NBC Universal Media, LLC v. mr anton / mister 123
Claim Number: FA1907001854074
Complainant is NBC Universal Media, LLC (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is mr anton / mister 123 (“Respondent”), Macau.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <nbcbet.com> and<nbcbet188.com>, registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on July 26, 2019; the Forum received payment on July 26, 2019.
On July 26, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <nbcbet.com> and <nbcbet188.com> domain names (the Domain Names) are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 1, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of August 21, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@nbcbet.com, postmaster@nbcbet188.com. Also on August 1, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 26, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name-holder.” Complainant alleges that the entities which control the Domain Names are effectively controlled by the same person and/or entity, which is operating under several aliases. UDRP Panels have looked to a variety of factors in determining whether multiple domains are, in fact, of common ownership. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at par. 4.11.2. Such factors as similar website content and similarities in the Whois information, etc. may lead to the conclusion that domains with differing Whois information are, nevertheless, owned by a single entity. Both Domain Names in this case resolve to the same website. In fact, <nbcbet.com> automatically redirects users to <nbcbet188.com>. Complaint Exhibit F. Further, the Whois information for the Domain Names submitted by the registrar (Exhibit B-1) shows that there are many similarities between the two, e.g., the registrant using names that both start with “mister” or its common abbreviation “mr”, the reference to “hongkong” [sic] in the Admin/Tech/Billing contacts section of the Whois information, the identical phone number, and the identical email address. On this evidence, the Panel finds that both Domain Names are registered to the same person or entity and will proceed as to both of them.
A. Complainant
Complainant provides entertainment, sports, and other content through its various websites. Complainant has rights in the NBC mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 619,641, registered Jan. 17, 1956). Respondent’s Domain Names are confusingly similar to Complainant’s mark as both Domain Names incorporate Complainant’s NBC mark in its entirety, with <nbcbet.com> merely adding the descriptive word “bet” and the “.com” generic top-level domain (“gTLD”), and <nbcbet188.com> merely adding the word “bet,” the number “188” and the “.com” gTLD.
Respondent has no rights or legitimate interests in the Domain Names. Respondent is not using them in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use because the web site resolving from both of them attempts to pass of as and impersonate Complainant for commercial gain. Further Respondent is not commonly known by either of the Domain Names.
Respondent registered and used the Domain Names in bad faith, as Respondent is attempting to attract Internet users by passing off as Complainant for commercial gain and for a phishing scheme. Additionally, Respondent had actual knowledge of Complainant’s rights in its mark when it registered the Domain Names, and Respondent failed to respond to Complainant’s cease and desist letters.
B. Respondent
Respondent did not submit a Response in this proceeding.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order cancelling or transferring the Domain Names:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. WIPO Overview 3.0 at ¶ 4.3; eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The NBC mark was registered to the National Broadcasting Company with the USPTO (Registration No. 619,641) on January 17, 1956 and was subsequently assigned to Complainant. Complaint Exhibit E-1. A complainant’s registration of its mark with the USPTO is sufficient to establish its rights in that mark for the purposes of Policy ¶ 4(a)(i). DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). As assignee and current owner of the NBC mark, Complainant has sufficient rights in that mark to bring and maintain this proceeding.
Respondent’s <nbcbet.com> and <nbcbet188.com> Domain Names are confusingly similar to Complainant’s NBC mark. Both Domain Names incorporate Complainant’s mark verbatim, with <nbcbet.com> merely adding the descriptive word “bet” and the “.com” generic top-level domain (“gTLD”), and <nbcbet188.com> merely adding the word “bet,” the number “188” and the “.com” gTLD. These changes are not sufficient to distinguish the Domain Names from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”), Nintendo of Am., Inc. v. Lizmi, FA 94329 (Forum Apr. 24, 2000) (finding that the respondent’s domain names <pokemon2000.com> and <pokemons.com> are confusingly similar to the complainant’s mark).
For the reasons set forth above, the Panel finds that the Domain Names are identical or confusingly similar to the NBC mark, in which Complainant has substantial and demonstrated rights.
Rights or Legitimate Interests
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to the respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to Respondent of the dispute, Respondent has used or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is 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.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) Respondent is not using them in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because they both resolve to a web site that impersonates Complainant and offers gambling services, representing them as being sponsored or endorsed by Complainant, and (ii) Respondent is not commonly known by the Domain Names. These allegations are addressed as follows:
Complainant Exhibit F contains a screenshot of the web site resolving from both Domain Names. At the top of each page appears the NBC peacock logo with the title NBC displayed prominently next to it. The site is commercial in nature and offers online gambling services. By using the logo and the NBC title, Respondent is obviously using the Domain Names and resolving web site to pass off as and impersonate Complainant, attempting to deceive the visitor into believing that the site is sponsored or endorsed by Complainant, when it is not, and when the substantive content of the web site is completely unrelated to Complainant or any of its activities or undertakings. Using a confusingly similar domain name in this manner has often been held not to qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii)). Spike's Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017) (“Using a confusingly similar domain to display unrelated content can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use… The Panel therefore finds that Respondent’s unrelated use of the <finishnline.com> domain name evinces a lack of rights and legitimate interests under Policy ¶ 4(c)(i) & (iii).”).
The information furnished to the Forum by the registrar lists the registrant of the <nbcbet.com> Domain Name as “mister anton” and the registrant of the <nbcbet188.com> Domain Name as “mister 123.” Neither of these names bears any resemblance to the Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such or similar evidence, however, UDRP panels have consistently held that a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name), Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). There is no evidence before the Panel to suggest that Respondent has been commonly known by the Domain Names, and the Panel finds that it has not been so known.
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(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 the Respondent has 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; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.
The evidence of Respondent’s use of the Domain Names set forth above in the rights or legitimate interests analysis also supports a finding of bad faith use and registration of those domains, based upon the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, Respondent is clearly using the Domain Names to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site. This fits squarely within the circumstances articulated by Policy ¶ 4(b)(iv) and is clear evidence of bad faith registration and use. The facts of this case are similar to those in Charter Communications Holding Company, LLC v. Taha Shaikh / Tskdesigners, FA 1814475 (Forum Nov. 25, 2018), where the panel held, “Respondent appears to use a copycat page to solicit the sale of Complainant’s television, Internet, and voice communications services. It is unclear if the Respondent is actually providing Complainant’s services or is gathering personal information from website visitors while not providing any services. In either scenario, the Panel agrees that Respondent is attempting to commercially benefit from the use of Complainant’s SPECTRUM Marks in bad faith under Policy ¶ 4(b)(iv).”
There is a login feature soliciting the visitor’s “login,” “password” and “validation code.” Complainant alleges that this is evidence of a phishing scheme, but all this feature really solicits is information necessary to enable the visitor to use the gambling services offered on the site. There is no evidence of an attempt to solicit sensitive, personal, private or financial information from the visitor that might exist independent of the visitor’s interest in using the site. On this evidence the Panel concludes that neither the Domain Names nor the resolving web site is being used in connection with a phishing scheme.
Finally, it is evident from the long-standing and world-wide notoriety of Complainant’s NBC mark, from Respondent’s copying that mark verbatim into the Domain Names, and from Respondent’s web site impersonating Complainant that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Names. Policy ¶ 4(b) acknowledges that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and registering a confusingly similar domain name with actual knowledge of a complainant’s rights in its mark has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nbcbet.com> and <nbcbet188.com> Domain Names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
August 28, 2019
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