Discovery Communications, Inc. v. Namegiant.com c/o Mark Segal
Claim Number: FA0711001109661
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 <discoveryfilms.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 November 15, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 16, 2007.
On November 15, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <discoveryfilms.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 November 20, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 10, 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@discoveryfilms.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 17, 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 <discoveryfilms.com> domain name is confusingly similar to Complainant’s DISCOVERY mark.
2. Respondent does not have any rights or legitimate interests in the <discoveryfilms.com> domain name.
3. Respondent registered and used the <discoveryfilms.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Discovery Communications, Inc., is a leading real-world media and entertainment company. Complainant’s television networks include Discovery Channel, Discovery Health, Discovery Kids, The Learning Channel, Animal Planet, and The Science Channel. Complainant has used the DISCOVERY mark in connection with its production of motion picture films and television programming and sales of DVDs containing motion pictures films and television programming since 1970. Complainant also promotes its products on several websites including, <discovery.com>, <discoverychannel.com> and <discoverychannel.co.uk>. Complainant registered the DISCOVERY mark with the United States Patent and Trademark Office (“USPTO”) on January 6, 1970 (Reg. No. 0,883,953); and registered the DISCOVERY + 1 mark, used in connection with services in the production of films and videos, with the United Kingdom Intellectual Property Officer (“UKIPO”) on September 17, 1998 (Reg. No. 2,177,52B).
Respondent registered the <discoveryfilms.com> domain name on June 19, 2004. Respondent is using the disputed domain name to advertise goods and services competing with Complainant, and has offered the domain name for sale. Respondent has previously been ordered by UDRP panels to transfer the domain name registrations of several other domain names that were found to be infringing upon the complainant’s trademarks. See MC Enters v. Segal (Namegiant.com), D2005-1270 (WIPO Jan. 27, 2006) (transferring the <mcenterprises.com> domain name to the complainant); see also ORIX Kabushiki Kaisha v. Namegiant, D2005-0220 (WIPO May 26, 2005) (transferring the <orix.net> domain name to the complainant).
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.
Complainant has registered the DISCOVERY mark with the
USPTO, and therefore established rights to the mark under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of
the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov.
11, 2003) (“Complainant's federal trademark registrations establish
Complainant's rights in the BLIZZARD mark.”).
The <discoveryfilms.com> domain name is confusingly similar to Complainant’s DISCOVERY mark because it incorporates the entire term of the mark and includes a generic term “films” which describes Complainant’s business. Moreover, the addition of the generic top-level domain (“gTLD”) “.com” does not sufficiently distinguish the disputed domain name from Complainant’s mark because all domain names are required to have a top-level domain. Therefore, the Panel finds that the <discoveryfilms.com> domain name is confusingly similar to Complainant’s DISCOVERY mark under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant asserts that Respondent lacks rights and legitimate interests in the <discoveryfilms.com> domain name. Complainant must first present a prima facie case establishing that Respondent lacks all rights and legitimate interests in the disputed domain name. Once Complainant has met the burden and made a prima facie case supporting the assertion that Respondent lacks rights and legitimate interests, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has demonstrated that Respondent lacks rights and legitimate interests in the <discoveryfilms.com> domain name, and thus made a prima facie case pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Because Respondent failed to respond to the Complaint, the Panel presumes that Respondent lacks all rights and legitimate interests in the disputed 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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). Nevertheless, the Panel will examine all evidence in the record to determine if Respondent has any rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts that it has never authorized Respondent to use the DISCOVERY mark and that Respondent is not commonly known by the disputed domain name. The WHOIS information does not indicate that Respondent is commonly known by the <discoveryfilms.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
In addition, Respondent is currently using the disputed
domain name to advertise products and services competing with Complainant’s
business. The Panel finds that
Respondent’s use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii). See Computerized Sec. Sys.,
Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s
appropriation of [Complainant’s] SAFLOK mark to market products that compete
with Complainant’s goods does not constitute a bona fide offering of goods and
services.”); see also DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat.
Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in
connection with a bona fide offering of goods and services because Respondent
is using the domain name to divert Internet users to <visual.com>, where
services that compete with Complainant are advertised.”).
Respondent has offered the <discoveryfilms.com> domain name for sale on the website that resolves from the
disputed domain name. The Panel finds
that Respondent’s effort to sell the disputed domain name is evidence that
Respondent lacks rights and legitimate interests in the <discoveryfilms.com> domain name
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.
Respondent has registered and is using the disputed domain
name in bad faith pursuant to Policy ¶ 4(b)(iv)
because the website that resolves from the <discoveryfilms.com>
domain name
advertises products and services that compete with Complainant’s business. Respondent is taking advantage of the
likelihood of confusion as to the source, sponsorship, affiliation, or
endorsement of the website that resolves from the disputed domain name, and capitalizing
on the goodwill assoicated with the mark.
See Toyota Motor
Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003) (“Respondent used
<land-cruiser.com> to advertise its business, which sold goods in
competition with Complainant. This establishes bad faith as defined in Policy ¶
4(b)(iv).”); see
also Amazon.com, Inc. v. Shafir,
FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain
name at issue in direct competition with Complainant, and giving the impression
of being affiliated with or sponsored by Complainant, this circumstance
qualifies as bad faith registration and use of the domain name pursuant to
Policy ¶ 4(b)(iv).”).
The
Panel finds that Respondent’s use of the disputed domain name to advertise competing
products is also evidence of registration and use in bad faith under Policy ¶
4(b)(iii). See Surface Prot.
Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that,
given the competitive relationship between the complainant and the respondent,
the respondent likely registered the contested domain name with the intent to
disrupt the complainant's business and create user confusion); see also S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business).
Respondent has attempted
to sell the disputed domain name. And,
the Panel finds that Respondent’s attempt to sell the <discoveryfilms.com> domain name demonstrates
registration and use in bad faith under Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad
faith where the respondent offered domain names for sale); see also Banca Popolare Friuladria S.p.A. v. Zago,
D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered
the domain names for sale).
Finally,
Respondent has registered domain names incorporating others’ famous names and
marks, and has been the respondent in several UDRP decisions in which the
disputed domain name was transferred from Respondent to the complainant in that
case. See MC Enters v. Segal (Namegiant.com), D2005-1270 (WIPO Jan. 27,
2006); see also ORIX Kabushiki Kaisha v.
Namegiant, D2005-0220 (WIPO May 26, 2005).
The Panel finds that this pattern of behavior is further evidence of
Respondent’s registration and use in bad faith pursuant to Policy ¶
4(b)(ii). See Philip Morris Inc. v.
r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the
respondent’s previous registration of domain names such as
<pillsbury.net>, <schlitz.net>, <biltmore.net> and
<honeywell.net> and subsequent registration of the disputed
<Marlboro.com> domain name evidenced bad faith registration and use
pursuant to Policy ¶ 4(b)(ii)); see also
Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000)
(finding that one instance of registration of several infringing domain names
satisfies the burden imposed by the Policy ¶ 4(b)(ii)).
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 <discoveryfilms.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 31, 2007
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