DECISION

McClatchy Management Services, Inc. v. John Barry a/k/a Best Domains and Pro-Life Domains

Claim Number: FA0306000162175

PARTIES

Complainant is McClatchy Management Services, Inc., Sacramento, CA (“Complainant”) represented by Ann Dunn Wessberg of Faegre & Benson LLP.  Respondent is John Barry a/k/a Best Domains and Pro-Life Domains, Bronx, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <themodestobee.com> registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 11, 2003; the Forum received a hard copy of the Complaint on June 12, 2003.

On June 12, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the Forum that the domain name <themodestobee.com> is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On June 13, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 3, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@themodestobee.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On July 11, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <themodestobee.com> domain name is identical to Complainant’s THE MODESTO BEE mark.

2. Respondent does not have any rights or legitimate interests in the <themodestobee.com> domain name.

3. Respondent registered and used the <themodestobee.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant owns and is responsible for protecting the brands used by the subsidiaries of its parent company, the McClatchy Company. Complainant licenses the parent company’s marks to various subsidiaries of McClatchy Company, including the Modesto Bee. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the THE MODESTO BEE mark (Reg. No. 1,057,559 registered on February 1, 1977) in relation to newspapers.

The Modesto Bee has used the THE MODESTO BEE mark since at least as early as July 3, 1975 in connection with daily newspapers in Modesto, California. The Modesto Bee also operates websites at the <modestobee.com> and <modbee.com> domain names, which provide news-related services.

Respondent registered the <themodestobee.com> domain name on February 8, 2002. Respondent is using the disputed domain name to redirect Internet traffic to a website, <abortionismurder.org>, which purports to display anti-abortion information, highly graphic images of dismembered aborted fetuses and links to fundraising appeals.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

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

Identical and/or Confusingly Similar

Complainant has established that it has rights in the THE MODESTO BEE mark through registration with the USPTO and continuous use in commerce since 1975.

Respondent’s <themodestobee.com> domain name is for all intents and purposes identical to Complainant’s THE MODESTO BEE mark because the disputed domain name merely omits the spaces between the words of the mark and adds the generic top-level domain (“gTLD”) “.com” to the end of the mark. Neither the omission of the spaces between the words nor the addition of a gTLD significantly differentiates a domain name from a mark with regard to Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000)  (finding that the domain name <croatiaairlines.com> is identical to Complainant's CROATIA AIRLINES trademark).

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has failed to come forward with a Response in this proceeding. Therefore, the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Moreover, Respondent has failed to invoke any circumstances that could demonstrate rights to or legitimate interests in the <themodestobee.com> domain name. When Complainant asserts a prima facie case against Respondent, the burden shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with Respondent to demonstrate that it has rights or legitimate interests).

Respondent is using the <themodestobee.com> domain name to redirect Internet traffic to the <abortionismurder.org> domain name, a website that presents anti-abortion rhetoric and graphic images of purportedly aborted fetuses. The use of a domain name identical to a registered mark to divert Internet users to a website that takes sides on a highly contentious issue such as abortion, which has nothing to do with Complainant’s business activities, is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Robo Enter., Inc. v. Tobiason, FA 95857 (Nat. Arb. Forum Dec. 24, 2000) (rejecting Respondent’s asserted rights or legitimate interest in the domain name <roboenterprises-investors.com>, noting that while the content of Respondent’s website may enjoy First Amendment and fair use protection, those protections do not create rights or a legitimate interest with respect to a domain name which is confusingly similar to another’s trademark); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).

Furthermore, Respondent has not come forward with any proof and there is no evidence in the record to establish that Respondent is commonly known by either THE MODESTO BEE or <themodestobee.com>. Thus, Respondent has failed to establish that it has rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>).

The Panel finds that Policy ¶ 4(a)(ii) has been established.

Registration and Use in Bad Faith

Respondent’s activities are well-known among UDRP Panels. These Panels have consistently held that Respondent’s registration and use of a domain name identical or confusingly similar to a registered mark to associate that mark holder with a graphic and politically charged website evidences bad faith registration and use under Policy ¶ 4(a)(iii). See Journal Gazette Co. v. Domain For Sale Inc. a/k/a Domain World, FA 122202 (Nat. Arb. Forum Oct. 9, 2002) (finding “Respondent chose the domain name to increase the traffic flowing to the <abortionismurder.org> and <thetruthpage.com> websites”); see also McClatchy Mgmt. Servs., Inc. v. Please DON'T Kill Your Baby a/k/a William and Mark Purdy II, Willaim S. Purdy, FA 153541 (Nat. Arb. Forum May 28, 2003) (finding “[b]y intentionally taking advantage of the goodwill surrounding Complainant’s mark to further its own political agenda, Respondent registered the disputed domain names in bad faith”).

Moreover, Respondent is a known cybersquatter who has racked up numerous arbitration proceedings against him for the same behavior described in this Complaint. Respondent has established a pattern of registering domain names to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Lee Enterprises, Inc. v. John Barry and Domain for Sale, Inc., FA 142045 (Nat. Arb. Forum Feb. 24, 2003) (finding “Complainant’s unrefuted evidence establishes that Respondent has habitually engaged in typosquatting”); see also The Buffalo News, a Division of OBH, Inc. and Columbia Insurance Company v. John Barry d/b/a Bronx Consumer, Inc. f/k/a Domains or Best Domains, FA 146919 (Nat. Arb. Forum Mar. 31, 2003) (finding “Respondent’s use of the disputed domain name to redirect Internet users to an anti-abortion website at <abortionismurder.com> evidences bad faith”).

Accordingly, the Panel finds that Complainant has established Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <themodestobee.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY  (Ret.)

Dated:  July 25, 2003

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