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Generic Top Level Domain Name (gTLD) Decisions |
McClatchy Management Services, Inc. v.
William S. Purdy a/k/a Bill Purdy & Please Don't KILL Your Baby, Inc.
Claim Number: FA0306000165944
PARTIES
Complainant
is McClatchy Management Services, Inc.,
Sacramento, CA (“Complainant”) represented by Ann Dunn Wessberg of Faegre & Benson LLP. Respondent is William S. Purdy a/k/a Bill Purdy & Please Don't KILL Your
Baby, Inc., South St. Paul, MN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <startribunenews.com>
registered with Gandi.
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.
G.
Gervaise Davis III, Esq. as Sole Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on June 27, 2003; the Forum received
a hard copy of the
Complaint on June 27, 2003.
On
June 30, 2003, Gandi confirmed by e-mail to the Forum that the domain name <startribunenews.com> is
registered with Gandi and that Respondent is the current registrant of the
name. Gandi has verified that Respondent is bound by
the Gandi 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
July 7, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of July 28,
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@startribunenews.com by e-mail.
A
timely Response was received and determined to be complete on July 28, 2003.
On July 30, 2003, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed G. Gervaise
Davis III, Esq. as Panelist.
On
August 4, 2003, Complainant’s Additional Submission was received by email in a
timely manner, but did not include payment of the
additional fee required. The Forum subsequently received this fee the
next day, so that such late payment technically does not comply with
Supplemental Rule
7. Because the Panel
considers the one day late payment of the supplemental fee a mere formality,
the Additional Submission was considered
in reaching the Decision.
On
August 11, 2003 Respondent filed its Response to the Complainant’s Additional
Submission. Technically because the
Complainant’s supplemental filing fee was late, all subsequent filings are not
timely and this filing could
be rejected for that reason. The Panel, however, has also considered the
Respondent’s last filing, since it is not Respondent’s fault that the
Complainant paid
the additional fees late.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to
Complainant. For the reasons expressed
below, that relief is GRANTED.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant’s Trademark
Rights
1. Complainant
owns and is responsible for protecting the brands used by the subsidiaries of
its parent company, the McClatchy Company.
Complainant is wholly owned by various McClatchy Company
subsidiaries. Complainant licenses its
marks to McClatchy Newspapers, Inc., which in turn sublicenses the marks to
various subsidiaries of The McClatchy
Company, including the Star Tribune Company
(“Star Tribune”).
2. Complainant
owns the marks STAR TRIBUNE (U.S. Registration No. 1,495,070) and
STARTRIBUNE.COM (U.S. Registration No. 2,249,689) (the
“STAR TRIBUNE Marks” or
the “Marks”), among other marks, which are licensed to McClatchy Newspapers,
Inc., which in turn sublicenses
the Marks to Star Tribune for its exclusive
use.
3. Star
Tribune has used the STAR TRIBUNE mark since at least as early as July 1, 1987
in connection with daily newspapers in the Minneapolis
- St. Paul region. Star Tribune also operates and provides
news-related services through its <startribune.com>
website.
4. As
a result of, among other things, Star Tribune’s continuous, exclusive use and
promotion, the STAR TRIBUNE Marks are known as identifying
Complainant’s
exclusive sublicensee as a source of quality daily newspapers from
Minneapolis-St. Paul, Minnesota. Thus,
Complainant’s STAR TRIBUNE newspaper, along with the collective McClatchy
newspaper enterprise, has acquired a large amount
of goodwill and
distinctiveness due to the longstanding services provided under the “Star
Tribune” moniker.
5. In
fact, in light of the distinctiveness of the mark, the duration and extent of
the use of the mark in connection with daily newspapers,
the duration and
extent of advertising and publicity of the mark, and the high degree of
recognition of the mark, the STAR TRIBUNE
Marks are famous marks as defined in
15 U.S.C. § 1125(c).
6. The
highly distinctive STAR TRIBUNE Marks are of great and incalculable
value to Complainant. Complainant
controls the use and reproduction of the STAR TRIBUNE Marks to
ensure that all of Star Tribune’s current and potential customers can rely upon
the mark as a symbol of high quality news,
newspapers, and news-related
services.
