg. No. 2,302,203), THE CLARION-LEDGER (Reg. No. 2,365,928), COURIER-POST

(Reg. No. 2,752,629), COURIER-POST ONLINE (Reg. No. 2,243,458), THE COURIER-JOURNAL

(Reg. No. 2,304,262), DEMOCRAT AND CHRONICLE (Reg. No. 2,359,626), THE DES MOINES

REGISTER & DESIGN (Reg. No. 1,249,840), FORT COLLINS COLORADOAN (Reg. No.

2,781,581), GREEN BAY PRESS-GAZETTE (Reg. No. 2,794,129), THE GREENVILLE NEWS

(Reg. No. 2,320,946), THE JOURNAL NEWS (Reg. No. 2,267,383), MONTGOMERY ADVERTISER

(Reg. No. 2,781,572), THE POST-CRESCENT (Reg. No. 2,755,824), RENO GAZETTE-JOURNAL

(Reg. No. 2,323,740), ROCKFORD REGISTER STAR (Reg. No. 2,320,943), SPRINGFIELD

NEWS-LEADER (Reg. No. 2,677,658), THE TENNESSEAN (Reg. No. 2,285,589) and USA

TODAY (Reg. No. 1,332,045).

The Complainants have also acquired common law rights in the following trademarks

based on the Complainants long, continuous and exclusive use: THE BURLINGTON

FREE PRESS, THE ARIZONA REPUBLIC, THE DES MOINES REGISTER, OSHKOSH NORTHWESTERN,

PENSACOLA NEWS JOURNAL, STAR-GAZETTE, STATESMAN JOURNAL, and THE TOWN TALK.

The Complainants’ newspapers and websites are well-known in their respective

regions and throughout the United States.

The Complainant, Gannett Co. Inc., is the owner of the GANNETT trademark and

currently owns a number of United States federal registrations and pending applications

for trademarks that include the GANNETT mark and operates a website at the domain

name <gannett.com> since 1996.

When a visitor types in the contested domain names, he or she is directed to

a portal site which directs the visitor to links to third party commercial websites

in a variety of areas, including newspaper websites that are in direct competition

with the Complainants’ newspapers.

On February 28, 2002, counsel for the Complainants sent a demand

letter via Federal Express and e-mail to the Respondent at his then-listed address

in Hung Hom, Hong Kong, and his email address, demanding that the Respondent

cease his use of the domain name <ashvillecitizentimes.com> and transfer

this domain name to the Complainant, the Asheville Citizen Times. The FedEx

package was returned as undeliverable, and counsel for the Complainants did

not receive a response to the e-mail. On May 15, 2003, counsel for

the Complainants sent a second demand letter via Federal Express to the Respondent

at his then-listed address at the Cheung Tat Centre, Chai Wan, Hong Kong. This

FedEx package was also returned as undeliverable.

5. Parties’ Contentions

A. Complainant

The Complainants indicate that they either own registration certificates or

have common law rights in the trademarks on which their complaint is based.

The Complainants explain that all the contested domains are identical or confusingly

similar to their trademarks. The Complainants explains that in some cases:

- the only difference between their marks and the corresponding domain names

is the addition of the ".com" generic top-level domain and the deletion

of the hyphens in Complainants’ marks, both of which are irrelevant (Draw-Tite,

Inc. v. Plattsburgh Spring Inc., WIPO

Case No. D2000-0017, March 14, 2000);

- the Respondent has either added or deleted a generic or descriptive term

(e.g. "jobs", "daily", "register", "the",

"art" or "life"), and that such addition or deletion of

an ordinary generic or descriptive term does not prevent the domain names from

being confusingly similar to the Complainants’ marks (Royal Bank of Canada

v. Henry Chan, WIPO Case No. D2003-0031,

March 5, 2003; Sony Kabushiki Kaisha v Inja, Kil, WIPO

Case No. D2000-1409, December 9, 2000; Bedford Fair Apparel,

Inc. v. Henry Chan, Claim No. FA 157322, June 20, 2003.);

