Media West-LCJ, Inc., Gannett Kentucky Limited Partnership, Gannett, Co., Inc. v. John Zuccarini, RaveClub Berlin

Case No. D2003-1022

The Complainants are Media West-LCJ, Inc., Gannett Kentucky Limited Partnership, and Gannett Co., Inc, Reno, Nevada, United States of America, represented by Dow, Lohnes & Albertson, PLLC, United States of America.

The Respondents are John Zuccarini and RaveClub Berlin, The Cupcake Patrol, Panama.

The disputed domain names are <courierjornal.com>, <courierjounal.com> and <courierjournel.com>.

The disputed domain names are registered with CSL Computer Service Langenbach GmbH dba Joker.com.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 23, 2003. On December 23, 2003, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain names at issue. On December 24, 2003, CSL Computer Service Langenbach GmbH dba Joker.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 8, 2004. In accordance with the Rules, paragraph 5(a), the due date for the Response was January 28, 2004. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on January 29, 2004.

The Center appointed Christiane Féral-Schuhl as the Sole Panelist in this matter on February 5, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The Complainants asserted and provided evidence in support of the following facts, which the Panel finds well established.

The Complainants have been well-known publishers of "The Courier-Journal" newspaper since 1868.

The Complainant Media West-LCJ, Inc. is the owner of trademark registrations consisting of, or incorporating, the words "Courier Journal" (Exhibit C of the Complaint), among which:

- Federal Trademark "THE COURIER-JOURNAL," Registration No. 2,304,262, registered on December 28, 1999, by Media West-LCJ, Inc.,

- Federal Service mark "THE COURIER-JOURNAL BLUEGRASS POLL," Registration No 2,668,686, registered on December 31, 2002, by Media West-LCJ, Inc.

The Complainant Gannett Kentucky Limited Partnership is using these marks in its creation and distribution of "The Courier-Journal" newspaper pursuant to a license agreement with the Complainant Media West-LCJ, Inc.

The Complainants have also registered several domain names consisting of, or incorporating, the words "Courier Journal" (Exhibit C of the Complaint), among which: <courierjournal.com>, <courier-journal.com>, <thecourierjournal.com>, <courierjournal.biz>, and <courierjournal.info> (Exhibit F of the Complaint) and have been operating, for five years, an online version of this newspaper at "www.courier-journal.com" website (Exhibit E of the Complaint).

The disputed domain names <courierjornal.com>, <courierjounal.com> and <courierjournel.com> were registered by the Respondent RaveClub Berlin with Joker.com on August 10, 2001. On December 2003, the registration information of the disputed domain names was modified so that the Respondent John Zuccarini appears to be the owner of the disputed domain names and so that the Respondent RaveClub Berlin remains unchanged as the administrative, technical and billing contact (Exhibit A and B of the Complaint).

The Panel notes that the registration dates of all of the above-referenced domain names registrations by the Complainants as well as the trademark registrations by the Complainants containing the words "courier journal," predate the date of registration of the disputed domain names by the Respondents.

The Complainants claim that the disputed domain names are virtually identical and confusingly similar to "the courier-journal" marks in which the Complainants have rights, even with minor alterations of these marks by misspelling the word "journal." The Complainants cite, in support, various WIPO decisions rendered on similar cases against the Respondents. The Complainants add that the fact that the marks contain the word "the," where the disputed domain names do not, is inconsequential to the analysis.

In addition, the Complainants claim that the Respondents have no rights or legitimate interests in respect of the disputed domain names, since:

(i) the Respondents are not authorized to use "the courier-journal" marks in any way;

(ii) the Respondents have never used or made demonstrable preparation to use the disputed domain names with bona fide offering of goods or services (see Policy, paragraph 4(c)(i)), as the disputed domain names redirected users to pornographic websites and subjected users to numerous "pop-up" advertisements and to a "mouse-trapping effect" making it more difficult for them to leave the pornographic websites;

(iii) in similar circumstances, numerous WIPO decisions rendered against the Respondents, hold that the Respondents have no legitimate interests in using a confusingly similar domain name to divert Complainant’s customers to other websites.