Similarity of the Domain
Name to Complainant’s Trademarks
7. The
domain name startribunenews.com (the
“Subject Domain Name” or “Domain Name”) fully incorporates Complainant’s STAR
TRIBUNE mark and the Star Tribune trade name,
and are virtually identical to
the STAR TRIBUNE Marks, with the mere addition of one generic word.
8. Entirely
incorporating Complainant’s mark with the addition of a generic word implies
that Complainant endorses or somehow expresses
itself through the domain names
and fosters confusing similarity between the domain names and the Marks. McClatchy Mgmt. Serv., Inc. v. Please
DON'T Kill Your Baby, FA 153541 (Nat. Arb. Forum May 28, 2003) (“Purdy I”).
9. Given
the nearly identical nature of the Subject Domain Name to the STAR TRIBUNE
Marks and the full incorporation of the STAR TRIBUNE
mark in the Domain Name,
the Domain Name is confusingly similar to Complainant’s marks.
Absence of Legitimate
Rights in Respondent
10.
Upon information and belief, Respondent has no trademark or intellectual
property rights or other legitimate interest in the Subject
Domain Name.
11. Upon
information and belief, when an Internet user inputs the domain name <startribunenews.com>, the user is linked to content from the <babysave.com> website, which purports to be a Star Tribune
“satire,” displaying anti-abortion information, highly graphic images of
dismembered
aborted fetuses that many of Complainant’s customers and potential
customers may find highly offensive, and links to fund-raising
appeals.
12. The
“satire” site, however, lacks the irony, sarcasm, or wit that define
satire. To add to the likelihood of
confusion, the website copies the look and feel of the <startribune.com> website, lifting
entire copyrightable content and the proprietary frame of the <startribune.com> website.
13. The
website linked to the Subject Domain Name does not originate from, is not
sponsored by, and is not affiliated with Complainant
or its licensees or
sublicensees. Respondent is not, and
has never been, a licensee or sublicensee of Complainant or its predecessors in
interest.
14.
Upon information and belief, Respondent has never used the trade name or mark
“Star Tribune” or any similar name in any commercial
or other venture (other
than the activities described herein).
Respondent has never owned or operated a business under the trade name
“Star Tribune” and is not commonly known as Star Tribune, startribune.com,
or startribunenews.com and therefore has no rights or
legitimate interests in the disputed domain name. Target Brands, Inc. v. Zuccarini, FA 99683 (Nat. Arb.
Forum Oct. 22, 2001); see also Gallup Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent
does not have rights in the domain name when Respondent is not
known by the
mark).
15. Respondent
uses the infringing Domain Name to display content from websites endorsing a
particular social agenda. Respondent’s
social views, however, have no logical connection warranting the use of the
STAR TRIBUNE Marks in the Domain Names.
See Pulitzer, Inc. and St. Louis Post-Dispatch, LLC v. Barry,
FA 114673 (Nat. Arb. Forum Aug. 13, 2002) (finding no rights or legitimate interest
where Respondent incorporated newspaper’s trademark
in domain name linked to
<abortionismurder.org>). Because of Complainant’s and its
predecessors-in-interest’s longstanding use of the STAR TRIBUNE Marks and the
circumstances surrounding
the registration of the Subject Domain Names, it may
be presumed that Respondent does not have any rights or legitimate interests
in
the Domain Name. Id.
16. As
with the domain names in Purdy I, Respondent has no property rights or
other legitimate interest in the Domain Name.
“Hence, it can be inferred that Respondent chose the disputed domain
name to divert Internet users seeking Complainant’s site.” Field Museum of Natural History v. Barry,
FA 114354 (Nat. Arb. Forum June 28, 2002) (finding Respondent diverting domain
name to anti-abortion sites had no rights or legitimate
interests in the
subject domain name).
