Domain name - U.S. Trademark - Identical - Confusingly similar - Bad faith registration - Bad faith use - Respondent using site as link to both its own site and Complainant's site - Respondent registered domain name for commercial gain by diverting customers from Complainant.

Complainant is a daily newspaper in operation for nearly 100 years.  Complainant owns a trademark for the mark THE DENVER POST.  The Respondent registered the domain name THEDENVERPOST.COM. 

Held, Name Transferred to Complainant

The domain name “THEDENVERPOST.COM” is so close as to be identical or confusingly similar.
Respondent has no legitimate reason or rights to use the domain name.

The domain name was used and registered in bad faith. Respondent attempted to sell the domain name for more than out-of-pocket expenses—there is also evidence that Respondent has registered many other domain names that are identical or confusingly similar to another's mark.  Respondent registered the confusingly similar domain name for commercial gain by diverting customers from the Complainant—the links on the disputed site lead to Respondent's site and the Complainant's site.  Further bad faith is shown as the Respondent failed to offer a transfer of the domain name when the request was made by Complainant.

Policies referred to

ICANN Rules for Uniform Domain Name Dispute Resolution Policy
Arbitration Forum’s Supplemental Rules to ICANN’s Uniform Domain Resolution Policy
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Pfeuffer, Panelist: - 

The above-entitled matter came on for an administrative hearing on June 12, 2000 before Robert T. Pfeuffer as arbitrator on the Complaint of THE DENVER POST CORPORATION, a Colorado Corporation, hereafter referred to as “Complainant,” against HOME IN Usa, hereinafter referred to as “Respondent”.  Dana Hartje Cardwell, Esq., of Sheridan Ross, P.C. represents Complainant.  David W. Riordan, Esq., represents  HOME IN Usa.  Upon the written submitted record, the following decision is made:

PROCEDURAL FINDINGS

Domain Name:  THEDENVERPOST.COM

Domain Name Registrar:  Network Solutions, Inc.

Domain Name Registrant:  Home in Usa

Date of Domain Name Registration:  September 2, 1999

Date Complaint Filed:  May 10, 2000

Date of Commencement of Administrative Proceeding in Accordance with Rule 2(a)[1] and Rule4(c):  May 12, 2000

Due date for a Response:  June 1, 2000

Respondent’s response was filed within the twenty (20) days allowed for receipt of response.

A finding favorable to Complainant was rendered June 13, 2000, based upon the findings of fact and conclusions set out below:

After reviewing the Complaint and determining it to be in administrative compliance, the NATIONAL ARBITRATION FORUM (THE FORUM) forwarded the Complaint to the Respondent on May 12, 2000, in compliance with the Rules and the administrative proceedings
were commenced. The Forum immediately notified the Registrar NETWORK SOLUTIONS, INC., the INTERNET CORPORATION FOR ASSIGNED NAMES AND NUMBERS (ICANN), and the Respondent that the administrative proceedings had commenced.  The Respondent submitted a response to the Forum within twenty (20) days pursuant to Rule 5(a).

On September 2, 1999, Respondent registered the domain name “THEDENVERPOST.COM” with the domain name Registrar NETWORK SOLUTIONS, INC., the entity that is the Registrar of the domain name.  On May 13, 2000, the domain name Registrar, NETWORK SOLUTIONS, INC., verified that Respondent is the Registrant for the domain name “THEDENVERPOST.COM” and that further by registering its domain name with NETWORK SOLUTIONS, INC., Respondent agreed to resolve any dispute regarding its domain name through ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy and the Uniform Domain Name Dispute Resolution Policy.

FINDINGS OF FACT

The evidence establishes that:

1.                  Complainant is The Denver Post Corporation, a Colorado corporation, a daily newspaper organization doing business in the Denver, Colorado, area for almost 100 years with a
circulation of at least 413,000 daily customers.  It serves the entire Rocky Mountain area.

2.                  Complainant (“Post”) is the owner of the U.S. trademark No. 1,919,631 for the mark “THE DENVER POST” for “daily newspaper.”  The trademark was issued October 13, 1999 for a term of ten (10) years from and after September 19, 1999.

3.         Respondent Home in Usa (“Home”) is a trade name adopted by Ms. Gilinda Rogers (“Rogers”), a cyber entrepreneur residing in Williamsburg, Virginia.

4.         On September 2, 1999, Home in Usa registered the domain name “THEDENVERPOST.COM” with NETWORK SOLUTIONS, INC.

5.         On September 28, 1999, Rogers began using the domain name “THEDENVERPOST.COM” linked to a web site entitled “BESTOFDENVER.”  It provides weather information and surveys of restaurants, car dealers, and movie theaters in the Denver area.
In addition, it provides a “news” link to the Post’s web site DENVERPOST.COM and Complainant’s online daily newspaper.

