CanWest Mediaworks Publications Inc. v. Moniker Privacy Services
Case No. D2008-0686
1. The Parties
The Complainant is CanWest Mediaworks Publications Inc., Don Mills, Canada, represented by Baker & McKenzie, Canada.
The Respondent is Moniker Privacy Services, Pompano Beach, United States of America.
2. The Domain Name and Registrar
The disputed domain name <thevancouversun.com>is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2008. On May 2, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On May 2, 2008, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 May 6, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2008.
The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on June 3, 2008. 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.
4. Factual Background
The Complainant is a subsidiary of CanWest Global Communications Corp., the largest media company in Canada. It owns and publishes the Vancouver Sun newspaper, the oldest, largest and most popular newspaper in the Province of British Columbia with a weekly circulation in excess of 1 million.
The Complainant is the registered owner of a series of Canadian trademarks for VANCOUVER SUN and THE VANCOUVER SUN, one of which is Registered trademark Number TMA454949 registered with the Canadian Intellectual Property Office on March 8, 1996 for THE VANCOUVER SUN in connection with newspapers and related goods.
The Complainant has also registered the domain name <canada.com> which resolves to a website “www.canada.com/vancouversun” where the Complainant publishes the online edition of the Vancouver Sun.
5. Parties’ Contentions
A. Complainant
The Complainant alleges that the contentious domain name <thevancouversun.com> should no longer be registered with the Respondent but that it should be transferred to the Complainant.
It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is identical to the Complainant’s registered trademark THE VANCOUVER SUN, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant relies on the registered trademark already referred to and says that the domain name <thevancouversun.com> is self-evidently identical to the THE VANCOUVER SUN mark because the Respondent has incorporated into the domain name the whole of the trademark and added nothing else.
The Complainant contends, to establish the second element, that the Respondent has no rights or interests in the domain name because:
(a) the Complainant has not granted permission to the Respondent to use its mark in a domain name or anywhere else;
(b) the Respondent has not and is not using the domain name in connection with a bona fide offering of goods or services;
(c) the Respondent has not registered THE VANCOUVER SUN as a trademark;
(d) the Respondent has never identified itself using THE VANCOUVER SUN trademark or ever been commonly known as THE VANCOUVER SUN;
(e) the Respondent is not making a legitimate or bona fide use of the domain name as it resolves to a website where the Respondent is offering advertising services in competition with the Complainant.
Finally, the Complainant contends that the domain name was registered and is being used in bad faith. It contends that this is so for numerous reasons including the following:
(a) the Respondent must have been aware of The Vancouver Sun newspaper and of the Complainant’s rights in the THE VANVOUVER SUN mark and yet went ahead and registered the domain name;
(b) there is no conceivable legitimate reason for the use of the domain name;
(c) the Respondent is using the domain name and the website to offer advertising services in competition with those of the Complainant and for the purposes of generating income;
(d) for the same reason, the Respondent must be said to have intended to disrupt the Complainant’s business and has done so;
(e) it is clear that the Respondent has intended to create confusion with the THE VANCOUVER SUN trademark of the Complainant; and
(f) the Respondent has tried to conceal its identity and has engaged in cyberflying, i.e. in transferring a domain name in the face of administrative proceedings.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In that regard, the Panel also notes that the fact that the Respondent has not made a submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the Complainant to make out its case and past UDRP panels have said many times that despite the absence of a submission from a respondent, a complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.
It is thereby possible to draw inferences from the evidence that has been submitted and in some cases from silence. Indeed, paragraph 14 of the Rules incorporates both of those notions into the procedures of the Panel.
The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.
For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
i. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
ii. The 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.
It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn.
A. Identical or Confusingly Similar
The Panel finds that the domain name <thevancouversun.com> is identical to the Complainant’s registered trademark THE VANCOUVER SUN.
That is so because the whole of the trademark has been incorporated into the domain name and the domain name is spelt and would be pronounced in exactly the same manner as the trademark.
The domain name also consists of the gTLD suffix ‘.com’. In that regard, it has been held many times that suffixes and minor spelling differences of this sort may not be used to negate a finding of identicality or confusing similarity that is otherwise present on the evidence, as it is in the present case.
Accordingly, the Complainant has made out the first of the three elements that it must establish.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.
But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Thus, if the Respondent proves any of these elements or indeed anything else that shows he has a right or interest in the domain name, the Complainant will have failed to discharge its onus and the Complaint will fail.
