WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The New York Times Company v. New York Internet Services
WIPO Case No. D2000-1072
1. The Parties
Complainant is The New York Times Company, 229 West 43d Street, New York, New York 10036, U.S.A. ("The New York Times").
Respondent is New York Internet Services, P.O. Box 2244 Kensington, Maryland 20891, U.S.A. ("NYIS").
2. Domain Name and Registrar
The domain name in issue is:
newyorktimes.com.
The registrar is Network Solutions, Inc. (NSI).
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received The New York Times’s complaint in hard copy on August 15, 2000 and via email on August 22, 2000. The Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). The New York Times made the required payment to the Center. The formal date of the commencement of this administrative proceeding is August 31, 2000.
On August 23, 2000, the Center transmitted via email to NSI a request for registrar verification in connection with this case. On August 24, 2000, NSI transmitted via email to the Center NSI’s Verification Response, confirming that (1) the registrant of the newyorktimes.com domain name is New York Internet Services; (2) the administrative, technical, zone and billing contact is "Host, Master (MH1833) [email protected]", and (3) the domain name registration in issue is in "Active" status.
On August 31, 2000, the Center transmitted Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint, via post/courier to NYIS, and via email without a copy of the Complaint to the contact address. The Center advised that the response was due by September 19, 2000, pointed out the response should be in accordance with specified rules, and described the consequences of a default if the response were not sent by that date. The Center noted also that The New York Times had elected for a single panelist to decide this matter.
On September 21, 2000, the Center received an email dated September 20 and purportedly from NYIS. The email was cc’d to The New York Times’s General Counsel, identified Internet NYIS’s counsel as Thomas P. Liniak, Esq. at a firm in Bethesda, Maryland, acknowledged receipt of the Notification of Complaint, stated a response "has been prepared and is available for immediate submission to your office," and stated further:
"... an Offer of Compromise has been sent to the Complainant. This Offer is only valid if accepted prior to the filing of our Response. We are awaiting their answer. Should this compromise effort fail and the Complainant reject the Offer the Response to the Complaint will be submitted immediately to your office."
On September 26, 2000, the Center received and email purportedly from a Nancy Richman at The New York Times, stating inter alia:
On September 18, 2000, NYIS sent an email and fax to The New York Times "requesting (i) that we agree to settle this matter upon terms proposed solely by them and (ii) that we contact you to request a one week stay of the proceedings."
"On September 19, 2000, we attempted to reach Thomas P. Liniak ... by phone and by e-mail ... . Mr. Liniak never responded."
"On September 22, 2000, we received an e-mail from [email protected] demanding that we answer Respondent’s letter. We responded, via email, by asking this unknown person to have someone call us back. We also stated for the record that The New York Times had not agreed to any extension of time for NYIS to respond to the Complaint. Again, we have not heard back."
"As far as The New York Times is concerned, there are no settlement discussions pending with NYIS. Without knowing the identity of the respondent, and without being able to speak to anyone purporting to represent this respondent, we cannot agree to further delay this proceeding."
On September 26, 2000, via email to the parties (and to NYIS’s counsel), the Center acknowledged receipt of Ms. Richman’s email and informed the parties "the proceeding will continue its normal course."
On October 4, 2000, the Center transmitted to NYIS via post/courier and email, and to NYIS’s counsel via email, Notification of Respondent Default. The Center advised (a) NYIS it had failed to comply with the deadline for submission of NYIS’s response and (b) the consequences of default, including (1) a panelist will be appointed; (2) The Panel will decide in it sole discretion whether to consider a response if submitted later; and (3) the Center will continue to send all case-related materials to NYIS.
On October 20, 2000, the Center advised the parties (1) of the appointment of David Plant, the undersigned, as the Panelist in this case; and (2) absent exceptional circumstances, the decision was to be forwarded by the Panel to the Center by November 2, 2000.
On October 20, 2000, the Center received an email purportedly from NYIS, with cc’s to The New York Times, NYIS’s counsel and the Panel.2 NYIS states the response to the complaint is attached and requests full consideration be given to the response, arguing:
(1) the response "was prepared and available for submissions to your office on September 19, 2000."
(2) the response "does not rely on any new facts, but merely those reflected in the Complaint."
(3) NYIS timely informed the Center "the two parties were engaged in compromise talks, and that the Response to the Complaint would be submitted upon receipt of Complainant’s decision regarding an Offer of Compromise."
(4) NYIS "agreed to modify the Offer of Compromise to address the sole objection raised by the Complainant several weeks ago, but the Complainant has failed to agree, or disagree with said change."
(5) Because The New York Times has failed to cooperate with respect to the amicable resolution of this matter, NYIS "would like to file its Response."
