Gannett Co., Inc. v Roy Pacer

WIPO Case No. D2023-0467

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Gannett Co., Inc. v. Roy Pacer

Case No. D2023-0467

1. The Parties

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

Clark LLP, United States.

Respondent is Roy Pacer, China.

2. The Domain Name and Registrar

The disputed domain name <gannettco.net> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2023. On February 1, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 2, 2023, 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 (Dynadot Privacy Service) and contact information in the Complaint. The Center sent an email communication to Complainant on February 2, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on February 7, 2023.

The Center verified that Complaint together with the amendment to the 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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 10, 2023. In accordance with the Rules, paragraph 5, the due date for Response was March 2, 2023. Respondent did not submit any response. Accordingly, the Center

notified Respondent’s default on March 3, 2023.

The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on March 8, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

Complainant, Gannett Co., Inc., is an American print and digital mass media and marketing solutions company, one of the leaders in the American newspaper publishing business.

Complainant operates a website using the domain name <gannett.com>.

Complainant owns a wide portfolio of trademark registrations in the United States and other countries containing the word mark GANNETT. Some examples of Complainant’s trademark registrations can be found below:

Registration No.	Trademark	Jurisdictions	International Classes	Registration Date
3012484	GANNETT	United States	16	November 8, 2005
2915572	GANNETT	United States	35	January 4, 2005
2852723	GANNETT	United States	41	June 15, 2004

The disputed domain name was registered on December 2, 2021, and resolves to a webpage displaying
pay-per-click links and a header that reads “This domain is registered at Dynadot.com” with a message

“Website coming soon”.

5. Parties’ Contentions

A. Complainant

Complainant pleads that the disputed domain name incorporates Complainant’s registered trademark paragraph 4(a)(i) of the Policy and paragraph 3(b)(viii) and 3(b)(ix)(1) of the Rules.

Complainant affirms that Respondent has never been authorized by Complainant to register or use
Complainant’s GANNETT registered trademark or to apply for or use any domain name incorporating such
trademark. According to Complainant, Respondent is not using the disputed domain name in connection
with a bona fide offering of goods or services, or in a legitimate noncommercial or fair manner. This way,
Complainant states that no legitimate use of the disputed domain name could be reasonably claimed by
Respondent, thus paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules has been fulfilled.

In addition, Complainant states that Respondent would not have any rights or legitimate interests in respect of the disputed domain name, nor is Respondent commonly known by the disputed domain name. Further, Respondent has not been authorized, or licensed to use Complainant’s trademark GANNETT as a domain name nor is Respondent associated with Complainant.

Thus, the requirement for the registration and use of the disputed domain name is fulfilled, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.

B. Respondent

Respondent did not reply to Complainant’s contentions.

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6. Discussion and Findings

To succeed in a UDRP complaint, Complainant must demonstrate that all the elements listed in paragraph
4(a) of the Policy have been satisfied, as following:

(i)        the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii)       Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii)      the disputed domain name has been registered and is being used in bad faith.

The burden of proving these elements is upon Complainant.

Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the complaint, in the absence of exceptional circumstances, the panel’s decision shall be based upon the complaint.

A. Identical or Confusingly Similar

Complainant has duly proven that it owns prior trademark rights for GANNETT, and that the disputed domain name is constituted by the trademark GANNETT in its entirety with the addition of the term “co”.

The addition of the term “co” does not prevent a finding of confusing similarity with Complainant’s trademark name.

Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark

GANNETT, and so the requirement of the first element of paragraph 4(a) of the Policy is satisfied.

B. Rights or Legitimate Interests

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is
summarized in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third
Edition (“WIPO Overview 3.0”) as follows: “[w]hile the overall burden of proof in UDRP proceedings is on the
complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a
domain name may result in the often impossible 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. If the respondent fails to come forward with such relevant evidence, the
complainant is deemed to have satisfied the second element.”

In this case, noting the facts and contentions listed above, the Panel finds that Complainant has made out a prima facie case showing that Respondent lacks rights or legitimate interests in the disputed domain name, so the burden of production shifts to Respondent. As Respondent has not replied to Complainant’s

contentions, the Panel has considered Complainant’s unrebutted prima facie case to be sufficient to
demonstrate that Respondent has no rights or legitimate interests in the disputed domain name.

