Dow Jones & Company, Inc and Dow Jones, L.P. v. Marketing Total S.A.
Case No. D2008-1202
1. The Parties
The Complainant is Dow Jones & Company, Inc. a Delaware corporation with its principal place of business located in New York, United States of America; and Dow Jones, L.P., a Delaware limited partnership with its principal place of business located in Massachusetts, United States of America (Dow Jones & Company, Inc., Dow Jones, L.P., and their affiliated companies are collectively referred to as “Dow Jones” in the Complaint and herein accordingly referred to as “the Complainant”). Dow Jones & Company, Inc. is the limited partner of Dow Jones, L.P. The Complainant's authorized representative in this administrative proceeding is Patterson, Belknap, Webb & Tyler LLP of New York, United States of America.
The Respondent registering the disputed domain name is Marketing Total S.A., with a listed address of Charlestown, West Indies, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <wsjcareers.com> is registered with Domaindoorman, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2008. On August 7, 2008, the Center transmitted by email to Domaindoorman, LLC a request for registrar verification in connection with the domain name at issue. On August 7, 2008, Domaindoorman, LLC transmitted by email to the Center its verification response providing the contact details of the domain name Registrant and clearly stating that the Respondent was not the Registrant. On August 13, 2008, the Registrar Domaindoorman, LLC with a request of the Center, transmitted by email to the Center its clarification that the Respondent is the Registrant of the disputed domain name. On August 14, 2008, 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 August 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 3, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 4, 2008.
On September 15, 2008, the Complainant informed the Center by email that both Parties were engaged in negotiations to resolve this dispute, and the Complainant would not terminate or suspend the current proceeding prior to the successful transfer of the domain name from the Respondent to the Complainant. In response, the Center informed the Complainant that once a UDRP proceeding is suspended the Registrar may unlock the domain name providing the unlock is for the implementation of an agreement between the parties to transfer the domain name to the Complainant. On September 18, 2008, the Center transmitted by email to the Complainant a notification that the Center would proceed with appointment of panel as no request from the Complainant was received to suspend the proceedings. On September 23, 2008, the Complainant formally notified the Center that the Complainant would not suspend the proceedings and agreed that the proceedings should go forward with appointment of the panel. Accordingly, the Center appointed Douglas Clark as the sole panelist in this matter on October 10, 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 publishes “The Wall Street Journal” newspaper, a printed publication that provides business, financial and other news and information to millions of readers each business day. The Complainant or its wholly-owned subsidiaries own rights to the mark THE WALL STREET JOURNAL around the world. The Complainant has owned the domain name <wsj.com> since May 26, 1994 and uses it to provide access to the online version of “The Wall Street Journal”. The on-line edition of “The Wall Street Journal” is a news website featuring breaking, worldwide news coverage, plus in-depth supporting material for news stories. The Complainant is the registered proprietor of trademark registrations for WSJ.COM and domain names incorporating the mark WSJ.COM along with prefixes or suffixes worldwide. The Complainant has also applied for registration of the mark WSJ on the Principal Register of the United States Patent and Trademark Office.
The Respondent registered the domain name <wsjcareers.com> on November 29, 2005. The domain name is activated for pay-per-click (“PPC”) landing pages. The landing pages as is commonly known, has links under various subject headings. In the evidence submitted in this case, from a screen print of the website, various links to employment opportunities in the field of banking and finance, life insurance and foreign exchange can be seen.
5. Parties' Contentions
A. Complainant
The Complainant has developed enormous recognition for its products and services offered under the mark The Wall Street Journal. The letters “WSJ” are universally recognized as an abbreviation for “THE WALL STREET JOURNAL”. In addition to its use of “wsj.com”, on January 28, 2008, the Complainant announced through a press release the launch of a new luxury and lifestyle magazine to be entitled “WSJ”. The Complainant has a career section linked to its “www.wsj.com” site, located at <careerjournal.com>, which provides career information and paid job listings. The site is targeted to executives, managers and professionals.
The Complainant's main arguments are summarized below:
A. Identical or Confusingly Similar
The domain name <wsjcareers.com> registered by the Respondent is confusingly similar to the Complainant's trademarks WSJ and WSJ.COM. The addition of a generic term “careers” as a suffix to the Complainant's famous WSJ and WSJ.COM marks is insufficient to eliminate the confusion. This is especially the case here, because career information is a service offered by the Complainant through its legitimate “www.wsj.com” website. The above claim is relied on the following cases: AT & T Corporation v. LanLA,WIPO Case No. D2001-0890; Sallie Mae, Inc. v. Chen Huang,
WIPO Case No. D2004-0880; Statoil ASA v. Magne Espelund,
WIPO Case No. D2003-0097.
