California Newspapers Partnership v Name Redacted

WIPO Case No. D2024-0372

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

California Newspapers Partnership v. Name Redacted

Case No. D2024-0372

1. The Parties

Complainant is California Newspapers Partnership, United States of America (“United States”), represented by Media News Group, United States.

Respondent is Name Redacted.[1]

[1]Respondent appears to have used the name of a third party when registering the Disputed Domain Name. In light of the potential

2. The Domain Name and Registrar

The disputed domain name <scmng.net> (hereinafter the “Disputed Domain Name”) is registered with

Squarespace Domains II LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2024.
On January 30, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Disputed Domain Name. On January 31, 2024, the Registrar transmitted by email to the
Center its verification response disclosing registrant and contact information for the Disputed Domain Name
which differed from the named Respondent (Contact Privacy Inc. Customer 7151571251) and contact
information in the Complaint. The Center sent an email communication to Complainant on January 31, 2024,
providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to

submit an amendment to the Complaint. Complainant filed an amended Complaint on February 2, 2024.

The Center verified that the Complaint [together with the amendment to the Complaint/amended Complaint]
satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or
“UDRP”), 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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 7, 2024. In accordance with the Rules, paragraph 5, the due date for Response was February 27, 2024. Respondent did not submit any response. Accordingly, the

Center notified Respondent’s default on March 1, 2024.

The Center appointed Lawrence K. Nodine as the sole panelist in this matter on March 6, 2024. 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

Complainant publishes regional newspapers (and their respective newsletters, websites, social media channels and related advertising) in the counties of Los Angeles, Orange, Riverside, and San Bernardino in the State of California, United States, under the trade name SOUTHERN CALIFORNIA NEWS GROUP.

Complainant owns United States Trademark Registration No. 7,118,299 (registered on July 25, 2023) for the trademark SOUTHERN CALIFORNIA NEWS GROUP. Complainant contends that it regularly abbreviates its trade name as “SCNG” and holds common law rights thereto.

The Disputed Domain Name was registered on November 14, 2023. As of the date of the Complaint, no content had been displayed in association with the Disputed Domain Name.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the
Disputed Domain Name.

Complainant contends that it has common law trademark rights in SCNG, the abbreviation of its registered trademark, based on its long-time use of the acronym in commerce. Complainant assets that its parent company, MediaNews Group, Inc., is the registrant for the domain name <scng.com>. Complainant submits screenshots of its website showing the use of SCNG to promote its advertising services. In addition, Complainant submits evidence that the general public in Southern California recognizes SCNG as a trade name for the SOUTHERN CALIFORNIA NEWS GROUP. In support of this allegation, Complainant submits a copy of an article from the Los Angeles Times, a publication which is not owned by Complainant or its affiliates. The article reports on a recent election to unionize some of Complainant’s workers, observing: “Journalists at the Orange County Register are among about 140 nonmanagement editorial employees across 22 newspapers in the Southern California News Group represented by the SCNG Guild.” Finally, Complainant incorporates its SNMG common law mark into the email address that it uses to communicate with its subscribers and client advertisers.

In addition, Complainant observes that its parent company, MediaNews Group, Inc., is often abbreviated as “MNG” and that the Disputed Domain Name combines SCNG with MNG. Ignoring the Top-Level Domain, only a single character separates the Disputed Domain Name from Complainant’s common law SCNG trademark.

Complainant submits evidence that the Disputed Domain Name has been used fraudulently to send email to (at least) one of Complainant’s advertising clients. The email exchange reflects that the sender fraudulently combined the name of one of Complainant’s employees with the Disputed Domain Name as an email

address. The impersonator’s email to Complainant’s advertising client requested payment for an invoice and attached a copy of a fake letter purporting to be from Complainant’s bank. The letter falsely claimed to relate

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to “Southern California News Group” and fraudulently advised of changes to Complainant’s bank routing information. The sender impersonated Complainant’s employee and requested payment. Complainant’s client relied upon to make a payment to the fraudulently identified bank account.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or
threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between
Complainant’s trademark and the Disputed Domain Name. WIPO Overview of WIPO Panel Views on
Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Panel finds that Complainant has established unregistered trademark or service mark rights for the purposes of the Policy. WIPO Overview 3.0, section 1.3. Complainant has for many years[2] used SCNG as an abbreviated version of its registered trademark[3] and the evidence shows that the general public recognizes SCNG as a reference to Complainant. Furthermore, the Disputed Domain Name was used to transmit an email that included as an attachment a fake bank letter that explicitly named Complainant, thereby evidencing Respondent's assumption that Complainant’s client would understand that SCNG was shorthand for Complainant’s trademark. Respondent’s own use of the Disputed Domain Name constitutes an admission that the relevant consumers—in this case, Complainant’s client advertisers—recognize SCNG as tradename in which Complainant has rights.

[2] Complainant alleges that the <scng.com> domain name “was first registered on December 31, 2001. Since that date, Complainant or

[3] Given the aforementioned discrepancy, the Panel conducted independent research and confirmed that Complainant has used SCNG

The Panel finds the mark is recognizable within the Disputed Domain Name. Accordingly, the Disputed
Domain Name is confusingly similar to the SCNG trademark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7. The Disputed Domain Name includes an “m” after “sc,” but this does not
avoid a finding of confusing similarity. Indeed, Respondent manifestly intended that Complainant’s
advertiser client overlook or ignore the difference, as evidenced by the fraudulent request for payment, which

request succeeded in misleading Complainant’s client.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which Respondent may demonstrate rights or legitimate interests in a Disputed Domain Name.

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Although the overall burden of proof in UDRP proceedings is on Complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the

respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or
legitimate interests, the burden of production on this element shifts to the respondent to come forward with
relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of
proof always remains on Complainant). If the respondent fails to come forward with such relevant evidence,

Complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds Complainant has established a prima facie case that Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the Policy or otherwise.

Panels have held that the use of a domain name for illegal activity here, claimed fraudulent
impersonation/passing off can never confer rights or legitimate interests on a respondent.

WIPO Overview 3.0, section 2.13.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

Panels have held that the use of a domain name for illegal activity here, claimed fraudulent impersonation/passing off, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds Respondent’s registration and use of the Disputed Domain Name constitutes bad faith under the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <scmng.net> be transferred to Complainant.

/Lawrence K. Nodine/
Lawrence K. Nodine
Sole Panelist
Date: March 20, 2024

identity theft, the Panel has redacted Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this
decision an instruction to the Registrar regarding transfer of the Disputed Domain Name, which includes the name of Respondent. The
Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1
to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241
Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.

confirm this assertion. Internet Archive research indicates that parties other than Complainant may have owned the <scng.com>
domain name prior to late 2016. Furthermore, Complainant’s federal trademark registration states that the SOUTHERN CALIFORNIA

its parent company has continued to exclusively control the” the <scng.com> domain name. The Panel’s independent research did not rights, however, because Complainant’s use of SCNG as a domain name since 2016 represents a substantial duration.

as an abbreviation for the SOUTHERN CALIFORNIA NEWS GROUP. For example, the Internet Archive indicates that on July 16,
2016, the website at the domain name <socalnewsgroup.com> displayed content for the Southern California News Group and stated:
“With a full suite of multi-platform editorial and advertising products, Southern California News Group (SCNG) is one of the most
powerful and influential media companies in Southern California.” See
<web.archive.org/web/20160702144637/