Post-Newsweek Stations, Michigan, Inc. d/b/a WDIV-TV
v.
Claim Number: FA0803001169950
PARTIES
Complainant is Post-Newsweek Stations, Michigan, Inc. d/b/a WDIV-TV (“Complainant”), represented by Jane
H. Marshall, of Post-Newsweek
Stations, Inc.,
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <click-on-detroit.com>, registered with Compana, LLC.
PANEL
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.
Dennis A. Foster as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 26, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 27, 2008.
On March 28, 2008, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <click-on-detroit.com> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 April 3, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 23, 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 postmaster@click-on-detroit.com by e-mail.
A timely Response was received and determined to be complete on April 23, 2008.
A timely Additional Submission was received from Complainant on April 28,
2008. On May 5 Respondent filed an
Additional Submission in reply to Complainant’s Additional Submission. As both supplemental filings complied with
the requirements of Supplemental Rule 7, the Panel has taken them into account
in reaching its Decision.
On
May 2, 2008, pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the National
Arbitration Forum appointed Dennis A. Foster as Panelist.
RELIEF SOUGHT
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
- Complainant owns a television
station located in
- Complainant registered <clickondetroit.com> on April 3, 2000. As a result of its continuous use of that domain name, Complainant has acquired common law service mark rights in the mark CLICKONDETROIT, and has filed an application with the United States Patent and Trademark Office for registration of the same.
- CLICKONDETROIT is a suggestive mark that is identified exclusively with Complainant and its online news services. Complainant has advertised and promoted that mark on a daily basis throughout the Detroit area by utilizing promotional broadcast spots on its own station, the value of which exceeds $5 Million USD per year. The website located at <clickondetroit.com> is visited by more than 1.5 million distinct internet users monthly, who spend an average of nine minutes and 30 seconds per visit at the site.
- The disputed domain name is confusingly similar to Complainant’s service mark. The only difference is the addition of two hyphens between the individual words comprising the mark.
- Respondent has no rights or legitimate interests in the disputed domain name. Respondent has no relationship with Complainant, is not a licensee of Complainant and has received no authorization otherwise from Complainant to use its mark.
- Respondent has no intellectual property rights in the disputed domain name and has not been commonly known by the same. Respondent has made neither demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name. Respondent’s use of the disputed domain name, to redirect consumers to unrelated commercial websites presumably for pay-per-click fees, fails to fall under either of the preceding circumstances.
- The disputed domain name was registered and is being used in bad faith. Respondent has traded on the fame of Complainant’s mark to attract Internet users to Respondent’s website for its commercial gain by creating a domain name that likely will be confused with that mark. Registering the disputed domain name five years after the creation of Complainant’s mark, Respondent has sought to benefit from a perceived affiliation with Complainant, only to redirect consumers to third party websites offering competing services.
- Employing a classic typo-squatting technique, Respondent is acting to disrupt Complainant’s business, clear evidence of bad faith. Respondent has engaged in a prolonged pattern of such activities, having suffered at least 62 adverse UDRP rulings through 2007.
B. Respondent
- Complainant has no registered trademark corresponding to the disputed domain name as established by both a search of the United States Patent and Trademark Office (the “USPTO”) and the Canadian Intellectual Property Office (the “CIPO”). Complainant filed an application for registration of its claimed mark nearly one year after registration of the disputed domain name and, in any event, such application confers no rights with respect to the elements required to be proved under the Policy.
- Complainant has failed to establish that it possesses common law rights in its claimed mark because it has not provided sufficient evidence of a “secondary meaning” in the mark identifiable with Complainant.
- Pending for 17 months, Complainant’s application with the USPTO was rejected by an examining attorney because Complainant’s claimed mark was likely to be confused with the registered service mark “Click On Orange County” as to a common source.
- Respondent is using the disputed domain name legitimately to provide Internet users with a portal to a search function offered by a third party. Links at Respondent’s website are provided pursuant to a third party’s terms and are triggered by search requests entered by Internet users.
- Respondent is simply employing a
domain name composed of a generic term, “click on,” and a geographical name, “
- Complainant has proved neither that the disputed domain name was registered in bad faith nor that it is being used in bad faith. Since Respondent was unaware of Complainant before registering the name, there can be no bad faith registration in this case. Complainant’s claimed mark is not famous, and there has been no showing that any consumers have been confused by Respondent’s use of the disputed domain name.