B. Rights or Legitimate Interests
First, under Paragraph 4(c)(i) of the Policy, the domain name is not being used to make a bona fide offering of goods and services. WSJ and WSJ.COM marks have no independent meaning or value other than the international fame and goodwill created by the Complainant. The Respondent's use of the domain name creates a false impression that the Respondent has some sort of association with the Complainant thereby allowing the Respondent to wrongfully capitalize on this fame and goodwill to gain financial benefits.
Second, the Complainant relies on the case Young Genius Software AB v. MWD, James Vargas,
WIPO Case No. D2000-0591 and argues that the Respondent has not been commonly known by the domain name.
Moreover, the Respondent's use of the domain name is likely to mislead customers of the Complainant to go to the “www.wsjcareers.com” web site rather than the Complainant's own site “www.wsj.com”.
C. Registered and Used in Bad Faith
First, the Registrant has registered the domain name primarily for the purpose of disrupting the business of the Complainant. The Respondent's use and registration of the disputed domain names disrupt the Complainant's business by depriving it of the right to host its own career website at “www.wsjcareers.com”.
Second, the domain name resolves to a website having all the characteristics of a “pay-per-click [PPC] landing” website carrying links that are sponsored by paid advertisers offering career listings and/or employment opportunities. The career listings on the “landing site” “www.wsjcareers.com” are mostly in the financial and banking sectors, and so compete directly with the types of paid listings that would typically appear on one of the Complainant's websites. Thus, the Respondent's website offers links to and advertisements for the Complainant's competitors. The Respondent's website also contains links to “www.wsj.com” and related sites, including third-party subscription services. The links to” www.wsj.com” together with the use of “wsj” in the domain name together create a false impression of sponsorship or association with The Wall Street Journal's legitimate website, and allow the Respondent to wrongfully capitalize on the fame of the “www.wsj.com” site and trademark for its own benefit. This use causes confusion with the Complainant's marks and websites and disrupts the Complainant's business.
Moreover, the Complainant cited numerous cases of UDRP panels and related articles to prove that the Respondent is a notorious cyber squatter who has a demonstrated history of engaging in bad faith registration and use of domain names that violate the rights of others. (HBH, Limited Partnership v. Marketing Total S.A.,
WIPO Case No. D2006-1452; Debevoise & Plimpton LLP v. Marketing Total S.A.,
WIPO Case No. D2007-0451; Educational Testing Service (ETS) v. Marketing Total S.A.,
WIPO Case No. D2007-0450 and etc.) The behavior of the Respondent in the current proceeding is perfectly in concert with its reputation as a notorious cyber squatter. The above arguments rely on the following cases: Asian World of Martial Arts Inc. v. Texas International Property Associates,
WIPO Case No. D2007-1415; Champagne Lanson v. Development Services/MailPlanet.com, Inc.,
WIPO Case No. D2006-0006, and etc.
The Complainant requests therefore that the disputed domain name be transferred in its favor.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
There being no Response, paragraphs 5(e) and 14(a) of the Rules direct the Panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the Complaint.
Under paragraph 4(a) of the Policy, the Complainant must prove the following three elements in order to make out a successful case:
(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.
A. Identical or Confusingly Similar
The Complainant submits registration certificates for trademarks comprising WSJ.COM worldwide in Classes covering, among other things, providing financial or business information via a global computer network, and electronic publications in the nature of magazines featuring lifestyle, leisure and luxury topics. The Panel has searched the mark WSJ mentioned in the Complaint on the online database of United States Patent and Trademark Office, and finds that though the application of WSJ is still pending, a Notice of Allowance for registration has been issued already. Therefore, the Panel finds that the Complainant has rights over the above trademarks WSJ.COM and WSJ.
The Panel notes that the disputed domain name incorporates the Complainant's mark WSJ in entirety with a suffix of “careers” thereto. The term “wsj” has no meaning and the word “careers” is generic or descriptive, the Panel finds that the suffix of “careers” does not detract from the main impact of the marks which is the term “wsj”, i.e. that means the distinctive part of the domain name is “wsj” which could be recognized as the indicator of the origin of goods and services. Based on the evidence submitted by the Complainant, the term “wsj” has been proved as being used as shorthand for “The Wall Street Journal” the publication as well as the trademark owned by the Complainant. The Panel also notes that the Complainant registered several domain names incorporating its mark WSJ.COM along with additional use of generic or descriptive prefixes or suffixes to designate different sites within its network of “The Wall Street Journal” and “www.wsj.com” site. For example, “www.wsjmarkets.com” points to the Markets Data Center of the online Wall Street Journal, and “www.wsjdigital.com” points to The Wall Street Journal Radio Network. Therefore, the Panel finds that the addition of the generic suffix “careers” to the Complainant's famous WSJ and WSJ.COM marks does not negate the confusing similarity of the Respondent's domain name; on the contrary, it does suggest a relationship between the domain name and the Complainant, and will mislead consumers thinking that the domain name is where the career website of The Wall Street Journal may be found.