17. Respondent
is not using the Domain Name in connection with the bona fide offering of goods
and services. Where Respondent has
linked the Domain Name at issue “to a website that has no connection with
Complainant’s mark and offers horrifying
depictions of fetuses in attempt to
promote an anti-abortion message . . . the Panel may infer that Respondent has
used the disputed
domain name to tarnish Complainant’s mark . . . . Such actions are not considered a bona fide
offering of goods and services.” Rittenhouse
Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8,
2002).
18. Respondent
is not making any legitimate noncommercial or fair use of the Domain Name. Respondent has used the Subject Domain Name
to link unsuspecting Internet users, who attempt to locate Complainant’s Star
Tribune newspaper or website, to
the content of the <babysave.com>
website, which has no connection or affiliation with Complainant or the STAR
TRIBUNE Marks. Journal Gazette v.
Domain For Sale, FA 122202 (Nat. Arb. Forum Oct. 9, 2002) (involving a
newspaper’s trademark in a domain name that registrant linked to anti-abortion
sites). Where the website confronts
Internet users with graphic pictures of aborted fetuses and/or espouse highly
charged political messages,
the Journal Gazette Panel held that such
uses “are opportunistic uses designed to increase the Internet traffic at
[anti-abortion websites] by trading
on [Complainant’s marks], which have no
logical connection to the websites.” Id.
(finding no legitimate noncommercial or fair use); see also Rittenhouse
v. Domains For Sale, FA 105211 (Nat. Arb. Forum Apr. 8, 2002).
19. The
political content of Respondent’s website does not make its use fair or
non-commercial. Gruner + Jahr
Printing & Publg. Co. v. Savior Baby, D2000-1741 (WIPO Feb. 21, 2001)
(finding use of magazine’s trademark for anti-abortion political content did not
“make the domain
names fair use, since there is no connection between the
domain names and the subject matter of the websites they resolve to.”). As in Gruner + Jahr, it is “obvious
that the Respondent is trying to embarrass [the Complainant] . . . or trade off
[its] marks in some way. It is not
‘fair or legitimate non-commercial use’ to direct the domain names to political
commentary that may be perceived as inflammatory
or contrary to [Complainant’s]
political viewpoint.” Id.
20. In
a U.S. District Court case against Respondent for similar conduct using domain
names, including <washingtonpostsays.com>
and <pepsisays.com>, the
District Court of Minnesota found that Respondent’s “domain names are likely to
confuse the public as to both the source and
sponsorship of [Respondent’s]
websites, to divert Internet users from their intended online destinations, and
to damage Plaintiffs’
good names and goodwill.” Coca-Cola Company et al. v. William S. Purdy, Sr., Please
Don’t Kill Your Baby, et al., No. 02-1782 ADM/AJB (D. Minn. July 23, 2002)
(granting plaintiffs motion for temporary restraining order and preliminary
injunction).
21. Respondent’s
use of the subject domain name “and previous pattern of behavior proves that
Respondent has no vested interest in the
current domain name other than to
ensnare Internet users for his own political agenda.” Kansas City Cmty. Col. v. Barry, FA 117910 (Nat. Arb.
Forum Oct. 11, 2002).
22. “[W]hether
Respondent is actively tarnishing the mark with graphic imagery or simply
taking advantage of the goodwill surrounding
the mark to express its viewpoint,
Respondent is not making a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(iii). Purdy I, FA
153541 (Nat. Arb. Forum May 28, 2003).