(6) The Panel has just been assigned, and acceptance of the response "would in no way interfere with his ability for timely review of the case."
(7) The Panel has the power to accept late filings at its discretion.
The email message continues:
"... the settlement talks ... and the Offer of Compromise did not entail any requirement for payments, and was completely non-commercial in nature. We request that you make no such ‘assumptions’ in your decision. The settlement talks occurred after the filing of the Complaint and should have no bearing on its outcome. The Complainant has not made any such allegations either. A copy of the draft Offer of Compromise will be submitted if required."
On October 27, 2000, the Center received an email from Nancy Richman of The New York Times, with cc’s to the Panel, NYIS’s counsel and NYIS. The email states inter alia:
"I am writing to you at the request of The New York Times General Counsel Solomon B. Watson IV.
"This is in response to Respondent’s letter dated October 10, 2000 which, to the best of our knowledge, was not sent to the Times until 9:00 p.m. on Friday, October 20, 2000. The timing of this communication (which could not possibly be received by anyone before Monday, October 23) is clearly not accidental. By misrepresenting the facts to you and to our arbitrator on an ex-parte basis (and then waiting ten days to copy us on the correspondence), Respondent, has unfortunately, succeeded again in delaying the consideration of this case on its merits. [3]
"We are not now, nor have we ever been engaged in settlement negotiations with the Respondent for the simple reason that Respondent refuses to reveal his identity and we cannot possibly enforce a registrant name transfer agreement with an unknown entity. ... Respondent has not responded to our request to have his lawyer call us back to discuss how we could effect the proposed settlement.
" ... Respondent ... had two more weeks [after the Center’s September 26 email] to submit his Response which he failed to do, prior to your declaration of a default on October 10, 2000. Now that the case has been assigned to an arbitrator, Respondent is claiming that he has been unfairly deprived of an adequate opportunity to respond, which is ridiculous.
"For the foregoing reasons, we object to the filing of Respondent’s untimely Response. We also respectfully request the opportunity to submit the attached Reply in the event that the Response is accepted."
On October 27, 2000, NYIS transmitted an email to the Center, with copies to Mr. Solomon B. Watson, Esq., the Panel, and apparently NYIS’s counsel, stating inter alia:
"This is in response to a communication received earlier today from a Nancy E. Richman ... . Ms. Richman does not represent the Complainant in these proceedings (the sole Representative indicated by Complainant is Solomon B. Watson, Esq. ...) ...
" ... only two communications have been submitted to you by Respondent: ... on September 20 ... and October 20 ... .Both of these transmissions were copied to the Complainant on the same day they were sent to WIPO, there has never been ex-parte communication by Respondent.
"According to its October 27 letter Complainant and WIPO have engaged in ex-parte communications ... . [citing the September 25 and September 26 emails]. Copies of these were never received by Respondent at any of the three designated email addresses on file. If this is in fact true the Complainant and the Provider have grossly violated the Policy (see Rules for UDNDRP Paragraphs (8) and (2)(h)).
"... the UDNDRP Rules and Policy do not allow for Complainant’s submission of a Reply to Respondent’s Reply, especially days before the Decision due date of November 2. Once the Response to the Complaint has been filed no more communications are to be submitted. ... [Quoting Rule 12]. Here the Panelist has not requested any further statements, the communication has originated from Complainant and is not in response to a request by the Panelist, and therefore disallowed. The Reply further lacks the required certifications, and even the name of its signor and the date! Respondent therefore requests that pursuant to the Rules the communication by Complainant dated October 27 not be admitted.
"The facts of the case remain the same:
"as originally indicated to Complainant in 1996 the Domain Name was registered for non-commercial use, such as a commentary (see Complainant’s Annex 10);
"the sole use of the Domain Name was as a commentary (see Complainant’s Annex 20), despite allegations to the contrary Respondent has made no other use of the Domain Name and Complainant has failed to present any use other than Annex 20;
"the Domain Name was never offered for sale to Complainant (see Complaint);
"the Domain Name has links to a bulletin board for public commenting, a link to the non-profit freedom of speech organization, links attached by its web hosting company in exchange for providing free web hosting (see Respondent’s Annex B: Domain Valet Terms of Service - which clearly states that it will place banners on top of the web pages in exchange for free web hosting and without any compensation for the domain name holder), and a complementary link to the Complainant’s site as a courtesy to those mistakenly assuming the Domain Name as belonging to the Complainant (see Complainant’ s Annex 20);
"Respondent has no affiliation to the links related to the Domain Name;
"Respondent has simply provided a public service and not made a penny from its registration of the Domain Name, nor has it indicated any willingness or intent to do so. Complainant has failed to show any evidence to the contrary, ie any fact indicating that Respondent has made any financial gain from the domain name or directed traffic to any affiliated web sites."