- While Respondent has been involved in a number of UDRP proceedings resulting in the transfer of domain names from Respondent’s possession, many of those cases resulted from Respondent’s consent to transfer such names and, in any event, said proceedings are not relevant to the issues at hand. Moreover, in six other UDRP cases, Respondent has prevailed or partially prevailed with respect to retaining disputed domain names. Finally, Respondent has contested some adverse rulings in subsequent law suits, one of which resulted in a reversal of the corresponding UDRP ruling.
- Respondent is the owner of thousands of domain names comprised of generic terms, and the use of the same to collect pay-per-click fees is not evidence of bad faith.
- Respondent neither registered the disputed domain name to sell to Complainant nor attempted to sell the name to Complainant, the two parties never having communicated prior to instigation of this proceeding.
C. Complainant’s Additional Submission
- Complainant does not rely on its application with the USPTO to establish its rights in the mark, CLICKONDETROIT. However, Complainant has entered into a consent agreement with the third party owner of the trademark, CLICK ON ORANGE COUNTY, which agreement Complainant believes will allow it to acquire a registration for its mark with the USPTO.
- Complainant’s claims to common law rights in its mark are based on a sworn affidavit, not mere conclusory assertions. Furthermore, said affidavit is supported by a third party research sources.
- Complainant’s mark is a famous symbol associated with the goodwill and reputation of Complainant in the provision of its news services.
- A simple Internet search for domain names similar to the disputed domain name would have informed Respondent of Complainant’s domain name, <clickondetroit.com>, and its corresponding service mark of the same name.
- A determination as to the generic nature of a trademark or service mark cannot rely simply on analyzing the separate parts of the mark, but it must be evaluated as a whole.
- Respondent deliberately added hyphens to Complainant’s mark in creating the disputed domain name to cause confusion and redirect Internet users to Respondent’s website. Evidence of such confusion is a link on Respondent’s website entitled “Detroit Channel 4” (Complainant’s broadcast name), which link was generated, Respondent claims, due to Internet user searches provided by a third party company (i.e., such users were trying to find Complainant’s website but were erroneously directed to Respondent’s website due to the confusion noted above).
- Respondent had at least constructive knowledge of Complainant’s mark before registration of the disputed domain name because a simple Internet search would have revealed to Respondent the domain name owned by Complainant, <clickondetroit.com>, which is virtually the same as the disputed domain name.
D. Respondent’s Additional Submission
- Respondent objects to Complainant’s Additional Submission, and believes that the
Supplement Rule 7 contravenes Rule 12
of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) in
allowing for consideration of such a submission.
- A prior UDRP Case cited by Complainant does not stand for the proposition that assertions proffered in an affidavit are sufficient to establish common law rights. On the contrary, such assertions must be accompanied by evidence to sustain such a finding.
- Complainant bears the burden of proving bad faith registration of the disputed domain name, and Respondent is not required under the Policy to explain the rationale for such registration.
FINDINGS
Complainant owns a
television station that is well known in the
Respondent registered the disputed domain name on December 13, 2005. The website operated by Respondent at the disputed domain name offers links to third party websites, some of which provide services that compete directly with the services offered by Complainant's website. Respondent’s website also includes a link, generated by Internet user search attempts, that refers to Complainant’s television station.
DISCUSSION
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 that the Complainant 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
With respect to Respondent’s contention that Supplemental Rule 7, which sets forth a procedure for the submission of supplemental filings, contravenes the Rules, the Panel finds no contradiction between the Supplemental Rules as promulgated by the National Arbitration Forum on the one hand, and the Rules and the Policy on the other hand.
Complainant has not furnished the Panel with evidence that Complainant holds a valid service mark registration for the mark CLICKONDETROIT. However, that does not prevent Complainant from asserting rights in that mark for purposes of protection under the Policy as such rights may be established under common law doctrine. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (“…a trademark registration is not required by Policy ¶ 4(a)(i) and Complainant can rely on its common law rights to establish rights pursuant to Policy ¶ 4(a)(i).); and Highland St. Connection v. McGrath, D2006-0516 (WIPO Aug. 14, 2006).