Therefore, the Panel concludes that the disputed domain name to be confusingly similar to the Complainant's trademark.
Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Respondent is not licensed nor authorized in any way to use the Complainant's trademarks or to register or use any domain name incorporating any trademarks of the Complainant. Based on the above finding, the disputed domain name incorporating the Complainant's distinctive trademarks WSJ or WSJ.COM resolving to the landing pages providing career listings in the field of banking and finance, life insurance and foreign exchange in direct competition with the Complainant's business can not constitute bona fide offering with the domain name. The Panel notes that a UDRP panel in Motorola, Inc. vs. NewGate Internet, Inc.,
WIPO Case No. D2000-0079 holds a similar view as follows:
“it can be said that the use of somebody else's trademark as a domain name clearly does not constitute a bona fide offering of goods or services when the web site owner has no registered or common law rights to the mark, since the only reason to use the trademark as a domain name is to attract customers who were not looking for the services offered by the web site owner, but were instead looking for the products or services associated with the trademark. Such use of a trademark can create customer confusion or dilution of the mark, which is precisely what trademark laws are meant to prevent. And actions that create, or tend to create, violations of the law can hardly be considered to be bona fide.”
There is no evidence to suggest that the Respondent has been commonly known by the domain name.
Therefore, the Panel has not found any evidence to suggest the Respondent has rights or legitimate interests in this domain name.
Accordingly, the Panel finds that the Complaint has satisfied the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy prescribes a non-exclusive list of four circumstances of which if found by the Panel to be present shall be evidence to prove the registration and use of the domain name in bad faith. The Complainant relies on the provisions of paragraph 4(b)(ii) and (iii):
(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 you have 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;
The Panel is satisfied with the evidence to prove the following facts:
1. The domain name was registered well after the registration of the Complainant's trademark WSJ.COM and domain name <wsj.com>; and
2. The domain name resolves to a landing website providing employment opportunities in the field of banking and finance, one of the Complainant's fields of business; and
3. The Complainant has registered and is using numerous domain names incorporating the distinctive mark WSJ with generic or descriptive additions to designate the different sites within the Complainant's whole business network;
In addition, as stated before, the term “wsj” is generally recognized as a symbol for the Complainant's products and services. Therefore, the Panel finds that the Respondent was aware of the Complainant and its trademarks when registering the disputed domain name. Accordingly, the Panel finds that the domain name was registered in bad faith.
The Panel notes that the Complainant's website “www.wsj.com” has a career section linked to its career website at “www.careerjournal.com”. Taking into account the above proved facts, the Panel believes that the registration of the disputed domain name prevents the Complainant from reflecting its distinctive mark WSJ or WSJ.COM in a corresponding domain name.
Since the composition of the disputed domain name <wsjcareers.com> is quite consistent with the style of the Complainant's registration of numerous domain names, such as <wsjmarkets.com> and <wsjradio.com>, the disputed domain name is extremely likely to confuse Internet users and to mislead the consumers into thinking that the Respondent has some sort of relationship with the Complainant. The Respondent's use of the domain name not only disrupts the Complainant's business but also purposely takes advantage of the reputation of the Complainant's trademark “WSJ.COM” and its business “The Wall Street Journal”.
The Panel also notes that the landing pages bearing a disputed domain name may also be a strong factor to evidence the registration and use of a domain name in bad faith. (See Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912). The disputed domain name resolves to a website offering sponsored links with subject headings concerning careers and the hyperlinks of related searches in connection with employment opportunities in the field of finance, bank and insurance. Those links include the Complainant's own site “www.wallstreetjournal.com” as well as those links of its competitors. The Panel finds that the Respondent's such use of the domain name aggravates the likelihood of confusion.
As for the argument that the Respondent is a notorious cyber squatter who has a demonstrated history of engaging in bad faith registration and use of domain names that violate the rights of others, given the findings above, the Panel does not need to make a finding on this point.
Therefore, the Panel concludes that the Complaint has satisfied the third element under paragraph 4(a) of the Policy.
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 <wsjcareers.com> be transferred to the Complainant.
Douglas Clark Sole Panelist
Dated: October 27, 2008
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