In light of exceptional circumstances, the Center postponed the deadline for the decision until December 5, 2000.
4. Factual Background; Parties’ Contentions
a. The Trademark
The complaint is based on three U.S. federal registrations for the mark THE NEW YORK TIMES. The first registration (Annex 24) issued in 1927 and is for daily newspapers. The second registration (Annex 3) issued December 16, 1997, and is for a service mark for computer on-line services whose first use in commerce is stated to be January 19, 1996. The third registration (Annex 4) issued February 4, 1997 and is for the trademark for various items of merchandise and wearing apparel, whose first use in commerce is stated to be March 1995. Annex 6 lists various registrations of the mark around the world.
b. Jurisdictional Basis
At page 4, The New York Times quotes the Policy, Paragraph 4(a) and asserts that each of the three requirements of Paragraph 4(a) have been satisfied.
c. The Complaint
The New York Times avers inter alia as follows:
At page 5, the newyorktimes.com domain name was registered on June 17, 1996, "despite numerous pre-existing U.S. and international trademark, [sic] registrations and applications for registration of THE NEW YORK TIMES."
The New York Times attempted to register the domain name on October 31, 1996 and was rejected on the basis of the prior registration by NYIS. At that time, there was "an intermittently appearing home page at the site and nothing else."5
On November 4, 1996, The New York Times’s outside counsel sent a cease and desist letter to NYIS (Annex 9), stating inter alia if NYIS failed to agree either to transfer or to surrender the domain name, The New York Times would exercise its right to have the domain name placed on "hold". The New York Times received no response by its November 12, 1996 deadline, and accordingly, requested that the domain name be placed on "hold".
On January 15, 1997, David Reza Mahdavi wrote to The New York Times’s counsel (Annex 10), stated his firm represented NYIS, disputed The New York Times’ claims, and asserted NYIS’s "proposed non-commercial use of the Domain Name will not cause confusion ...," and NYIS "does not intend to use the Domain Name for commercial purposes at this stage." He proposed posting a disclaimer on the NYIS site, "when and if a home page is established ... ." Mr. Mahdavi requested that counsel contact him.
On February 12, 1997, The New York Times’s counsel wrote to Mr. Mahdavi (Annex 11), (1) stating the January 15 letter did not arrive in counsel’s offices until January 31, 1997, (2) rejecting the legal arguments and the disclaimer proposal, (3) stating "It strains credulity to argue that that public would not believe that the domain name NEWYORKTIMES.COM is not affiliated in some way with the New York Times," and (4) citing case law and the U.S. Federal Dilution Act. The letter predicted that the domain name would soon be placed on "hold".
On or before October 1, 1997, NSI placed the domain name registration in issue on hold (Annexes 12, 13).
On May 25, 1999, Ms. M. Drucker of The New York Times legal department wrote to NYIS (Annex 14), demanding immediate transfer of the domain name and requesting a reply June 15, 1999.6 At page 6, The New York Times avers that NYIS did not respond.
After an investigation of the use of the newyorktimes.com site (Annex 157), Ms. Drucker sent a letter dated August 10, 1999 to Mr. T. W. Giles, a possible e-mail user of the site (Annex 168). At page 6, The New York Times avers that T.W. Giles never responded.
Also, at page 6:
"On August 25, 1999, Times Counsel wrote to Massoud Chabarbakhsh (who purportedly maintained the P.O. Box listed as the address for New York Internet Services) requesting that he transfer ownership of the ... domain names go The Times. (See Annex 17.) Mr. Chabarbakshsh never responded."
At pages 6 – 7:
"In 2000 [sic], Times Counsel followed up by contacting David Reza Mahdavi, who had responded to the original letter on behalf of New York Internet Services. Mr. Mahdavi indicated that he did not know if he still represented Respondent, and said that he would call back. However, Mr. Mahdavi never called back and did not return further phone calls from The Times."
At page 7, on or before June 23, 2000, NSI lifted the "hold" on the domain name registrations (citing Annex 18). "Almost immediately, ... [NYIS] posted a new home page, purporting to solicit comments about The New York Times and providing a link to NYTIMES.COM, the primary address of The New York Times on the Web. (Citing Annex199) A banner advertisement appeared on the site on August 4, 2000 (Annex 20).
At page 7, "on average, over four thousand users per day are attempting to reach NYTIMES.COM and ending up on Respondent’s site" (Annex 21).