Furthermore, Respondent has not used the disputed domain name in the context of a bona fide use that could demonstrate rights or legitimate interests, since the evidence shows that the disputed domain name resolves to a website with pay-per-click links, displaying a message “Website coming soon”, as duly proven by the Annex 8 to the Complaint. The use of a confusingly similar disputed domain name to mislead unsuspecting Internet users to a website with sponsored links that ultimately redirects said users to third party websites, cannot constitute fair use. Moreover, given the composition of the disputed domain name,

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WIPO Overview 3.0, section 2.5.1.

which couples together the Complainant’s trademark with the corporate identifier “co”, reflecting the misleading and cannot constitute fair use.

Therefore, the Panel finds that the requirement of the second element of paragraph 4(a) of the Policy is also satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed evidence of registration and use of a domain name in bad faith.

Respondent has registered the disputed domain name that fully incorporates Complainant’s well-known trademark GANNETT, plus the addition of the word “co”. The Panel finds that it was duly demonstrated that Respondent was likely aware of Complainant’s rights to GANNETT and company name Gannett Co., Inc. at the time of the registration, as Complainant’s trademark is widely known and enjoys an international reputation.

With that in sight, the Panel finds that Respondent registered the disputed domain name with the intention of attracting Internet users in search of authentic Complainant services – considering specially that an Internet search for the combination of the words “gannett” and “co” is highly likely to associate with Complainant’s

company name Gannett Co., Inc.

Further, evidence shows that the disputed domain name resolves to a website displaying sponsored pay-per-click links through which the Respondent presumably earns click-through revenue, and also displaying a message “Website coming soon”. While the links may be automatically generated, the Respondent cannot disclaim responsibility for them. WIPO Overview 3.0, section 3.5. As regards the

“Website coming soon” message, previous UDRP panels have concluded in similar cases that such use would fit into bad faith use by the passive holding doctrine. See BPCE v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / pascale kiss, cherhgi, WIPO Case No. D2021-1251:

“The disputed domain name does not resolve to an active website, however, Internet browsers warn of the doctrine of passive holding. See section 3.3 of the WIPO Overview 3.0.”

potential deceptive or phishing use when Internet users attempt to access the disputed domain name. Prior

Further, as discussed in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, there are five circumstances that indicate if the passive holding of a domain name could be regarded as bad faith:

“(i) the Complainant’s trademark has a strong reputation and is widely known […],

(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it

of the domain name,

(iii) the Respondent has taken active steps to conceal its identity […],

(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its

registration agreement, and

(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated
active use of the domain name by the Respondent that would not be illegitimate […].”

Considering all of the items listed above, the Panel finds that at least items (i), (ii), (iii), and (v) are present to this case, since (i) Complainant enjoys a well-known reputation for the trademark GANNETT; (ii)

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Respondent has not responded to Complainant’s contentions, failing to provide evidence of the use in good faith of the disputed domain name; (iii) Respondent has adopted the use of a privacy service, concealing their identity on the act of registering the disputed domain name; and (v) there is no plausible use of the disputed domain name that would not represent bad faith, especially considering that it is composed of Complainant’s trademark GANNETT with the addition of the word “co”, replicating company name Gannett Co., Inc. Thus, the circumstances of the present case support a finding of bad faith.

Moreover, it should be noted that, in the circumstances, Respondent’s lack of response further reinforces that the disputed domain name most likely was registered and is being used in bad faith. In this sense, the panel found in Instagram, LLC v. Registration Private, Domains By Proxy, LLC / Alexis Kane, WIPO Case No. D2021-0912 that:

“The following factors were also considered by the Panel as indicative of bad faith registration and use of the
disputed domain name: (i) the Respondent’s lack of response to the Complaint. See, Awesome Kids LLC
and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210; (ii) the Respondent’s
lack of response to the cease and desist letter sent by the Complainant. See, e.g. Intesa Sanpaolo S.p.A. v.
Ekkert Ida, WIPO Case No. D2018-2207; (iii) the Respondent has provided no evidence whatsoever of any
actual or contemplated good faith use by it of the disputed domain name as per paragraph 4(b) of the
Policy.”

In light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith. Therefore, the requirement of the third element of paragraph 4(a) of the Policy is satisfied.

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, <gannettco.net>, be transferred to Complainant.

/Gabriel F. Leonardos/
Gabriel F. Leonardos
Sole Panelist
Date: March 22, 2023