DECISION

Lee Enterprises, Inc. v. Yong Li

Claim Number:  FA0401000226439

PARTIES

Complainant is Lee Enterprises, Inc., Davenport, IA (“Complainant”) represented by Dana M. Craig of Lane & Waterman, 224 18th Street, Suite 500, Rock Island, IL 61201.  Respondent is Yong Li, P.O. Box 904, Beijing 100029, China 10#62043326 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <casperstartribune.com>, registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically January 13, 2004; the Forum received a hard copy of the Complaint January 15, 2004.

On January 13, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain name <casperstartribune.com> is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a Dotregistrar.com verified that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.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 January 19, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 9, 2004, 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@casperstartribune.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 February 16, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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. The domain name registered by Respondent, <casperstartribune.com>, is identical to Complainant’s CASPER STAR-TRIBUNE mark.

2. Respondent has no rights to or legitimate interests in the <casperstartribune.com> domain name.

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

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

FINDINGS

Complainant presented extrinsic proof in this proceeding to establish that it owns and publishes various newspapers throughout the United States.  In Casper, Wyoming, Complainant owns and operates a newspaper publishing division that prints a daily newspaper called the CASPER STAR-TRIBUNE.  The CASPER STAR-TRIBUNE has been published for more than 100 years and has operated under this name and mark since 1965.  The paper began publishing in 1891.

Complainant registered the CASPER STAR-TRIBUNE mark with the Secretary of State in the State of Wyoming October 27, 2003.

Respondent registered the disputed domain name <casperstartribune.com> July 27, 2000.  The domain name redirects Internet users to a commercial website located at <magazines.com>. 

In the past, Panels have ordered Respondent to transfer numerous domain names that infringed upon third-party trademarks. E.g. Yahoo! Inc. & HotJobs.com, Ltd. v. Li, FA 159547 (Nat. Arb. Forum July 16, 2003); Harrah’s Las Vegas, Inc. v. Li, FA 137092 (Nat. Arb. Forum Jan. 16, 2003); Lavalife, Inc. v. Li, FA 161269 (Nat. Arb. Forum July 9, 2003); PRIMEDIA Inc. v. Li, FA 135613 (Nat. Arb. Forum Jan. 14, 2003).

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 will draw such inferences as the Panel 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 to and/or Confusingly Similar

Complainant established by extrinsic proof in this proceeding that it has rights in the CASPER STAR-TRIBUNE mark through registration with the Wyoming Secretary of State and Complainant’s continuous use of the CASPER STAR-TRIBUNE mark in connection with its newspaper, since 1965. See Lee Enters., Inc. v. Polanski, FA 135619 (Nat. Arb. Forum Jan. 22, 2003) (finding evidence that Complainant had established rights in the BILLINGS GAZETTE mark through registration with the Montana and Wyoming State trademark officials); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which a Respondent operates.  It is sufficient that a Complainant can demonstrate a mark in some jurisdiction); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that Complainant’s trademark registrations in Pennsylvania and New Jersey operated as evidence that Complainant had sufficient standing to bring a claim under the UDRP).

The disputed domain name is identical to Complainant’s CASPER STAR-TRIBUNE mark because the omission of the hyphen and the addition of the generic top-level domain “.com” are irrelevant under the Policy. See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“The fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy.”); see also Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (“The use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark."); see also Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738  (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the C-SPAN trademark, is confusingly similar to Complainant's mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that the addition of a top-level domain is without legal significance).

Policy ¶ 4(a)(i) is established for Complainant.

Rights to or Legitimate Interests

Complainant established that it has rights to or legitimate interests in the mark contained in its entirety in the disputed domain name and filed allegations that Respondent has no such rights.  Respondent did not respond to the Complaint.  Thus, the Panel may construe this omission as an implicit admission that Respondent indeed lacks right to and legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

Respondent advanced no evidence suggesting Respondent is commonly known by the disputed domain name. 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Respondent is not using the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and is not using it for a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  Because Respondent has incorporated Complainant’s entire CASPER STAR-TRIBUNE mark in the domain name and uses the name to divert Internet users to a commercial website unrelated to Complainant’s mark this is not a bona fide noncommercial or fair use.  See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also Am. Online, Inc. v. Tencent Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”); see also eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) ("[Using] Complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use."); see also U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).

Policy ¶ 4(a)(ii) is established for Complainant.

Registration and Use in Bad Faith

Complainant has alleged that Respondent acted in bad faith.  Respondent has a lengthy history of registering domain names that infringe upon third-party marks.  The fact that the disputed domain name is identical to Complainant’s mark and the fact that Respondent has engaged in a pattern of cybersquatting activities, support findings that Respondent registered the name in order to prevent Complainant from reflecting the mark in the corresponding domain name pursuant to Policy ¶ 4(b)(ii). See YAHOO! Inc. v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two domain names incorporating Complainant's YAHOO! mark); see also Australian Stock Exch. v. Cmty. Internet, D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy ¶ 4(b)(ii) where Respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known businesses); see also Pep Boys Manny, Moe, & Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that, where Respondent registered many domain names, held them hostage, and prevented the owners from using them, the behavior constituted bad faith).

Moreover, Respondent has not advanced any good-faith basis for registering the disputed domain name. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding bad faith where Respondent failed to provide evidence to controvert Complainant's allegation that Respondent registered the name in bad faith and any future use of the name would only cause confusion with Complainant’s mark); see also Kraft Foods v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (“The fact that Respondent [chose] to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue.”); see also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding bad faith registration and use where Respondent registered a domain name incorporating Complainant’s mark and Respondent failed to show circumstances in which such a registration could be done in good faith).

Policy ¶ 4(a)(iii) is established for Complainant.

DECISION

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

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

Hon. Carolyn Marks Johnson, Panelist

Dated: March 1, 2004.

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