In regard to "the legal grounds on which relief is sought," The New York Times urges:
At pages 7 - 8, under the heading "The Domain Name is Identical to Complainant’s Registered Trademarks," "the world famous newspaper The New York Times," has been published for more than 100 years, The New York Times owns 32 trademark registrations, and "[m]ost relevant" is the registration applied for February 9, 1996, and registered on December 19, 1997, for computer on-line services, and the registration applied for September 21, 1995, and registered on February 4, 1997, for "retail merchandise" (Annexes 3, 4 ). The New York Times’s trademark rights are "clearly prior in time and superior in all relevant aspects to the Respondent’s domain name registration."
At pages 8 - 9, under the heading "Respondent has No Legitimate Interest in the Domain Name," NYIS has no affiliation with The New York Times. NYIS has recently posted "several sentences on the site purporting to solicit comment and opinions" about The New York Times. That NYIS may solicit or provide commentary
" ... does not mean that Respondent is free to do so under The Times’s own trademark. ... NEW YORK TIMES is not just a part of Respondent’s domain name. It constitutes Respondent’s entire domain name."
The consequences would be severe if any cybersquatter:
"... could continue to use the trademarks of others merely by identifying its site as a forum for discussion concerning the goods or services sold under those trademarks.
"Anyone typing in the words NEWYORKTIMES.COM on his or her computer is clearly expecting to be connected with The New York Times newspaper or with The New York Times on the Web. ... Respondent has not and cannot demonstrate any legitimate interest in diverting thousands of users per day to his site ... ."
At pages 9 - 10, under the heading "Respondent has Registered and Used the Domain Name in Bad Faith," The New York Times refers to both Paragraphs 4(b) and 4(c) of the Policy and summarizes the four factors set out in Paragraph 4(b). The New York Times avers inter alia:
"The New York Times is a world famous trademark as to which Respondent cannot credibly claim to have been unaware. ... Respondent never even made a pretext of using the domain name to carry on his own "New York Times" business. ... While Respondent has not as yet offered to sell the domain name to The Times, this is presumably because Respondent understands the dire consequences for his position of such an action. The simple fact remains, however, that the NEWYORKTIMES domain name was registered by Respondent for one of two reasons; either to profit from selling the names to its legitimate owner, The Times, or to misappropriate The Times’s name to sell advertising.
"Respondent’s current use of the NEWYORKTIMES domain name only underscores his bad faith. His purported use of the site to solicit comments about The New York Times eliminates any argument that his registration or use of the domain name were without reference to The Times’s trademark. And his inclusion of a disclaimer ... eliminates any argument that he is unaware of the marketplace confusion his use of this domain name is creating. Indeed, our record indicate that an average of over 4000 users per week [sic] have been tricked into going to NEWYORKTIMES.COM to find The New York Times on line.
" ... in a letter dated January 15, 1997, Respondent himself left open the possibility that he will utilize the NEWYORKTIMES domain name for a purely commercial purpose by saying that ‘Registrant does not intend to use the domain name for commercial purposes at this stage.’ [Emphasis added.] ... Now that Respondent has added banner advertising to the site, his commercial intent is crystal clear."
At pages 10 - 11, The New York Times requests that the domain name be transferred to it.
The complaint concludes with the requisite certification as to completeness and accuracy, is signed by Solomon B. Watson IV, but is not dated.
d. The Response
The response appears to have been transmitted only by email and thus is not signed. It is dated September 19, 2000, notwithstanding that it was transmitted to the Center on October 20, 2000.
In paragraph 1, the response states NYIS received Notification of Complaint, etc. on August 31, 2000, and the Center set "July 25, 2000"10 as the date for the submission of a response. At paragraph 4, the response states Thomas P. Liniak, Esq. is NYIS’s authorized representative in this proceeding. At paragraph 5, NYIS states electronic communication should be directed to Mr. Liniak’s email address, with copy to NYIS’s email address.
In paragraph 6, NYIS avers inter alia:
NYIS registered the domain name on June 17, 1996 "for the purpose of providing a public forum for expressing opinions and comments regarding Complainants publications." A check of NSI’s whois data base indicated that The New York Times had registered "its domain name nytimes.com two years earlier, and ... was not interested in obtaining a registration for the domain name newyorktimes.com.".
NYIS’s intent was communicated to The New York Times, quoting in part from the January 15, 1997 letter to The New York Times. "Even though such use was and still is fully permitted under US trademark laws Complainant made unfounded allegations of trademark infringement to NSI, which automatically placed the Domain Name on ‘hold’ [citing Annexes 12 and 13]."
The New York Times rejected NYIS’s position, thus in effect taking the position that any use of a registered trademark as a domain name is prohibited even for non-commercial uses such as commentary and parody.
The New York Times misinterprets and misapplies the U.S. Federal Dilution Act in the complaint. The Federal Dilution Act makes plain that noncommercial use of a mark is not actionable under the Act.
Rather than using the U.S. Court system, The New York Times has harassed NYIS for over four years. As an example, T. W. Giles, a party threatened by The New York Times, is unknown to NYIS and "in no way related to this matter."
