Gannett Co., Inc. v Carolina Rodrigues, Fundación Comercio Electrónico

WIPO Case No. D2023-4240

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Gannett Co., Inc. v. Carolina Rodrigues, Fundación Comercio Electrónico

Case No. D2023-4240

1. The Parties

Complainant is Gannett Co., Inc., United States of America (“United States”), represented by Rankin, Hill &

Clark LLP, United States.

Respondent is Carolina Rodrigues, Fundación Comercio Electrónico, Panama.

2. The Domain Name and Registrar

The disputed domain name <gannettcontest.com> (hereinaf ter, “the Domain Name”) is registered with

GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2023. On October 12, 2023, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verif ication response disclosing registrant and contact information for the Domain Name which differed f rom the named Respondent (Registration Private, Domains by Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to Complainant on October 17, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an

amendment to the Complaint. Complainant f iled an amendment to the Complaint on October 18, 2023.

The Center verif ied that the Complaint satisf ied 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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 23, 2023. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2023. Respondent did not submit any response. Accordingly, the Center notif ied Respondent’s default on November 14, 2023.

The Center appointed Enrique Bardales Mendoza as the sole panelist in this matter on November 16, 2023. The Panel f inds 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.

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4. Factual Background

Complainant is a print and digital mass media and marketing solutions company, and is one of the largest United States newspaper publishers as measured by daily circulation. In addition, Complainant uses the following website: “

Complainant is the owner of numerous GANNETT trademarks, including:

- United States trademark GANNETT (combined) registered under registration no. 3012484 on
November 08, 2005, for goods in international class 16;

- United States trademark GANNETT (combined) registered under registration no. 2915572 on January
04, 2005, for services in international class 35;

- United States trademark GANNETT (combined) registered under registration no. 2852723 on June 15,
2004, for services in international class 41.

Complainant is also the owner of domain names incorporating the GANNETT trademark, such as
<gannett.com> registered on January 1, 1994, and <gannettcontests.com> registered on December 10,
2019.

Finally, the Domain Name was registered on February 28, 2020, and redirects to a website that shows pay- per-click links. Besides, when the Panel visited the website at the Domain Name the website is restricted by the browser’s security and antivirus system for potentially dangerous content.

5. Parties’ Contentions
A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discuss and Findings

In an UDRP procedure, according to paragraph 4(a) of the Policy, Complainant must accredit the following elements:

(i)        The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii)       Respondent has no right 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

First of all, Complainant has demonstrated rights through registration and use of the GANNETT trademarks.

The term “gannett” in the Domain Name is identical to Complainant’s trademark GANNETT. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.8.

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Consequently, the Panel finds that the Domain Name is confusingly similar to the GANNETT trademark of Complainant since it incorporates said trademark entirely, and so the requirement established in paragraph 4(a)(i) f rom Policy has been satisf ied.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the
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 of fering 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 noncommercial 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.

In the present procedure, the Panel concludes that Respondent does not have any right or legitimate interest with respect to the Domain Name for the following reasons:

(i)        First of all, Respondent has not submitted any response and has not claimed any rights or legitimate interests with respect to the Domain Name. As per the Complaint, Respondent was not authorized to register the Domain Name.

(ii)       Secondly, Respondent did not demonstrate, prior to the notice of the dispute, any use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.

(iii)      Thirdly, the Domain Name constitutes a total transcription of Complainant’s trademark, which ref lects Respondent’s intent to create a direct inference with Complainant.

(iv)      There is no evidence on record giving rise to any rights or legitimate interests in the Domain Name on the part of Respondent within the meaning of paragraphs 4(c)(ii) and 4(c)(iii) of the Policy.

Consequently, the requirement established in paragraph 4(a) (ii) f rom Policy has been satisf ied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy indicates circumstances that, without limitation, are deemed evidence of the registration and use of the Domain Name in bad faith:

(i)        circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of -pocket costs directly related to the Domain Name; or

(ii)       that 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 Respondent has engaged in a pattern of such conduct; or

(iii)      that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

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(iv)      that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, af f iliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith for the following reasons:

(i)        GANNETT trademark had been widely used and registered by Complainant before the Domain Name registration.

(ii)       Respondent had the enough tools to verify that Complainant is the owner of the GANNETT trademarks. For instance, Respondent could have used a search engine for this purpose.

(iii)      Respondent has not provided any good faith explanation since it has not responded to Complainant’s contentions. Plus, the lack of response can be taken as an inference of bad faith.

(iv)      The content of the website shows various pay-per-click links.

(v)      Complainant and its trademarks may suf fer bad reputation because Internet users are likely to consider the Domain Name as in some way endorse by or connected with Complainant given the Domain Name’s composition, as mentioned above.

(vi)      Given the nature of the commercial links hosted on the Domain Name, the Panel presumes that Respondent receives some click-through revenue, thereby commercially benef itting f rom the misleading nature of the Domain Name. Such use constitutes bad faith under paragraph 4(b)(iv) of the Policy.

Consequently, the requirement established in paragraph 4(a)(iii) f rom Policy has been satisf ied.

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 Domain Name <gannettcontest.com> be transferred to Complainant.

/Enrique Bardales Mendoza/
Enrique Bardales Mendoza
Sole Panelist
Date: November 30, 2023