The Panel’s task in deciding if a registrant has any rights or legitimate interests in a domain name is made more difficult when, as in the present case, the registrant is in default and does not file a Response or any other form of submission. The Respondent was given notice that he had until May 26, 2008 to send in his Response, that he would be in default if he did not do so and that, by virtue of paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.
It is also well established that, as it is put in the Overview of WIPO Panel Views on Selected UDRP Questions (“the Overview”) that “…a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a) (ii) of the UDRP”.
The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name.
That finding is based on the facts that the Respondent chose for his domain name a name identical to the Complainant’s trademark, the trademark reflects the name of a prominent and prestigious newspaper, which the Respondent must be presumed to have known, the Complainant has never given the Respondent permission to use its trademark in a domain name or anywhere else, the website to which the domain name resolves leads to a series of sites which promote advertising and other services in competition with those of the Complainant and, finally, it is a reasonable inference that all of this has been done to generate revenue by one means or another.
The Respondent has not made any attempt to rebut this prima facie case, and the Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain name.
The Complainant has therefore made out the second of the three elements that it must establish.
C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limitedv. Nuclear Marshmallows,
WIPO Case No. D2000-0003.
Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The Complainant relies on paragraph 4(b)(ii), (iii) and (iv).
The Panel finds that the evidence submitted by the Complainant makes out a strong case that the Respondent both registered and is using the domain name in bad faith. In particular, the facts bring the case squarely within the provisions of paragraph 4(b)(iii) and (iv) of the Policy for the following reasons.
The evidence shows that the Respondent has registered the precise wording of the Complainant’s THE VANCOUVER SUN trademark as a domain name and used it to establish a website that is laid out and presented as if it were the official site of The Vancouver Sun newspaper, the newspaper owned and published by the Complainant.
The Respondent has done this first by using the actual words “The Vancouver Sun” on the home page of the site and by then creating a series of portals which are given names such as “news”, “classifieds”, “archives” and suchlike to mirror the sections one would expect to find on the genuine site of a newspaper. It is a reasonable inference to draw that the Respondent’s website has been got up in this manner to give the impression that it is the website of The Vancouver Sun and that its contents are therefore on the site with the imprimatur of the owner of the newspaper.
Some of these portals offer advertising and other services which are clearly in competition with the services offered by the Complainant. Others, however, are entirely deceptive for, instead of leading to the information they claim to contain, they actually lead to sites offering insurance, personal introductions, money making schemes and pornography.
It can reasonably be concluded that the Respondent is engaging in this activity to generate “click-through” revenue from advertisers and hence for commercial gain.
Accordingly, the modus operandi of the Respondent has been to attempt to attract users to its site by creating the likelihood of confusion with the THE VANCOUVER SUN trademark and newspaper as whether the goods and services offered on the website are offered with the endorsement of the Complainant. The intention of the Respondent is clearly to create the impression that the goods and services in question are endorsed by the Complainant.
It must also be inferred that the Respondent’s intention was to earn income by inducing its visitors to the site buy the goods and services offered.
Those facts bring the case squarely within the provisions of paragraph 4(b)(iii) and (iv) of the Policy, for they show that the primary purpose of the Respondent in registering the domain name was to disrupt the business of the Complainant in those fields were they are offering competing services and to mislead consumers as to whether the other services offered have the endorsement of the Complainant.
It need hardly be added that an essential feature of the whole of the Respondent’s conduct is that it is entirely deceptive. Indeed, not only has the Respondent hidden behind an identity shield and not only has it engaged in cyberflying after receipt of a letter of demand from the Complainant’s attorneys, but it has put false information on the record, including a non-existent telephone number.
All of these factors go to show a strong case that the Respondent registered and is using the domain name in bad faith.
The conclusions expressed above are well supported by numerous analogous UDRP decisions, including those cited by the Complainant, namely The Washington Post Company v. Names OZ, NAF Case No. FA96670; Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. Carlos M. Alvarez d/b/a IT Lexis, NAF Case No. FA98249; Crédit Industriel et Commercial S.A., Banque Scalbert Dupont S.A. v. LaPorte Holdings, Inc,
WIPO Case No. D2004-1110; Cox Texas Newspapers, L.P. d/b/a AUSTIN AMERICAN-STATESMAN v. Hickey Art Studio,WIPO Case No. D2000-1739 and Media West-GMP, Inc. and Gannett Satellite Information Network, Inc. v. Registrant [624819] Services LLC,
WIPO Case No. D2007-0169.
The Complainant has thus made out the third of the three elements that it must establish.
7. Decision
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 name <thevancouversun.com> be transferred to the Complainant.
The Honourable Neil Anthony Brown QC Sole Panelist
Dated: June 17, 2008
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