Upon release of the domain name from "hold", NYIS commenced use of the domain name "exactly as it had proposed four years earlier, in full compliance with the trademark laws."
NYIS’s "sole use of the Domain Name, as confirmed by Complainant in its Complaint has been a commentary page. In addition to having a link for expressing comments and opinions this page also has links to Complainant’s web site, the nonprofit organization Electronic Frontier Foundation’s ‘Blue Ribbon Campaign for free speech online’ web page, and the web hosting company that hosts this domain freely in exchange for links to its sites. Non[e] of the links or the statements on this domain’s web page provide any source of material gain, commercial or otherwise, for the Respondent."
The domain name "is hosted by Domain Valet, a company that provides free web hosting provided the domain name holder give[s] permission to the company to attach a separate ‘frame’ to the top of the domain name holder’s page consisting of banner advertising." The banner advertising is loaded automatically when NYIS’s web page is loaded into a Web browser.
NYIS is "in no way affiliated with the web hosting company Domain Valet and does not gain any financial or other benefit from the banners posted on top of the page other than the ability to post its page on the internet and enable the public to express their opinions."
NYIS has taken "numerous voluntary steps to ensure that its visitors are not in any doubt regarding the disassociation of its web site from the Complainant’s." NYIS cites the different design of the pages, disclaimers, a link directing visitors "who incorrectly assume Complainant’s domain name to the desired destination," a notice acknowledging The New York Times’s trademark rights, a meta tag directing search engines not to index the page, "so that errors in search technologies will not inadvertently direct the public to this site by mistake."
Despite NYIS’s "every effort to dispel confusion among the public as to the source of this page, Complainant attempts to reflect these as a sign of bad faith. ... It interprets the fact that 4,000 confused weekly visitors who guessed wrongly that this Domain Name was the Complainant’s selected web address but were promptly transported there due to Respondent’s effective voluntary link as a sign of bad faith. The fact is that if this web page had not existed, as envisioned by Complainant in 1994 when it selected nytimes.com and rejected this newyorktimes.com for at least two year, these 4,000 confused visitors would not get to Complainant’s web site."
"Even if a visitor is under the false assumption that the Domain Name is related to the Complainant, a momentary glance at the page will clearly remove such doubts, and allow the visitor the fastest possible transition to its desired destination through the links."
NYIS vigorously denies the allegation that NYIS registered the domain name either to sell it or to sell advertising. NYIS has intended to use, and has used, the domain name "non-commercially for the expression of opinions and commentary." NYIS has not attempted to sell the domain name or to sell advertising. The New York Times can only point to the "existence of banners by the service provider in exchange for providing free web hosting of the Domain Name."
"In paragraph 7, NYIS quotes Paragraph 4(c)(iii) of the Policy in support of its contention that "Any non-commercial use is legitimate, without regards to the specific nature of use, as long as there is no ‘intent for commercial gain’."
In paragraph 8, NYIS cites Hamlet Group v. James Lansford, WIPO Case
2000-0073, for the proposition that "use of a mark in the context of news reporting or commentary" is a "generally accepted" form of legitimate noncommercial use - "exactly the type of use being made in this case."
In paragraph 9, NYIS avers (1) to be liable it must use the designation as a trademark; (2) its use is protected by the First Amendment, citing U.S. judicial authority, and; (3) the anti-dilution statute cannot be used to permit the trademark owner to enjoin use of its mark in a "noncommercial context", citing U.S. judicial authority.
In paragraph 10, NYIS cites 15 U.S.C. 1125(c)(4)(B) in support of the proposition that U.S. trademark laws allow for non-commercial use of a mark.
In paragraph 11, NYIS argues that "initial confusion" is not cognizable under U.S. trademark law, without citing authority.
In paragraph 12, NYIS contends that The New York Times acknowledges certain "points of fact" in the complaint, e.g.:
NYIS registered the domain name with full knowledge of The New York Times’s trademark rights, "but after consultation with counsel it was assured that non-commercial use of a mark for commentaries is fully allowed by trademark laws."
NYIS has been "consistent and open" about its "intended non-commercial use of the Domain Name for expression of opinions and commentary from the beginning."
The New York Times has "never observed any use of the Domain Name that would commercially benefit" NYIS.
The New York Times has not charged NYIS with "making any specific commercial gain through its use of the Domain Name."
The New York Times has never received "any offer for sale of the Domain Name for any financial benefit" to NYIS.
The domain name was not in inactive status when the complaint was filed, "a situation which could have been construed as commercial/bad faith use."
The New York Times has been aware of NYIS’s domain name registration for years, "but has taken no legal action in any court of law."