- the Respondent has added (or deleted) the applicable geographic identifiers

and that it is well established that a domain name consisting of a (locally)

well-known mark, combined with the applicable geographically descriptive term

or phrase, is confusingly similar to the mark, as stated in America Online,

Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713,

August 24, 2000; The Field Museum of Natural History v. John Barry

d/b/a Buy This Domain, Claim No. FA 114354, June 28, 2002;

- the contested domain names consist of a second-level domain name that either

drops out, replaces or switches one or more letters of the Complainants’ marks

in a manner that creates common misspellings of the Complainants’ marks. Such

misspellings are likely to be confused with the Complainants’ marks and in such

cases, panels have already decided for the transfer (CimCities, LLC v. Party

Night, Inc., WIPO Case No. D2002-0613,

August 16, 2002; Microsoft Corporation v. Microsof.com aka Tarek

Ahmed, WIPO Case No. D2000-0548, July 21, 2000;

Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, WIPO

Case No. D2000-0578, August 28, 2000).

The Complainants also explain that in some cases, the Respondent has registered

domain names which cumulate two or three of the modifications mentioned above.

According to the Complainants, the Respondent has no rights or legitimate interests

in the domain names as the Respondent has registered the domain names without

the authorization, knowledge or consent of the Complainants. The Complainants

specify that the Respondent is not a licensee of the Complainants, nor is he

authorized to use the Complainants’ marks. The Complainants state that such

a situation creates a presumption that the Respondent cannot establish that

it has rights or any legitimate interest in the domain names, as in Guerlain

S.A. v. SL, Blancel Web, WIPO Case No.

D2000-1191, November 21, 2000, and Nilfisk-Advance A/S v. Leong

Tak Lang, WIPO Case No. D2000-1299,

December 27, 2000.

In addition, the Complainants explain that the Respondent’s use of the domain

names to misdirect potential visitors to third party commercial websites is

not a bona fide use of the domain names, and does not constitute a legitimate,

non-commercial use of the domain names under the Policy (MBNA America Bank,

N.A. v. Vertical Axis, Inc., Claim No. FA0211000133632, January 6, 2003;

The George Washington University v. Domain World a/k/a Domains For Sale a/k/a

John Barry, Claim No. FA0208000122140, October 14, 2002). Moreover,

at least some of the websites that are prominently linked to the Respondent

feature third party newspapers or newspaper products that are in direct competiton

with Complainants’ newspapers (Bedford Fair Apparel, Inc. v. Henry Chan,

Claim No. FA0305000157322, June 20, 2003).

Finally, the Complainants insist on the fact that the Respondent cannot establish

rights in the contested domain names because it has never been commonly known

by the domain names and has not acquired trademark or service mark rights in

the domain names (Gallup Inc. v. Amish Country Store, Claim No. FA010000096209,

January 23, 2001; Compagnie de Saint Gobain v. Com-Union Corp.,

WIPO Case No. D2000-0020, March 14, 2000).

As far as bad faith is concerned, the Complainants indicate that the Respondent’s

registration of the contested domain names that are identical or nearly identical

to the Complainants’ federally registered marks and his use of those domain

names in a manner that deliberately prevents Complainants from using their marks

as a domain name is evidence of the Respondent’s bad faith (J. Crew International,

Inc. v. crew.com, WIPO Case No. D2000-0054,

February 16, 2000; Henry Ford Health System v. Domain For Sale,

Inc., FA0203000105976 April 30, 2002).

According to the Complainants, the Respondent’s use of the domain names to

misdirect potential visitors to the Complainants’ websites to Respondent’s commercial

website and to other third party commercial websites, for which Respondent presumably

receives compensation, is also evidence that the Respondent registered the domain

names to deceptively attract and then misdirect Internet users for the Respondent’s

own commercial gain (The George Washington University v. Domain World a/k/a

Domains For Sale a/k/a John Barry, Claim No. FA0208000122140; October 14, 2002).

In addition, the Complainants insist on the past behavior of the Respondent,

which is a well-known cybersquatter, such being evidence of bad faith use (LTD

Commodities LLC v. Henry Chan, Claim No. FA0303000152617, May 8, 2003;

Pioneer Hi-Bred International, Inc. v. Henry Chan, Claim No. FA0304000154119,

May 12, 2003; Royal Bank of Canada v. Henry Chan, WIPO

Case No. D2003-0031, March 5, 2003).