Bad Faith Registration
and Use of Domain names
23. Panels
in UDRP proceedings have consistently found bad faith registration and use
where Respondent registered domain names fully incorporating
Complainant’s mark
and linking the domain names to graphic, anti-abortion websites or
content. See, e.g. Purdy
I, FA 153541 (Nat. Arb. Forum May 28, 2003); Pulitzer v. Barry, FA
114673 (Nat. Arb. Forum Aug. 13, 2002); Journal Gazette v. Domain For Sale,
FA 122202 (Nat. Arb. Forum Oct. 9, 2002); Gruner + Jahr Printing v. Savior
Baby, D2000-1741 (WIPO Feb. 21, 2001); Univ. of Cent. Ark. v. Simms
& Barry, D2002-0316 (WIPO May 31, 2002); Rittenhouse v. Domains For
Sale, FA 105211 (Nat. Arb. Forum Apr. 8, 2002); Kansas City Cmty. Coll.
v. Barry, FA 117910 (Nat. Arb. Forum Oct. 11, 2002); Huntington
Bancshares Inc. v. Good Domains, FA 123867 (Nat. Arb. Forum Oct. 11, 2002);
Mayo Foundation for Med. Educ. and Research v. Flynn, FA 117896 (Nat.
Arb. Forum Sept. 20, 2002); City Univ. of N.Y. v. Domains For Sale, Inc.,
FA 114477 (Nat. Arb. Forum July 24, 2002); Field Museum of Natural History
v. Barry, FA 114354 (Nat. Arb. Forum June 28, 2002); Taylor Corp. v. Buy
This Domain, FA 112563 (Nat. Arb. Forum June 25, 2002); Rochester Inst.
of Tech. v. Domain For Sale, FA 112475 (Nat. Arb. Forum June 3, 2002); Reed
Inst. v. Domain For Sale, Inc., FA 109043 (Nat. Arb. Forum May 31, 2002).
24. Respondent
registered and began using the Subject Domain Name after the STAR TRIBUNE Marks
were sufficiently distinctive and were
federally registered, so as to give
constructive notice to Respondent that registering <startribunenews.com> would violate Complainant’s
rights. See Samsonite Corp.
v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of
bad faith includes actual or constructive knowledge of commonly known mark
at
time of registration); Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409
(WIPO Dec. 9, 2000) (finding bad faith registration and use where it is
“inconceivable that the respondent could make
any active use of the disputed
domain names without creating a false impression of association with the
Complainant”).
25. Given
the notoriety and fame of Complainant’s mark, particularly in Minneapolis – St.
Paul, Minnesota, where Respondent resides, Respondent
is presumed to have had
constructive knowledge of Complainant’s rights in the STAR TRIBUNE Marks when
he registered the disputed
domain name.
PNC v. Domains for Sale, FA 104101 (Nat. Arb. Forum Feb. 25,
2002); Sears v. Barry, FA 105210 (Nat. Arb. Forum Apr. 1, 2002).
26. Further,
Respondent registered <startribunenews.com> after the Purdy I
proceeding commenced, and thus had actual knowledge of Complainant’s
rights. “Registration of a domain name
with knowledge that the domain name infringes on another’s mark is evidence of
bad faith registration
pursuant to Policy ¶ 4(a)(iii).” Mayo v. Flynn, FA 117896 (Nat. Arb.
Forum Sept. 20, 2002).
27. Respondent’s
registration of multiple domains in Coca-Cola v. Purdy, in the Purdy
I proceeding and in this proceeding constitutes a “pattern of conduct”
evidencing bad faith for the purposes of Policy ¶ 4(b)(ii). Gruner + Jahr v. Savior Baby,
D2000-1741 (WIPO Feb. 21, 2001); Reed Inst. v. Domain For Sale, FA
109043 (Nat. Arb. Forum May 31, 2002).
28. Respondent’s
infringing registration history indicates that Respondent was motivated by the
desire to deceitfully capitalize on the
goodwill and success of Complainant’s
mark to advance his own cause and thus it is proper to infer that Respondent
had knowledge
of Complainant’s established mark when registering the Subject
Domain Name. Pulitzer v. Barry,
FA 114673 (Nat. Arb. Forum Aug. 13, 2002) (finding bad faith where registrant
knew of newspaper’s rights when it fully incorporated
its mark in domain name
linked to abortion site).