In paragraph 13, the domain name was neither registered nor used in bad faith. The use is clearly a fair use under the Policy and U.S. trademark laws, including the
Anti-Cybersquatting Act.
In paragraph 14, despite The New York Times’s knowledge of the domain name since October 1996, it has not filed any legal action against NYIS for four years. "Failure to do so bares [sic] Respondent [sic] from such action at this time based on the doctrine of estoppel by laches."
In paragraph 15, "Bad Faith" as used in the Policy, "and the newly enacted addition to the trademark laws," refers to actual or intended "commercial use" of a domain name. It does not refer to any "non-commercial bad faith." Absent commercial use, NYIS cannot be "in violation of trademark laws or the Policy."
In paragraph 16, based on "WIPO’s case history this body is not empowered to rule on the adequacy or appropriateness of the use of a domain name." If the use is
non-commercial, the case must be dismissed.
In paragraph 17, The New York Times has failed to satisfy the requirements of Paragraph 4(b)(i) of the Policy. NYIS has been "making a legitimate noncommercial or fair use of the domain name without intent for commercial gain" under Paragraph 4(c)(iii). "This demonstrates the Respondent’s rights or legitimate interests to the Domain Name for purposes of Paragraph 4(b)(ii)." NYIS requests a decision that "the present use of the Domain Name is permissible under ICANN’s Policy and Rules."
In paragraph 20, NYIS states a copy of the response "has been transmitted to the Complainant on July 25, 2000" to Mr. Watson’s email address.
Paragraph 22 includes the requisite certification as to completeness and accuracy.
The response is dated September 19, 2000. The Panel’s copy is not signed.
Annex A to the response purports to be a copy of the web page at newyorktimes.com.
Annex B purports to be a copy of "Domain Valet Terms of Service."
e. The Reply
The New York Times undated, unverified and unsigned reply sets out three arguments, viz:
1. The New York Times did not wait too long to bring this proceeding. Summarizing the history of the domain name, especially the fact that it was on "hold" until released in June 2000, The New York Times contends that filing this complaint two months later shows no delay and no laches.
2. The New York Times contends that NYIS’s use of the domain name is not protected by the First Amendment. Citing authority, The New York Times distinguishes between use of a trademark in the context of free speech and use of a mark to create confusion as to the source of the speech. The New York Times quotes from, inter alia, Monty and Pat Roberts v. Bill Keith, WIPO Case D2000-0299, in which the Panelist stated, in dicta:
"One may be perfectly free to express his or her views about the quality or characteristics of the reporting of The New York Times or Time Magazine. That does not, however, translate into a right to identify one’s self as the New York Times or Time Magazine."
3. The New York Times contends that NYIS’s use is commercial. The New York Times avers, inter alia:
No "commentary page" was created until after NYIS received The New York Times’s initial cease and desist letter.
After the "hold was lifted, the site focused on "criticizing The Times’ [sic] decision to initiate this UDRP."
"As of yesterday, however, the site has ostensibly reverted to seeking commentary regarding The New York Times newspaper and it now provides links to (i) a bulletin board site at Yahoo/GeoCities, which features various types of advertisements; to (ii) Domain Valet, which solicits customers for free web hosting but also sells ancillary services such as domain name registrations and ‘advanced hosting’ and to (iii) the Blue Ribbon Campaign for Free Speech Online."
A large banner advertisement appears at the top of the page with regard to making money "with your website! Click away! ..." "When you click through to www.hostpro.com/partners/affiliate, there is an advertisement stating that if you join the HostPro Affiliate Partner Program, you receive $50 if a visitor to your website selects their banner and makes a purchase of a basic web hosting service and you receive $300 if a visitor to your website selects their banner and purchases a dedicated Hosting Service.’ [sic] Therefore, Respondent can profit from click-throughs to this site from the newyorktimes.com website."
This is a commercial use of the website.
The New York Times does not know the identity of NYIS and thus cannot assess whether or not NYIS has a financial interest in any site to which newyorktimes.com is linked.
NYIS has created a site that can be "successfully marketed on the basis of the large volume of traffic generated from the use of the New York Times’s name."