Finally, the Complainants specify that the Respondent has carried out "typosquatting",

which is in itself evidence of bad faith registration and use under the Policy.

See Nat’l Ass’n of Prof’l Baseball Leagues Inc., v. Zuccarini, WIPO

Case No. D2002-1011, January 21, 2003).

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

As a preliminary finding, the Panel notes that the fact there are multiple

Complainants in this proceeding with interests in the trademarks at issue does

not prevent the Panel from examining the case as there is only one single Respondent

for all the domain names. In addition, all Complainants have the same parent

company. Previous panels have also decided to examine such similar cases (NFL

Properties, Inc. et al. v. Rusty Rahe, WIPO

Case No. D2000-0128, April 26, 2000; Mucos Emulsions, GmbH

and Marlyn Nutraceuticals v. Esex.org and Kim Taeho, WIPO

Case No. D2000-1513, April 12, 2001).

A. Identical or Confusingly Similar

It is well established under the Policy that the concept of rights in a trademark

does not necessarily mean a complainant must own a registered trademark. Common

law rights may be sufficient to support a domain name complaint under the Policy

(Brooklyn Institute of Arts and Sciences v. Fantastic Sites, Inc., Case

No. FA 95560, November 2, 2000).

As a consequence, the panel finds that the Complainants have met their burden

of proof regarding their rights in the trademarks on the basis of which the

complaint has been filed.

Regarding identity or confusing similarity, the Panel notes that it is well

established under the Policy that the addition of the ".com" generic

top-level domain, the deletion of the hyphens, or other non-significant modifications

to the complainant’s marks do not prevent confusing similarity (e.g. Draw-Tite,

Inc. v. Plattsburgh Spring Inc., WIPO

Case No. D2000-0017, March 14, 2000).

The Panel emphasizes that the misspelling of a trademark registered as a domain

name is in itself a confusing similarity (CimCities, LLC v. Party Night,

Inc., WIPO Case No. D2002-0613, August 16, 2002;

Microsoft Corporation v. Microsof.com aka Tarek Ahmed, WIPO

Case No. D2000-0548, July 21, 2000; Dow Jones & Company,

Inc. and Dow Jones LP v. John Zuccarini, WIPO

Case No. D2000-0578, August 28, 2000).

The Panel also recalls that in numerous cases, it has been stated that a domain

name that wholly incorporates a complainant’s mark may be sufficient to establish

confusing similarity for purposes of the Policy. As an example, in A. Nattermann

& Cie Gmbh, Aventis Pharma SA v. Derrick Horner, WIPO

Case No. D2003-0844, the panel stated that ""Direct" being

a generic word, the dominant element remains "lipostabil" (…)

In other words, the mere addition of the word "direct" has not such an influence

upon the overall impression that it would exclude the likelihood of confusion

between the domain name and the Complainant’s trademarks."

In addition, it is well established that a domain name consisting of a well

known mark, combined with a geographically descriptive term or phrase, is confusingly

similar to the mark, as stated in America Online, Inc. v. Dolphin@Heart,

WIPO Case No. D2000-0713, August 24, 2000;

The Field Museum of Natural History v. John Barry d/b/a Buy This Domain,

Claim No. FA 114354, June 28, 2002.

As a consequence, in the present case, the panel finds that all the contested

domain names, in one way or another, are confusingly similar to the Complainants’

trademarks.

B. Rights or Legitimate Interests

Paragraph 4(a)(c) of the Policy explains how a Respondent may demonstrate its

rights to and legitimate interests in a domain name in responding to a complaint.

In the present matter, the Respondent has not filed any response.

As a consequence, it has not been proven that the Respondent is either affiliated

to the Complainant or an official dealer.

It has not been proven either that there is a legal or business relationship

between the parties.

The Complainant denies that any relationship of such kind ever existed.