29. It
has been consistently held that “a party has registered and used the domain
name in bad faith if it utilizes the well known mark
of someone else and links
the domain name with a website that depicts patently explicit and odious
images.” Huntington Bancshares Inc.
v. Good Domains, FA 123867 (Nat. Arb. Forum Oct. 11, 2002).
30. Respondent’s
use of Domain Name incorporating the STAR TRIBUNE Marks will dilute said Marks
by associating the well-known STAR TRIBUNE
Marks with color pictures of
purported dismembered aborted fetuses and links to fund-raising appeals. Such associations tarnish the
family-oriented goodwill associated with the STAR TRIBUNE Marks. Mayo v. Flynn, FA 117896 (Nat. Arb.
Forum Sept. 20, 2002).
31. Respondent
“[has] registered the domain names with a bad faith intent to profit from them
by tarnishing and diluting Plaintiff’s good
names and goodwill to achieve the
personal gain of promoting their messages, generating publicity, and raising
money for supported
causes.” Coca-Cola v. Purdy No. 02-1782 ADM/AJB (D.
Minn. July 23, 2002) (involving the same Respondent and conduct at issue here).
32. Respondent’s
use of a domain name that is nearly identical to the STAR TRIBUNE Marks is
likely to confuse the public to mistakenly
believe that Complainant has in some
way authorized, sponsored, approved, or endorsed Respondent’s activities
related to the domain
name, or that Complainant is in some way affiliated with
Respondent’s activities. Respondent’s
use of <startribune.com> website frame and other copyrightable content
increases this likelihood of confusion in
violation of Policy ¶ 4(b)(iv). See Gruner + Jahr v. Savior Baby,
D2000-1741 (WIPO Feb. 21, 2001).
33. Respondent
has incorporated Complainant’s entire STAR TRIBUNE Mark in the Domain Name at
issue, <startribunenews.com>.
Thus, it is difficult to infer a legitimate use of the domain name by
Respondent, and, in fact, evidences bad faith.
United Artists v. Domains for Sale, D2002-0005 (WIPO March 27,
2002).
34. The
right of free speech does not immunize Respondent’s activities. “This form of tarnishment need not be
tolerated by the Complainant even if Respondent and the owner of the
[anti-abortion] website,
have a free speech right to have their views on the
subject of abortion expressed on the web.
It is evidence of bad faith to attribute those views, without consent,
to a trademark owner such as Complainant.”
Univ. of Cent. Ark. v. Simms & Barry, D2002-0316 (WIPO May
31, 2002).
35. In
light of these circumstances, Complainant contends that Respondent has
registered and used the Subject Domain Name in bad faith
under ICANN Policy ¶
4(b).
B.
Respondent
1. Although there may be two owners of
the domain name at issue, the Response was filed only by William S. Purdy, the
first named owner
in the GANDI records.
Purdy claims that “The other owner of the domain name, Please Don’t KILL
Your Baby, Inc. is a fully operative and functional Minnesota
Corporation with
a Federal Tax Non-Profit Certification.”
Purdy states that the corporation has never been notified or served with
the requisite Notice under the Rules and has never received
any letters or had
any contact from the Complainant. Purdy
also states that he “does not represent that corporation or speak for it,”
although he does not allege or inform the Panel who
does own it, or who does
represent it. He also contends that the
initial letter notice to Williams S. Purdy was signed for by his 15 year old
son, William S. Purdy II, and
presumably infers from that that the service and
notice was defective since service on a minor is not normally adequate service
or
notice. Because of these
allegations, Purdy Sr. contends that this Panel has no authority to transfer
the domain name ownership vested in
the corporation. [The Panel addresses this
specific issue below.]