5. Discussion and Findings
Paragraph 4(a) of the Policy directs that The New York Times must prove, with respect to the domain name in issue, each of the following:
(i) The domain name in issue is identical or confusingly similar to The New York Times’ trademark in issue here, and;
(ii) Respondent has no rights or legitimate interests in respect of the domain name, and;
(iii) The domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for purposes of Paragraph 4(a)(iii) above shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by respondent, shall demonstrate respondent’s rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii) above.
a. The Late Response
NYIS’s response is indisputably late. The Panel does not regard NYIS’s argument that settlement discussion were on-going as an acceptable excuse for not filing the allegedly timely prepared response until a month after it was due. Nor is NYIS correct in asserting the response "does not rely on any new facts." Nevertheless, because this decision, like all other decision under the Policy and applicable rules, must be grounded in due process, the Panel will accept the response and will consider it. Rules 10(a), (b), (d) and 15(a) provide sufficient authority for the Panel’s decision on this score.
b. The Reply
The New York Times’s reply is another matter. As noted in Section 4.e. above, the Panel’s copy of the reply is not dated, is not signed by a representative of The New York Times, and does not contain a certification or verification of the completeness and accuracy of the statements it contains. Cf. Rules 3(b)(xiv) and 5(b)(viii). This deficiency is especially acute in respect of the contentions as to the alleged commercial use of the NYIS site. Accordingly, the Panel will give no weight to any statement in the reply.11
c. The Laches Argument
The New York Times has acted in a timely manner since first contacting NYIS in November 1996 (although neither party has been a paradigm of promptness or precision in this proceeding.) The domain name registration was on "hold" from about October 1997 to June 2000. The complaint in this proceeding was submitted and served August 15, 2000. Even if NYIS’s contentions as to laches had been properly pleaded, it is apparent that NYIS could not prove laches.
Accordingly, the Panel now proceeds to consider this matter on the merits in light of the complaint, the response, the Policy, the relevant rules, and applicable authority.
d. Identity or Confusing Similarity
The New York Times has the burden of proving this element and each of the other two elements of Paragraph 4(a) of the Policy.
The New York Times asserts, by quoting Paragraph 4(a)(i), that this element is satisfied. Notwithstanding that The New York Times’s averments in paragraph 14 of the complaint do not enlarge in any relevant way on this naked assertion, it is plain that the mark and the domain name are identical on their faces. NYIS does not contest this fact. Thus, on this record, this element has been established.
e. Rights or Legitimate Interests
On this record, no challenge has been leveled with respect to (1) the validity of any The New York Times trademarks or registrations, (2) The New York Times’s rights in the mark with respect to the goods and services offered by The New York Times, (3) the prior use of the mark by The New York Times, and (4) the global fame and goodwill associated with the mark.
However, NYIS contends that it has rights or legitimate interests in the domain name under Policy, Paragraph 4(c)(iii), because (1) NYIS’s intended and actual use of the web site has been "non-commercial", and (2) the law permits the use of a mark in commentary and the expression of opinions. As the Panel discusses below, neither position carries the day for NYIS on this record.
Given that an intended and actual use of the web site has been to provide space for opinions and commentary regarding The New York Times, it is not at all clear that that has been the only use to which the web site has been put by NYIS. NYIS itself points out that among the features of the web site are (1) a link to another organization’s web page (i.e. Electronic Frontier Foundation’s "Blue Ribbon Campaign for free speech online"), and (2) links to the web hosting company’s sites. The record reflects nothing about the activities of Electronic Frontier Foundation or the features of its web page. In contrast, NYIS describes in some detail the activities of the hosting company, Domain Valet and includes at NYIS’s Annex B a copy of Domain Valet’s Terms of Service.
From NYIS’s averments it is plain that Domain Valet provides "free web hosting" to NYIS in return for NYIS’s agreeing to permit Domain Valet to insert banner advertising on the web site in issue. NYIS notes that each page NYIS creates at the web site is required to carry Domain Valet’s advertising HTML, which will load in an advertising banner "automatically when your [NYIS’s] pages are loaded into a Web browser." NYIS contends it does not gain "any financial or other benefit from the banners posted on top of the page." But NYIS does concede that an exception to this blanket proposition is that NYIS does gain "the ability to post its page on the internet and enable the public to express their opinions."12 This admitted exception fatally undercuts NYIS’s contention that it receives no "financial or other benefit" from the advertising on its web pages at the site in issue. NYIS has expressly agreed to advertise on the site in issue whatever Domain Valet wishes to advertise. In return, NYIS can use Domain Valet’s hosting services. This arrangement is clearly a commercial arrangement, with the site in issue being used for commercial purposes, i.e. advertising, by express agreement of NYIS.