In order to establish common law rights in a service mark, many prior UDRP panels have held that the mark must have acquired a secondary meaning relating solely to the complainant in the case. See, for example, Stellar Call Centres Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005); and United Artists Theatre Circuit, Inc. v Domains for Sale Inc., D2002-0005 (WIPO Mar. 27, 2002). The consensus approach taken by several such panels in analyzing whether such a secondary meaning has obtained is to examine such factors as longevity of use, amount of sales, nature and extent of advertising, consumer surveys and media recognition pertaining to the service mark in question. See Control Techniques Ltd. v. Lektronix Ltd, D2006-1052 (WIPO Oct. 11, 2006); Amsec Enters., L.C. v. McCall, D2001-0083 (WIPO Apr. 3, 2001); as well as the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
In this case,
Complainant has supplied the Panel with a sworn affidavit to substantiate that
Complainant’s mark has been in continuous use via a website of the same name since April 2000 which has been
consulted by millions of Internet users per month during that time, and has
been aggressively advertised and promoted though Complainant’s own television
station utilizing broadcast time worth millions of US dollars per year if sold
on the open market. Complainant has also furnished the Panel with a report that
recognizes Complainant’s website as the number one news website in the relevant
market. The Panel finds that this
evidence clearly validates Complainant’s claim of common law service mark
rights in the mark CLICKONDETROIT. In
reaching this conclusion, the Panel is in concurrence with the learned panel
ruling in a prior Policy case involving Complainant, Post-Newsweek Stations, Inc.,
Because Complainant’s mark does not possess the hyphens found in the disputed domain name, the two are not identical. However, the mere addition of hyphens and the gTLD, “.com,” does not prevent the disputed domain name from being confusingly similar to the mark. Therefore, in line with a plethora of prior Policy panels who have dismissed such minor differences when examining domain names and service marks for similarity, the Panel concludes that the disputed domain name <click-on-detroit.com> is confusingly similar to Complainant’s service mark CLICKONDETROIT. See, for example, Sports Auth. Michigan Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”) and Nintendo Of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding <game-boy.com> identical and confusingly similar to Complainant’s GAME BOY mark).
Accordingly, the Panel determines that Complainant has satisfied its burden to prove that the disputed domain name is identical or confusingly similar to a service mark in which Complainant has rights.
Complainant has both established its rights in the service mark CLICKONDETROIT and asserted, without objection from Respondent, that it is neither affiliated with Respondent nor has it authorized Respondent to use that mark in a domain name or in any other manner. As such, Complainant has made a prima facie case in support of its allegation that Respondent has no rights or legitimate interests in the disputed domain name, thus shifting the burden to Respondent to show that it does have such rights or legitimate interests pursuant to Policy paragraph 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the disputed domain name, it is incumbent on the respondent to come forward with evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); and 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 rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
To rebut Complainant’s prima facie case, Respondent might rely on its compliance with at least one of the criteria listed in paragraph 4(c) of the Policy. However, clearly the criterion cited in paragraph 4(c)(ii) will not avail Respondent as there is no evidence in the record that suggests that Respondent is commonly known by the disputed domain name. Furthermore, Respondent’s actions fail to fall within the parameters set forth in paragraphs 4(c)(i) and (iii) since, as has been noted in many previous UDRP decisions, using a disputed domain name that is confusingly similar to a valid service mark to redirect Internet users to third party websites that market goods or services that compete directly with those furnished by the service mark owner neither constitutes a “bona fide offering of goods or services” per paragraph 4(c)(i) nor “noncommercial or fair use” of that name per paragraph 4(c)(iii). For example, see Royal Bank of Scot. Group plc, Direct Line Ins. plc, & Privilege Ins. Co. Ltd. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (“The Panel finds that Respondent’s use of the [disputed domain name] for commercial gain, presumably by earning “click-through” fees for each consumer Respondent redirects to the websites of Complainants’ competitors, does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); and Wells Fargo & Company v. Ling Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003)
Compliance with the
criteria of paragraph 4(c) does not exhaust the arguments Respondent may make
in its favor. In this case, Respondent
contends that it has the right to own and use the disputed domain name because
it is comprised of descriptive terms and thus open to whoever first registers
it. The Panel agrees that the term
“click on” is a descriptive English language term which now commonly refers to
a computer user pressing a computer “mouse” button when a computer pointer
rests upon a computer screen icon.