Finally, the Complainants assert that the disputed domain names have been registered and used in bad faith. In particular, the Complainants indicate that the following facts establish bad faith under paragraph 4(b)(iv) of the Policy:

(i) the registration of the disputed domain names exploits a misspelling or a mistyping of the Complainants’ trademark;

(ii) the disputed domain names are used for commercial gain to attract Internet users to websites and "pop-up" advertisements;

(iii) the Respondents have already been the subject of at least eight WIPO decisions for cybersquatting activities and a decision of the Federal Trade Commission.

Based on the foregoing, the Complainants seek the transfer of the disputed domain names <courierjornal.com>, <courierjounal.com> and <courierjournel.com>.

The Respondents did not reply to the Complainants’ contentions.

The Panel finds that the Complainants have provided sufficient evidence to show that they are the owner and legitimate user of the trademark "THE COURIER-JOURNAL."

The disputed domain names differ from the trademark of the Complainants merely by one letter. Such misspelling of the trademark, by transposing or deleting one letter from the trademark, does not prevent the disputed domain names from being considered virtually identical or confusingly similar to the Complainants’ trademark.

In particular, as stated in the decision AT&T Corp. v. John Zuccarini d/b/a Rave Club Berlin, WIPO Case No. D2001-1503: "[…] the disputed domain name is very similar to the mark in its visual impression. An Internet user or consumer viewing the disputed domain name is likely to confuse it with Complainant’s mark […] Respondent appears to have employed a minor misspelling of Complainant’s mark to take advantage of a typographical error that may be made by Internet users while attempting to enter Complainant’s mark as its logical Internet address in their web browsers."

The panel therefore finds that the disputed domain names <courierjornal.com>, <courierjounal.com> and <courierjournel.com> are confusingly similar to the Complainants’ trademark and as a consequence, the action brought by the Complainants meets requirement of paragraph 4 (a)(i) of the Policy.

According to the Policy, paragraph 4(b)(ii), the Complainants must demonstrate that the Respondents have no rights to, or legitimate interests in, the domain name.

The Panel notes that, as asserted by the Complainants in their Complaint:

(i) there is no evidence that the Respondents are authorized to use "the courier-journal" marks in any way;

(ii) there is no evidence that, before notice to the Respondents of the dispute, the Respondents had been using or was making demonstrable preparations to use the disputed domain names in connection with any type of bona fide offering of goods or services. On the contrary, the Complainants assert that by typing the disputed domain names, users were redirected to pornographic websites and subjected to "pop-up" advertisements.

As stated in the decision Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079, "[…] While […] many adult sex sites are perfectly legal and constitute bona fide offerings of goods or services, the use of somebody else’s trademark as a domain name (or even as a meta-tag) clearly does not constitute a bona fide offering of goods or services when the website owner has no registered or common law rights to the mark, since the only reason to use the trademark as a domain name or meta-tag is to attract customers who were notlooking for an adult sex site, but were instead looking for the products or services associated with the trademark."

In any case, the Respondents did not submit any Response or evidence proving their rights or legitimate interests in the disputed domain names, while they had been given the opportunity to do so pursuant to paragraph 4(c) of the Policy.

As a result, the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy are fulfilled.

With regard to the use in bad faith of the disputed domain names, the Complainants’ evidence shows that the disputed domain names are used for commercial gain to attract Internet users to pornographic websites and "pop-up" advertisements. As held in various decisions (Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022; Caledonia Motor Group Limited v. Amizon, WIPO Case No. D2001-0860; Bass Hotels & Resorts, Inc. v. Mike Rodgerall,WIPO Case No. D2000-0568), the mere diversion of domain names to a pornographic website, whatever the motivation of the Respondent, is in and of itself certainly consistent with the finding that the disputed domain name was registered and is being used in bad faith.

In addition, as noted by the Complainants, the Respondents have already been the subject of at least eight WIPO decisions for cybersquatting activities and a decision of the Federal Trade Commission.

Finally, the Respondents did not submit any Response or evidence proving that they used the disputed domain names in good faith, while they had been given the opportunity to do so.

Therefore, the Panel finds that the disputed domain names <courierjornal.com>, <courierjounal.com> and <courierjournel.com> were registered and are used by the Respondents in bad faith and considers the requirements of paragraph 4(a)(iii) of the Policy to be fulfilled.

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <courierjornal.com>, <courierjounal.com> and <courierjournel.com> be transferred to the Complainants.