Even if the site at newyorktimes.com were purely a commentary or opinion site, NYIS would not be entitled to use THE NEW YORK TIMES mark in the domain name. As this Panel discussed in E. & J. Gallo Winery v. Hanna Law Firm, WIPO Case D2000-0615, even though NYIS may have the right (1) to establish a commentary or opinion site re The New York Times and (2) to mention The New York Times at the site and to reproduce the mark there, NYIS is not necessarily entitled to use The New York Times name or mark as part of NYIS’s address for such a website. A domain name is not only an address, it is also a personal identifier. Many addresses have been available to NYIS which would not in any way impinge on the trademark rights of The New York Times. NYIS consciously chose the domain name in issue to lead Internet users to the NYIS site. NYIS is consciously counting on initial confusion to direct Internet users to the NYIS site. It is highly likely that such users intend to find an authorized site of The New York Times.13 Disclaimers and links directly to the authorized site do not mitigate matters. The misdirected searcher is immediately confronted with advertising that has nothing to do with The New York Times.14
The excerpt from the Hamlet Group opinion relied on by NYIS is not inconsistent with the views of this Panel. In Hamlet, the Panel referred expressly to the use of a mark "in the context of news reporting or commentary." This statement in no sense warrants the unauthorized use of a well-know trademark as a domain name. Respondent defaulted in that case, and the Panel had no evidence of Respondent’s proposed use of the domain name. Apparently, the web page was "Under Construction" at the time of the proceeding.
Other relevant authority on point include DFO, Inc. v. Christian Williams, WIPO Case D2000-0181, Mission KwaSizabantu v. Benjamin Rost, WIPO Case
D2000-0279, Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case D2000-0299, and Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case D2000-0300.
NYIS gains financially from the use of newyorktimes.com as the address for its web site. Domain Valet admittedly gains financially from the same site. NYIS’s use of the domain name in issue is not "noncommercial or fair use" as set out in Policy, Paragraph 4(c)(iii). Accordingly, NYIS’s domain name in issue violates Policy, Paragraph 4(a)(ii).15
f. Registration and Use in Bad Faith
Registration and use of the domain name in issue in bad faith are matters of the appropriate inferences to draw from circumstantial evidence. Both registration in bad faith and use in bad faith must be proved by The New York Times.
The New York Times contends that the bad faith elements are established because NYIS registered the domain name in issue either (1) to profit from selling the name to its legitimate owner or (2) to misappropriate The New York Times’s name to sell advertising. At bottom, The New York Times urges:
"Now that Respondent has added banner advertising to the site, his commercial intent is crystal clear."
NYIS counters by contending it has done all it can do at its "non-commercial" commentary site to steer "confused" visitors to the site authorized by The New York Times, by way of a disclaimer and NYIS’s "effective voluntary link" to the authorized site. In essence, NYIS attempts to meet the bad faith challenge by falling back on its non-commercial and fair use contentions. NYIS argues that the Policy contemplates only commercial use in connection with the bad faith element of Paragraph 4(a).
On this record, it appears that NYIS has run afoul of Policy, Paragraph 4(b)(iv). Confusion is apparent from the identity between the domain name and the mark in issue. Moreover, NYIS has virtually admitted confusion in its references to (1) "visitors who incorrectly assume Complainant’s domain name," (2) its "every effort to dispel confusion among the public," and (3) "4,000 confused weekly visitors." 16
As the Panel has noted above, disclaimers and links to the authorized site do not dispel the initial confusion. It is this confusion on which NYIS relies to attract visitors to its site. NYIS has created this confusion by choosing a domain name that is identical to The New York Times’s well-know trademark of which NYIS was aware in 1996 when it registered the domain name.
Also, on this record, it is clear that NYIS has intentionally attempted to attract Internet users "for commercial gain." Notwithstanding NYIS’s protestations to the contrary, NYIS does benefit financially by using this domain name, viz.: NYIS enjoys free hosting services. In addition, Domain Valet, with whom NYIS has contracted for "free" hosting services, is entitled to place advertisements at the site for Domain Valet’s commercial gain.
Apposite here is Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case D2000-0300:
"In the instant case, Respondent is using the domain name ... to attract Internet users to its website by creating a likelihood of confusion with Complainant’s mark. It is doing so for direct or indirect commercial gain. ... commercial harm may well be suffered by Complainant if Internet users abandon their efforts to reach its website."
In Monty Roberts, respondent sold products through its offending website. In the instant case, NYIS may not itself be selling products, but by contracting with Domain Valet to advertise products and services at the NYIS site, NYIS at least indirectly offers such products and services for sale. This reinforces the conclusion that NYIS has engaged in conduct prohibited by Paragraph 4(b)(iv).
All of the elements of Paragraph 4(b)(iv) have been satisfied. Accordingly, NYIS has both registered and used the domain name in issue in bad faith under Paragraph 4(a)(iii).
6. Decision
In light of the findings by the Panel, the Panel decides that The New York Times has met its burden of proving (1) the domain name in issue is identical to the THE NEW YORK TIMES mark, (2) NYIS has no rights and no legitimate interest in respect of the domain name in issue, and (3) the domain name in issue has been registered and is being used by NYIS in bad faith.
Accordingly, the Panel requires that the registration of the "newyorktimes.com" domain name be transferred to The New York Times.
David W. Plant
Sole Panelist