Moreover, the word “
However, as noted by the panel in Media Gen. Commc’ns, Inc. v. Rarenames, WebReg, D2006-0964 (WIPO Sept. 23, 2006), the right to use descriptive terms in a domain name is not absolute when there is conflict with a confusingly similar trademark or service mark. That panel put forth a set of conditions, all of which must be satisfied, before a disputed domain name owner may prevail over a trademark or service mark owner with respect to the requirements of Policy paragraph 4(a)(ii). Those conditions have been cited favorably in subsequent UDRP cases. See, for example, Schaum-Chemie Wilhelm Bauer GmbH & Co. KG v. Click Cons. Ltd, D2007-1299 (WIPO Nov. 5, 2007); and Walsh Bishop Assocs., Inc. v. Honggi, Honggi Kim, FA 907521 (Nat. Arb. Forum Mar. 6, 2007). The Panel believes it is appropriate to recite and apply them in this case, as follows:
(1) the respondent regularly engages in the business of registering and reselling domain names, and/or using them to display advertising links;
(2) the respondent makes good-faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others;
(3) the domain name in question is a “dictionary word” or a generic or descriptive phrase;
(4) the domain name is not identical or confusingly similar to a famous or distinctive trademark; and
(5) there is no evidence that the respondent had actual knowledge of the complainant’s mark.
In the interest of brevity, the Panel will first consider condition (2) above. Respondent contends persuasively that it searched both the USPTO and the CIPO for trademark or service mark registrations similar to the disputed domain name and found none. However, it is the Panel’s opinion that good faith required that Respondent do more. As Respondent is in the business of “warehousing” domain names, Respondent is an expert in Internet considerations and therefore should have made at least a cursory search for other domain names that may be confused with the disputed domain name and might represent a service mark. This is especially true when the descriptive words in the disputed domain name are separated by hyphens. As discussed more fully below, the use of hyphens occurs but is relatively uncommon in the English language, and a simple Internet search of the domain name with the removal of the hyphens would have yielded knowledge of Complainant’s website <clickondetroit.com> whose domain name location is coincident with its service mark CLICKONDETROIT. As Respondent has failed to meet condition (2) above and thus not satisfied all of the cited conditions, the Panel concludes that Respondent cannot rely on its contention that the disputed domain name is comprised of descriptive terms to establish its rights or legitimate interests in that name.
Consequently, the Panel finds that Complainant has demonstrated that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent contends that it cannot be found to have registered the disputed domain name in bad faith because it was not aware of Complainant’s rights prior to registration of the name. However, previous UDRP panels have not deemed prior actual knowledge a prerequisite for such a finding, especially if constructive knowledge can be applied. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); and Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000).
In this case, the Panel believes that constructive knowledge should be applicable. Respondent is in the Internet business, and thus should know of domain names that are similar to the names that it registers. This is particularly true of names that include hyphens. Although hyphenated words are found in the English language, they are not the norm and this holds true for domain names. For instance, to support its contentions in this case with respect to descriptive terms, Respondent provided the Panel with 17 domain names it owns, in addition to the disputed domain name, and none of those 17 names included even one hyphen. Moreover, when Respondent contended that the disputed domain name consisted of a descriptive terms, it referred to “click on” not “click-on.” Thus, the Panel believes that if a reasonable entity sought to register <click-on-detroit.com>, it would have checked immediately to determine whether <clickondetroit.com> was in use. In fact, the Panel suspects that the Respondent did discover the latter and registered the former – an atypical hyphenated version – only because Respondent knew that there would be a substantial likelihood of confusion between the two. Therefore, the Panel concludes that Respondent did know or should have known of Complainant’s rights in the domain name <clickondetroit.com>, and the likely service mark rights of Complainant in the mark CLICKONDETROIT.
Given Respondent’s
knowledge and its use of the disputed domain name to divert Internet users to
competing third party websites for Respondent’s commercial gain through
collecting pay-per-click fees, Respondent’s actions fall squarely within the
circumstance cited in Policy paragraph 4(b)(iv), which provides for a finding
of bad faith registration and use of the name.
The inclusion of a link at Respondent’s website bearing the name of
Complainant’s television channel, which was generated as a result of Internet
user interest, attests to user confusion between the disputed domain name and
Complainant’s service mark. The Panel
believes that this confusion is inevitable since Respondent’s services are
targeted at Internet users seeking information related to
In view of the foregoing, the Panel rules that the disputed domain name was registered and is being used in bad faith.
DECISION
Accordingly, it is Ordered that the <click-on-detroit.com> domain name be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster,
Panelist
Dated: May 16, 2008
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