Katz Communications, Inc. v. Katz Media Group
Claim Number: FA0801001140407
Complainant is Katz Communications, Inc. (“Complainant”), represented by Matthew
M. Jennings, of Cox Smith Matthews Incorporated,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <katzmediagroup.com>, registered with Network Solutions, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 25, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 28, 2008.
On January 25, 2008, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <katzmediagroup.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 January 29, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 19, 2008 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 22, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a source of quality media sales services.
Complainant has spent considerable time and money to promote its business under the KATZ mark as well as variations of that mark.
Complainant holds a trademark registration for the KATZ mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,786,989, issued August 10, 1993).
Respondent has not sought, nor has Complainant granted, a license or permission for Respondent to use Complainant’s mark in any way.
Respondent registered the disputed domain name on May 22, 2003.
Complainant does not control the disputed domain name.
The <katzmediagroup.com> domain name currently resolves to a website that displays unrelated third-party links and products, including adult-oriented content.
Respondent’s <katzmediagroup.com> domain name is confusingly similar to Complainant’s KATZ mark.
Respondent does not have any rights or legitimate interests in the domain name <katzmediagroup.com>.
Respondent registered and uses the <katzmediagroup.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent 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 domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant established rights in the KATZ mark by its registration with the USPTO, a registration which pre-dates the registration of the disputed domain name. Complainant has thus met its burden to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See 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.” See also 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.”
Complainant contends that Respondent’s <katzmediagroup.com> domain name is confusingly similar to Complainant’s KATZ mark, because it includes the mark in its entirety, with the mere addition of two descriptive terms, “media,” and “group” which describe Complainant’s business. These distinctions are insufficient to distinguish the disputed domain name from Complainant’s mark. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where a respondent’s domain name combines a complainant’s mark with a generic term that has an obvious relationship to that complainant’s business); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with a complainant’s registered mark “llbean” does not circumvent that complainant’s rights in the mark nor avoid a confusing similarity finding under the ICANN Policy).
Further, the addition of the generic top-level domain name (“gTLD”) “.com” is not pertinent to a Policy ¶ 4(a)(i) analysis because all domain names require a top-level domain. See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000):
[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .
The Panel therefore finds Complainant has satisfied the requirements of Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must initially make out a prima facie case that Respondent has no rights or legitimate interests in the domain at issue. The burden then shifts to Respondent to show that it nonetheless has such rights or interests. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to the domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). See also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.
Complainant has met its burden. Accordingly, the burden is shifted to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name. Respondent, for its part, has failed to submit a response to the Complaint. We may therefore presume that Respondent has no rights or legitimate interests in the <katzmediagroup.com> domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002): “Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).” See also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002):
Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.
Despite this, we will consider the available evidence with respect to the factors listed in Policy ¶ 4(c) to determine if there is any basis for concluding that Respondent lacks right or interests as provided in the Policy.
We begin by noting that Respondent does not deny Complainant’s allegation that Respondent has not sought, nor has Complainant granted, a license or permission to use Complainant’s mark in any way. Additionally, although the pertinent WHOIS information gives the appearance that Complainant and Respondent are linked, Complainant alleges, and Respondent does not deny, that Complainant does not control the disputed domain name. A domain name holder’s use of fraudulent information that reflects Complainant on a WHOIS registration is a tactic known as “cyberflying.” In the circumstances, we are comfortable in concluding that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Sky Broad. Group plc v. Merino & Sky Services S.A., D2004-0131 (WIPO July 5, 2004) (holding that there was no evidence that a respondent was commonly known by disputed domain names where that respondent’s information was the result of cyberflying); see also MB Fin. Bank, N.A. v. MBBANK, FA 644517 (Nat. Arb. Forum Apr. 4, 2006) (finding that a respondent had no rights or legitimate interests in a disputed domain name where that respondent’s WHOIS information had been altered following the filing of a complaint).
We also observe that there is no dispute that the disputed domain name resolves to an adult-oriented website. This is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”); see also Dipaolo v. Genero, FA 203168 (Nat. Arb. Forum Dec. 6, 2003):
Diversion to pornography is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).
The Panel thus finds Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We have already determined that the <katzmediagroup.com> domain name resolves to a website containing adult-oriented content. Absent any evidence to the contrary, we may presume, as arises naturally from the circumstances here presented, that Respondent’s website generates revenue for Respondent from click-through fees for each visit by an Internet user. This is evidence of Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv). See Nationall Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan. 23, 2002):
[I]t is now well known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques.
See also Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003): “Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites. Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”
For these reasons, the Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <katzmediagroup.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 5, 2008
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