Discovery Communications, Inc. v. Max Hefter
Claim Number: FA0707001046663
Complainant is Discovery Communications, Inc. (“Complainant”), represented by Ross
Q. Panko, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <sharkweek.com>, registered with Enom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 27, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 30, 2007.
On July 30, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <sharkweek.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 2, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 22, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@sharkweek.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 28, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sharkweek.com> domain name is identical to Complainant’s SHARK WEEK mark.
2. Respondent does not have any rights or legitimate interests in the <sharkweek.com> domain name.
3. Respondent registered and used the <sharkweek.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Discovery Communications, Inc., is a provider of television broadcasting. One of Complainant’s most successful endeavors is the production of a week of television that is marketed under the SHARK WEEK mark. Complainant has used the SHARK WEEK mark in connection with its programming since at least 1987, and also markets related merchandise under the mark. Complainant owns a service mark registration with the United States Patent and Trademark Office (“USPTO”) for the SHARK WEEK mark (Reg. No. 2,113,710 issued November 18, 1997).
Respondent registered the <sharkweek.com> domain name on August 31, 2001. Respondent’s disputed domain name resolves to a website where hyperlinks to various commercial websites, as well as to Complainant’s own website, are displayed. Additionally, Respondent has offered, on at least two occasions, to sell the disputed domain name to Complainant for an amount in excess of out-of-pocket expenses.
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(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.
The Panel finds that Complainant’s registration of the SHARK WEEK mark with the USPTO establishes its rights to the mark under Policy ¶ 4(a)(i). See VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (“Complainant owns a United States Patent and Trademark Office (‘USPTO’) registration issued September 5, 2000 for the RBK mark. This trademark registration is adequate to establish rights pursuant to Policy ¶ 4(a)(i).”).
The Panel additionally finds that the <sharkweek.com> domain name is identical to Complainant’s SHARK WEEK mark under Policy ¶ 4(a)(i) as the disputed domain name contains Complainant’s mark in its entirety with the addition of the generic top-level domain (“gTLD”) “.com.” Previous panels have held, and this Panel finds, that the addition of a gTLD is not relevant to a Policy ¶ 4(a)(i) analysis as all domain names require a top-level domain. Accordingly, Complainant has satisfied this element of Policy ¶ 4(a)(i). See W. Union Holdings, Inc. v. Topiwala, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance); see also Treeforms, Inc. v. Cayne Indus. Sales, Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that the respondent’s <treeforms.com> domain name is identical to the complainant’s TREEFORMS mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under the requirements of Policy ¶ 4(a)(ii),
Complainant must establish a prima facie
case alleging that Respondent lacks rights and legitimate interests in the <sharkweek.com>
domain name. The Panel finds that
Complainant has successfully met this burden, and accordingly the burden of
proof for this element has shifted to Respondent. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that
the respondent has no rights or legitimate interests with respect to the
domain, the burden shifts to the respondent to provide “concrete evidence that
it has rights to or legitimate interests in the domain name at issue”); see also Woolworths plc. v. Anderson,
D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation
to use the domain name for a legitimate purpose, the burden of proof lies with
the respondent to demonstrate that it has rights or legitimate interests).
As Respondent has failed to respond to the instant Complaint, it is within the Panel’s discretion to presume that Respondent lacks rights and legitimate interests in the <sharkweek.com> domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). However, the Panel chooses to examine the evidence under Policy ¶ 4(c) before reaching its final conclusion.
Respondent's WHOIS information indicates that Respondent is “Max Hefter,” and there is no other evidence in the record indicating that Respondent is or has ever been known by the disputed domain name. Additionally, Complainant states that it has not authorized Respondent to use the SHARK WEEK mark in any way. Accordingly, the Panel finds that Respondent is not commonly known by the <sharkweek.com> domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns, Inc. v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent is not commonly known by the <cigaraficionada.com> domain name because the WHOIS information lists the registrant of the domain name as as “WORLDTRAVELERSONLINE.COM,” and no other evidence exists in the record indicating that the respondent is known by the domain name); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent is using the <sharkweek.com> domain name to display a website that contains various hyperlinks to other websites. Complainant has submitted evidence that some of these hyperlinks resolve to commercial websites owned by Respondent, as well as third-party commercial websites. All of the websites displayed relate in some manner to “sharks,” which has an obvious relationship to Complainant’s mark. Additionally, Respondent has included a hyperlink to Complainant’s own website on the website that resolves from the <sharkweek.com> domain name. The Panel finds that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Additionally, Complainant contends that Respondent has attempted to sell the <sharkweek.com> domain name to Complainant for $50,000 and $35,000. Such offers to sell the disputed domain name for amounts that are obviously in excess of Respondent’s out-of-pocket costs to the service mark holder of the SHARK WEEK mark indicates that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
On two occasions, Respondent has offered to sell the <sharkweek.com>
domain name to Complainant, the holder of the SHARK WEEK mark, for $50,000 and
$35,000. The Panel finds that such
amounts are in excess of Respondent’s out-of-pocket costs, and as such, Respondent’s
offer to sell the disputed domain name to Complainant qualifies as bad faith
registration and use under Policy ¶ 4(a)(i).
See Neiman Marcus Group, Inc. v.
AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to
sell the domain name for $2,000 sufficient evidence of bad faith registration
and use under Policy ¶ 4(b)(i)); see also Campmor, Inc. v.
GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5,
2003) (“Respondent registered the disputed domain name and offered to sell it
to Complainant for $10,600. This demonstrates bad faith registration and
use pursuant to Policy ¶ 4(b)(i).”).
Additionally, as the disputed domain name resolves to a website that contains hyperlinks to various other websites, including commercial websites owned by Respondent, the Panel finds that Respondent is commercially benefiting from the <sharkweek.com> domain name. The Panel further determines that as the disputed domain name contains Complainant’s entire mark, it is capable of creating a likelihood of confusion as to Complainant’s source, sponsorship, endorsement and affiliation with the <sharkweek.com> domain name and corresponding website. Thus, the Panel finds evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sharkweek.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: September 11, 2007
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