1. The Parties
Complainant is The Republican Company, a corporation located in Springfield,
Massachusetts, USA.
Respondent is John Bonin, an individual located in Springfield, Massachusetts,
USA.
2. The Domain Names and Registrar
The domain names at issue are:
<springfieldunionnews.com>,
<springfieldnewspapers.com>,
<springfielddailynews.com>,
(the "Domain Names").
The registrar is Register.com.
3. Procedural History
This action was brought in accordance with the ICANN Uniform Domain Name Dispute
Resolution Policy, approved October 24, 1999 ("the Policy"), and the ICANN Rules
of Uniform Domain Name Dispute Resolution Policy, approved October 24, 1999
("the Rules").
The Complaint was submitted on October 8, 2001. On October 9, 2001, Register.com
confirmed registration of the Domain Names at issue to the Respondent. The Response
was submitted on October 31, 2001.
On February 6, 2002, the WIPO Arbitration and Mediation Center appointed Mark
V. B. Partridge (Presiding), David M. Kelly, and Mike Rodenbaugh as Panelists.
On February 21, 2002, in accordance with Paragraph 12 of the Rules, the Panel
issued a Procedural Order requesting that Complainant submit additional evidence
by way of affidavit and exhibits as to the nature and extent of its use of the
alleged marks SPRINGFIELD DAILY NEWS, SPRINGFIELD UNION-NEWS and SPRINGFIELD
NEWSPAPERS during the past five years. Both parties made submission in response
to that order.
4. Factual Background
The Complainant is a newspaper publishing company located in Springfield,
Massachusetts. Complainant’s company was incorporated in 1878, but it or its
predecessors in interest have been in the newspapers publishing business since
1824. In 1883, Complainant began publishing a daily newspaper entitled "Springfield
Daily News."
In 1987, Complainant received a Massachusetts State trademark registration
for THE DAILY NEWS. This registration was based on the first use of the mark
in February of 1880. Complainant renewed its registration in THE DAILY NEWS
in 1997. According to the Affidavit of Larry A. McDermott, Complainant's Vice
President, the mark SPRINGFIELD DAILY NEWS was used from 1883 until 1987, when
the name of the paper was changed to SPRINGFIELD UNION-NEWS. Complainant has
continuously published the "Springfield Union News" since 1987. Page
2 of the newspaper has included that statement "Union News (incorporating the
Morning Union and Daily News)" also since 1987.
Complainant applied for and received a Massachusetts State trademark registration
for UNION-NEWS in 1987. Complainant also renewed its registration in UNION-NEWS
in 1997. Currently, Complainant publishes two newspapers, the "Springfield
Union News," and the "Sunday Republican."
On October 2, 2000, Respondent registered the domain names <springfielddailynews.com>,
<springfieldunionnews.com>, and <springfieldnewspapers.com> with
Register.com. Before registering the Domain Names, Respondent claims to have
conducted a trademark search and found no trademark registrations in <springfieldunionnews.com>
or <springfieldunionnews.com>, and an expired trademark registration in
<springfielddailynews.com>.
On April 25, 2001, Complainant’s attorneys sent an electronic mail message
to Respondent claiming Complainant’s trademark rights in "Springfield Daily
News," "Springfield Union News," and "Springfield Newspapers,"
and demanding that Respondent transfer ownership of the domain name <springfieldunionnews.com>
to Complainant. Complainant did not receive a reply to the April 25, 2001, electronic
mail message, and its attorneys sent the same letter to Respondent via Federal
Express on May 16, 2001. After receiving no reply from Respondent to either
April or May correspondence, Complainant’s attorneys sent a final letter to
Respondent on June 15, 2001, notifying Respondent that if Complainant or its
counsel did not hear from the Respondent, legal action would be taken.
5. Parties' Contentions
Complainant contends that the Domain Names are confusingly similar to Complainant’s,
"…business and publication names, state trademark registrations and
common law trademarks." Complainant also contends that Respondent has
no rights or legitimate interest in the Domain Names.
Finally, Complainant contends that Respondent’s registration and use of the
Domain Names is in bad faith because he is primarily using the Domain Names
to disrupt Complainant’s business and intentionally attract Internet users to
his web site by the registration of Domain Names that create a confusion with
Complainant’s marks.
Respondent contends that Complainant’s rights are only in the state registered
marks, THE DAILY NEWS and UNION-NEWS, and these marks "have no relation"
to his Domain Names. Respondent also contends Complainant has no rights in the
term "Springfield" because it is a geographic term and there are at
least twenty-four cities with this same name in the United States.
6. Discussion
A. Confusing Similarity
The domain name <springfieldunionnews.com> is confusingly similar to
the mark SPRINGFIELD UNION NEWS in which Complainant has shown common law rights
through a substantial period of use.