6.         By Rogers’ own admission, Rogers has registered more than 1,200 domain names which incorporates the terms “best of” city and state sites as well as others involving the well-established
names of numerous businesses such as Cox Cable, Cox Communications, The Super Station (Ted Turner Interests), the Palm Beach Post and the Atlanta Constitution (Cox Communications) and Denbigh Toyota, a Virginia Toyota dealership.

7.         That upon confrontation by Cox Communication, Rogers relinquished her claims to the domain names in dispute for the payment of $440.00, the out-of-pocket expenses incurred by Rogers in connection therewith.

8.         On other occasions, particularly the Denbigh Toyota dispute, Rogers demanded an advertising contract with Denbigh either to advertise on one of her web sites or pay her company to
develop it for a charge of $30,000.00 for three years as alleged by the dealership’s general manager.

9.         Rogers disputes the allegation by the Denbigh Toyota dealership set out above and denies demanding any sum near that amount.

10.       That Rogers and her other company U-Surf.com have systematically registered trademarks of third parties as domain names including Larry Flynt, The Williamsburg Winery, The College
of William and Mary, in addition to Cox Communications.

11.       In many instances the domain names registered by Respondent and/or Rogers are identical or confusingly similar to trademarks of third parties.

12.       Upon demand to cease and desist in the use of the Denver Post name in its web site THEDENVERPOST.COM, Rogers, on behalf of the domain name owner advised she had no intention of ceasing use of the domain name thedenverpost.com as set out in a letter from
Rogers to the Complainant dated October 11, 1999.

13.       The Denver Post corporation has notified the Respondent and Rogers that the continued use by them of the domain name THEDENVERPOST.COM dilutes the post-trademark rights in the mark “THE DENVER POST”.  Complainant alleges continued use of the disputed domain name by Respondent is likely to cause confusion among consumers as to the affiliation of the domain name
THEDENVERPOST.COM and its associated web site.  The domain name THEDENVERPOST.COM is identical to “THE DENVER POST” mark as used in its trademark registration with the United States Patent and Trademark Office.

14.       A consumer utilizing THEDENVERPOST.COM web site is most likely trying to locate the Post and “The Denver Post” newspaper on line.

15.       Rogers maintains an unauthorized link from Rogers’ web site to a web site owned by Post which it holds under the domain name DENVERPOST.COM.

16.              When Rogers registered the domain name THEDENVERPOST.COM on September 2, 1999, the Complainant had used the mark “The Denver Post” for many, many years.

CONCLUSIONS

The Arbitrator assigned herein certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding.  Having been duly selected, and
being wholly impartial, the Arbitrator has reached the following conclusions based upon the findings set out above:

1.                  The domain name “THEDENVERPOST.COM” registered by Respondent is so close as to be identical or confusingly similar to the Complainant’s registered trademark to which Complainant has legal rights and to which Respondent has failed to show a legitimate right of interest.  That this conclusion is further supported by Respondent’s admission on page 2 of its response that “the domain name in question is similar to the trademark”, and the service mark awarded to The Denver Post Corporation for a computer-based information system on February 1, 2000.

2.                  That the Respondent has acted in bad faith by registering and using the domain name THEDENVERPOST.COM by using said domain name only to link its other web sites in the Rocky
Mountain area that are served by Complainant through its newspaper and computer-based information system.

3.                  That Respondent further acted in bad faith in failing to offer to transfer the disputed domain name to the Complainant for the Respondent’s out-of-pocket expenses directly relating to her acquiring said domain name when Complainant made demand on Respondent as it has done in other situations, i.e., Cox Communication.

4.         That Respondent and Rogers have failed to demonstrate that it has any rights or legitimate interests in the domain name THEDENVERPOST.COM.

5.         That Respondent and Rogers have registered the disputed domain name for commercial gain by diverting consumers from Complainant to Complainant’s detriment.
 

DECISION

Based upon the above findings and conclusions and pursuant to the rules governing such disputes, it is decided as follows:

The Arbitrator, Robert T. Pfeuffer, directs that the domain name “THEDENVERPOST.COM” registered by the Respondent, Home in Usa, be transferred to the Complainant, The Denver Post Corporation.

SIGNED this 15 day of June, 2000. 
Honorable Robert R. Pfeuffer, Arbitrator [1] Any reference to “Rule” or “Rules” are to ICANN’s Rules for

Uniform Domain Name Dispute Resolution Policy and Uniform Domain
Name Dispute Resolution Policy as supplemented by the National
Arbitration Forum’s Supplemental Rules to ICANN’s Uniform Domain
Resolution Policy.