As a consequence, such as in the "Telstra" decision (Telstra Corporation

Limited v. Nuclear Marshmallows, WIPO

Case No. D2000-0003, February 18, 2000), it can be stated that:

"Respondent has not provided evidence of circumstances of the type specified

in paragraph 4(c) of the Uniform Policy, or of any other circumstances giving

rise to a right to or legitimate interest in the domain name. In light of (i)

the fact that the Complainant has not licensed or otherwise permitted the Respondent

to use any of its trademarks or to apply for or use any domain name incorporating

any of those marks, and (ii) the fact that the word "TELSTRA" appears

to be an invented word, and as such is not one traders would legitimately choose

unless seeking to create an impression of an association with the Complainant,

the Administrative Panel finds that the Respondent has no rights or legitimate

interests in the domain name."

The facts brought to the Panel’s attention in WIPO

Case No. D2000-0003 are similar to those in the present dispute regarding

the test of paragraph 4(a)(c) of the Policy.

Hence, the Panel finds that in the present case there is no proof that the

Respondent has a right or legitimate interest in the contested domain name.

C. Registered and Used in Bad Faith

As far as bad faith is concerned, thePpanel notes that the Respondent obviously

knew the Complainants’ trademarks when registering the domain names as in many

cases, the Respondent just misspelled the Complainants’ trademarks, added a

generic term or the name of a geographical area to these trademarks. In some

other cases, the Respondent just added an hyphen.

In order to make such modifications to the Complainants’ trademarks, the Respondent

necessarily knew these trademarks prior to registering the contested domain

names.

The Panel also notes the impressive number of domain names registered by the

Respondent which are all confusingly similar to the Complainants’ trademark,

which obviously means that the Respondent is engaged in a pattern of conduct

consisting of registering third parties trademarks as domain names.

In addition, the Respondent is a well-known cybersquatter as Henry Chan

was also the Respondent in several transfer decisions before the present proceeding:

LTD Commodities LLC v. Henry Chan, Claim No. FA0303000152617, May 8, 2003;

Pioneer Hi-Bred International, Inc. v. Henry Chan, Claim No. FA0304000154119,

May 12, 2003; Royal Bank of Canada v. Henry Chan, WIPO

Case No. D2003-0031, March 5, 2003.

As a consequence, the Panel considered that the Respondent’s conduct constitutes

bad faith registration and bad faith use of the contested domain names.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy

and 15 of the Rules, the Panel orders that the domain names:

<arizonarepblic.com>, <arizonarepublicjobs.com>, <artusatoday.com>,

<ashvillecitizentimes.com>, <bagannet.com>, <burlingtonfreeprees.com>,

<cincinnatienqurier.com>, <citizenstimes.com>, <clarinledger.com>,

<clarionledgar.com>, <clarionledge.com>, <claronledger.com>,

<courialjournal.com>, <couriorpost.com>, <couriorpostonline.com>,

<courrierpost.com>, <democratandchroncile.com>, <democratandcronical.com>,

<democrateandchronical.com>, <democratechronicle.com>, <demoinesregister.com>,

<desmoinsregister.com>, <gannetnews.com>, <greenbaypressgazett.com>,

<greenvillnews.com>, <jacksonclarionledger.com>, <lifeusatoday.com>,

<montgomeryadvertisor.com>, <montgomeryadvertizer.com>, <pensacolanewsjournel.com>,

<renogazzettejournal.com>, <rockfordregistarstar.com>, <rockfordstar.com>,

<springfieldnewleader.com>, <stargazett.com>, <statesmansjournal.com>,

<tenesseean.com>, <tennesian.com>, <tennesseeian.com>, <tennesseian.com>,

<theburlingtonfreepress.com>, <thecoloradoan.com>, <thedailytowntalk.com>,

<themontgomeryadvertiser.com>, <theoshkoshnorthwestern.com>, <thepostcrescent.com>,

<therocklandjournalnews.com>, <thetennessan.com>, <westchesterjournalnews.com>,

be transferred to Complainant Gannett Co., Inc., the ultimate parent company

of the Complainants.

Christiane Féral-Schuhl

Sole Panelist

Date: April 8, 2004

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