As for the domain name <springfieldnewspapers.com>, Complainant does
not prove sufficient trademark rights in the descriptive phrase SPRINGFIELD
NEWSPAPERS. Indeed, Complainant points to nothing in the record to show that
it used or uses same as a trademark. The sole possible evidence the Panel notes
from the record (a photograph of a "SPRINGFIELD NEWSPAPERS" building
sign in 1969), is insufficient to prove current trademark use, let alone protectable
rights.
We also believe that Complainant has failed to meet its burden of proof with
respect to the Domain Name <springfielddailynews.com>. Complainant admits
that the mark SPRINGFIELD DAILY NEWS has not been used as the name of a paper
since 1987. Under U.S. trademark law, three consecutive years of non-use is
prima facie evidence of abandonment. 15. U.S.C. 1127. To counter that presumption
of abandonment, Complainant cites the fact that page 2 of its newspaper includes
the statement "Union News (incorporating the Morning Union and Daily News)".
Similar evidence was deemed insufficient use to avoid abandonment of trademark
rights in American Photographic Publishing Co. v. Ziff-Davis Publishing Co.,
135 F.2d 569 (7th Cir. 1943), (holding that historical reference
to prior title on magazine masthead did not avoid abandonment of rights). We
agree that more would be necessary to overcome the presumption of abandonment
resulting from Complaint's non-use of the mark. Therefore, on the record before
us, we do not believe Complainant has met its burden of proving current rights
in the mark SPRINGFIELD DAILY NEWS.
We also do not find <springfielddailynews.com> and <springfieldnewspapers.com>
to be confusingly similar to the mark SPRINGFIELD UNION NEWS, the mark in which
Complainant has demonstrated its rights.
Accordingly, we will consider the remaining issues only with respect to the
domain name <springfieldunionnews.com>. Based on the record presented,
Complainant fails to prove sufficient trademark rights as to the descriptive
phrases SPRINGFIELD NEWSPAPERS or SPRINGFIELD DAILY NEWS, which could refer
to any or several of the newspapers in other towns named Springfield. Therefore,
the domain names <springfieldnewspapers.com> and <springfielddailynews.com>
shall remain with Respondent.
B. Legitimate Interest
Complainant avers that it "never granted Respondent the right to use
or register its publication names or … trademarks," and therefore Respondent
has no legitimate interest in the Domain Names. Respondent does not appear to
be commonly known by any of the Domain Names and does not appear to be using
the Domain Names in connection with a bona fide offering of goods and services.
The web sites for each Domain Name merely contain links to Respondent’s electronic
mail address and to sites using the other Domain Names. Two of the sites include
the phrase, "It's great to be in publishing." The phrase on
the third site reads, "It’s good to be in publishing."
We conclude that Respondent lacks any right or legitimate interest in the domain
name <springfieldunionnews.com> which corresponds to Complainant’s publication
name and mark.
C. Bad Faith
There is no evidence that Respondent registered the Domain Names primarily
for the purpose of selling them for profit. The record demonstrates that Respondent
may intentionally use the Domain Names to attract Internet users to his web
sites by creating a likelihood of confusion with Complainant’s publication names
and trademarks, but there is no evidence that he is doing so for commercial
gain.
Nevertheless, other circumstances suggest bad faith. It is inconceivable that
Respondent registered and used the names without knowing that his actions would
prevent Complainant using the name of its newspaper as a domain name. Respondent's
lack of bona fide use of any of the names for other purposes suggests an intent
to warehouse the names until Complainant made a suitable offer. We believe these
circumstances support a finding of bad faith registration and use. Moreover,
given that Respondent has registered three domains directly relating to Complainant's
business, there appears to be a pattern of conduct in which Respondent seeks
to prevent Complainant from using domain names that correspond to the names
by which its business is known. Although we have found that Complainant failed
to prove trademark rights in two of the names, we are satisfied that Respondent's
pattern of registration is indicative of bad faith, especially since Respondent
is a resident of the town where Complainant's papers originate.
7. Conclusion
We find in favor of Respondent on the domain names <springfieldnewspapers.com>
and <springfielddailynews.com>. Complainant has not sufficiently proved
current trademark rights in the descriptive phrases SPRINGFIELD NEWSPAPERS or
SPRINGFIELD DAILY NEWS, and therefore Complainant's demand for transfer of the
domain names <springfieldnewspapers.com> and <springfielddailynews.com>
is denied.
We find in favor of Complainant on the domain name <springfieldunionnews.com>.
The Domain Name is confusingly similar to a mark in which Complainant has rights.
Respondent lacks any right or legitimate interest in the <springfieldunionnews.com>
Domain Name and has registered and used the Domain Name in bad faith. Therefore,
we conclude that the domain name <springfieldunionnews.com> should be
transferred to Complainant.