2. In fairness to Respondent, as a
layman, it is somewhat difficult to follow the logic of some of his arguments,
vis a vis, that of
the lawyers who prepared Complainant’s pleadings, but giving
the fairest reading the Panel can, it appears that Respondent believes
that a.)
the previous cases involving the parties are not the same factually for various
reasons; b.) Complainant’s mark may be registered
but that Complainant has
provided no evidence beyond its assertions that the mark is in fact famous; c.)
the addition of the generic
word “news” to the end of the Complainant’s mark
prevents it from becoming identical to the mark and that it is not confusing to
lead one to the Respondent’s alternative website because the site clearly says
it is “Star Tribune SATIRE,” and is mere criticism
of the newspaper; d.) the
fact the content of his website may be offensive to some readers does not take
away from the fact it is
intended as critical comment and that the website does
not link to fundraising sites; e.) Respondent’s site is a parody and “so
naturally
is made to look like their site”; f.) his site is not a commercial
use of the registered mark, but intended only as critical comment
against the
editorial views of the newspaper; g.) the various cases cited as authority for
the Complainant’s views are distinct from
the facts here and are improperly
cited; h.) he has a right of free speech to criticize the Complainant’s mark,
which is what he
is doing on his website, even though the newspaper does not
like the manner in which is doing so; and, h.) his method of criticism
involves
use of graphic images, which is equally protected as free speech, and that he
does not have to use written text only for
such criticism.
3. Purdy contends that Complainant has
not shown that anyone was mislead as to the source of the views on his website,
so it is not confusingly
similar; and that his right to use the domain name is
protected by UDRP Rule 4(c) which allows noncommercial use of the name if used
“without intent for commercial gain to misleadingly divert consumers or to
tarnish the trademark … at issue.”
Accordingly, he argues that he has a legitimate right to use the mark in
this manner and that it does not confuse, so that Complainant
has not met these
two required elements of the UDRP.
4. Finally, he argues that as in the
<Ballysucks.com> case and others, it has been held that legitimate criticism
conducted in
a noncommercial manner is protected free speech and that he is not
a commercial user and has no financial benefit from the website.
C.
Additional Submissions
Complainant. Other than seeking to refute
Respondent’s claim that Notice of this proceeding was improperly given, the
Complainant’s Additional
Submission restates its earlier arguments and provides
additional decisional authority for its position. The Panel believes no purpose would be served in rejecting this
Additional Submission for the technical defect of one day late payment
of the
additional fee, so it accepted it, but elects not to restate the other aspects
of the arguments presented, as they otherwise
add little to that already set
out above.
Candidly,
the Panel feels that it would have been better practice had Complainant sent
two Notices, one to the individual William
S. Purdy and another identical one
to Please Don't KILL Your Baby, Inc., since both are somewhat confusingly
listed in the domain
name registration.
The manner in which they are linked in the domain registrar records
leaves a legitimate argument that they are not effectively the
same
owners. However, since both have the
same physical address and both are specifically named in the Complaint, it is
difficult to see how this
failure to send separate notices to both would
adversely affect the rights of both of them since Purdy seems to control
both. (He denies, however, that he
speaks for the corporation.)
As
the rules for registration of domain names do not deal with the question of
multiple owners, nor do the UDRP Rules provide any
specific requirement for
notifying them separately, the Panel feels that it was up to Respondent to
provide at least some evidence
that the individual and the corporation are not
adequately on notice of this proceeding because of separate ownership of the
corporation
or some significant difference in the physical address. Had he done so, this would represent a
showing of prejudice to a party.
However, as the Respondent did not allege that the individual and the
corporation are not mere alter egos, or that the corporation
is owned by third
parties and that he has no ownership or connection with it, the Panel will
assume that since they have the identical
address and Respondent Purdy appears
to be aware of the claims of the corporation in his Response, that both were
given adequate
notice though notice to him.
If this is not the case and Purdy elects to pursue a further remedy in
court, Complainant will have to deal with the issue there. As a Panel, we can only deal with the
information before us.
Respondent.
The Response of Respondent to Complainant’s Additional Submission is
primarily devoted to contesting the argument that the website
replicates the
look and feel of the Star Tribune’s website and appearance. It also includes grisly photos, taken from
Respondent’s referral page, showing aborted fetuses, apparently to support
Respondent’s
argument that it is a satire on the newspaper and Respondent’s
idea of free speech. The Panel
considered these arguments from this Response in reaching its decision, as
discussed below under the Discussion heading.
FINDINGS
Based upon the evidence presented by
Complainant, there is no question that (1) Complainant owns and has rights to
the trademark “Star
Tribune,” which is a well known and established newspaper,
and that the domain name at issue is confusingly similar to the mark;
(2) the
Respondent has absolutely no legitimate rights or interest in respect of the
domain name; and, (3) the domain name has been
registered and is being used in
bad faith, as well as incredibly bad taste in displaying aborted babies and
medical waste under the
initial guise of being a newspaper website. The Panel, however, does not agree with
Complainant that the Respondent’s website has the appearance of Complainant’s
newspaper, or
that it replicates it.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
Paragraph
4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
(2)
the
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.
The Complainant’s contentions, set forth
above in detail, clearly establish that the registered trademark of its
newspaper and the
domain name chosen by Respondent are intentionally
confusingly similar. The mere addition
of the term “news” to the end of the domain name is a meaningless distinction,
intended to avoid a direct copy of
the actual name. The prior decisions cited in the Complaint make clear that this
is not acceptable and does not form a defense to this element of the
UDRP. Even Respondent admits that it “is made to
look like their site.” (See Respondent’s Contentions).
Respondent is not a newspaper nor
reporting news. Respondent’s only use
of the name is to misrepresent to the public, by use of the nearly identical
name, that it is the news website
of the Star Tribune. The essence of Respondent’s claim to a
legitimate interest in the domain name is that it is a “satire” or exercise of
First Amendment
free speech, which might in some circumstances form a valid
defense.
However, the fact that Respondent has set
up the website so that it automatically transfers the viewer directly to
http://www.savebaby.com/startribunesatire.htm
merely establishes that
Respondent is not presenting a contrary view or legitimately commenting on the
views of the newspaper, but
is using the domain to actively mislead the public
as to the destination this domain name will reach. This site is apparently used as a common referral to all the
various formations of the misleading Star Tribune domain names registered
by
Respondent. It is not a satire but a
series of gross photographs of aborted babies, along with various accusations
about the editorial views of
the newspaper.
This use of the domain name is not free speech nor satire but a fraud on
the public, as well as the exercise of extremely bad taste
in doing so. It goes so far, in the opinion of the Panel,
that it probably harms the proponents of the views shared with Respondent,
rather than
advances their point of view.
It is not a proper form of the exercise of free speech, in the view of
this Panel.
This Panel, in other decisions before the
National Arbitration Forum and WIPO, has aggressively defended the right of
free speech
and the First Amendment use of domain names, but this case
represents the nadir of such activities that goes so far beyond legitimate
free
speech that there is simply no question that it is an active misrepresentation,
and evidence, itself, that Respondent has no
legitimate right to use of the
domain name or the mark in question.
Given the sordid litigation history of
Respondent concerning this Complainant and other third party owners of other
trademarks, as
recited in Complainant’s Contentions and not refuted by
Respondent, Respondent had to have known when this domain was registered
that
it was improper and that he was acting in bad faith in registering it on behalf
of himself and the corporation, and in using
it in this manner. In the opinion of the Panel, this is exactly
the sort of situation contemplated by the framers of the UDRP when they
referred to “abusive
registrations.” It
is a perfect example of bad faith registration and use of a trademark as a
domain name, because of the manner in which it refers
the user to a common
website totally unconnected with the owner of the trademark. Fraud and misrepresentation of the source of
information are not good faith free speech, even when done in a noncommercial
manner.
DECISION
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it is Ordered that the <startribunenews.com>
domain name be TRANSFERRED from Respondent to Complainant.
G. Gervaise Davis III, Esq., Panelist
Dated: August 12, 2003
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URL: http://www.worldlii.org/int/other/GENDND/2003/838.html