Sina.com Online, Sina
Corporation and Sina.com Technology (
Claim Number: FA0811001235499
Complainants are Sina.com
Online, Sina Corporation and
Sina.com Technology (
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sina.tv>, registered with eNom, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Paul M. DeCicco, David E. Sorkin, and Mark McCormick, Chair, as Panelists.
Complainants submitted a Complaint to the National Arbitration Forum electronically on November 21, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 24, 2008.
On November 24, 2008, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <sina.tv> 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 26, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 16, 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.
A timely Response was received and determined to be complete on December 16, 2008.
An Additional Submission was received from Complainants on December 23, 2008.
An Additional Submission was received from Respondent on December 30, 2008.
On January 6, 2009, pursuant to Complainants’ request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Paul M. DeCicco, David E. Sorkin, and Mark McCormick as Panelists.
Complainants request that the domain name be transferred from Respondent to Complainants.
Complainants assert that Sina Corporation is the parent company of
Sina.com Online, and that Sina.com Technology (
Complainants also allege that Respondent lacks rights and legitimate interests in the disputed domain name because it is merely a parking site not used for a bona fide offering of goods and services, or a legitimate noncommercial fair use. They assert there is no evidence that Respondent is commonly known by the disputed domain name but that, instead, there is evidence Respondent uses the disputed domain name to divert Internet users to a website that offers third-party links and advertisements. They allege that the domain name is intended to confuse consumers about an association with Complainants.
Finally, Complainants contend that Respondent has registered and used the domain name in bad faith. They refer to negotiations they allege they had with Respondent over purchase of the disputed domain name from Respondent, which they contend failed when Respondent’s attorney did not respond to their November 19, 2008 offer of $20,000, the offer having escalated through several stages from an original offer of $500. Complainants contend that Respondent’s overall business model is to register or acquire domain names for the primary purpose of making a profit on them by selling them to parties who own the trademarks or service marks for the domain name. They also contend Respondent’s bad faith is shown by its effort to confuse customers by using Complainants’ service mark and trademark to divert Internet users looking for Complainants’ website to Respondent’s website to capitalize on Complainants’ goodwill in order to obtain revenue.
Respondent contends that its <sina.tv> domain name is comprised of a common geographical term meaning “China” but does not otherwise respond to Complainants’ contention regarding confusing similarity.
Respondent acknowledges that it is
in the business, among other things, of acquiring domain names but alleges they
are generic in nature and that its use of the <sina.tv> domain name to attract consumers to
its website is a legitimate means to obtain revenue. Respondent asserts that it uses the domain
name to promote travel to and news about
Respondent denies bad faith registration and use, contending it was unaware of Complainants’ registration at the time it acquired the domain name and, in any event, had every right to use the generic name. Respondent alleges that Complainants threatened Respondent in seeking to purchase the domain name, that Respondent was not soliciting offers for the domain name and that inquiries were referred to Respondent’s counsel, who had discussions with Complainants’ counsel but “never made a monetary demand from the Complainant.” Respondent accuses Complainants of reverse domain name high jacking.
C. Additional Submissions
Complainants’ Additional Submission attacks Respondent’s arguments that
the SINA mark is not protectable and that Respondent’s use of the <sina.tv>
domain name is legitimate. Complainants
assert that <sina.com> is highly popular and that their
website is the third most visited site in China and ranks in the top 15
websites worldwide, with the mark in continuous use since June 1, 1995. They allege that they use the mark to provide
information in a wide variety of fields by means of a computer information
network. They contend that “SINA” is not
a generic name for
They dispute Respondent’s contention that Respondent’s website is not a parking site and allege the website takes users to links having no content dealing with China. Moreover, they assert that, after the filing of their Complaint, Respondent through its counsel offered to sell the disputed domain name to Complainants for $150,000 but declined to put the offer in writing because he did “not want any writing coming back in [his] face.”
Respondent’s Additional Submission repeats its contention about the generic nature of the SINA mark and again denies that its website is a parking site, alternatively arguing that a parking site is a legitimate use. Finally, Respondent contends that Complainants have fabricated their version of the conversation between counsel in which Complainants say Respondent’s counsel put the purchase price of the domain name at $150,000 but would not reduce the offer to writing. Alternatively, Respondent asserts that evidence of any such conversation is inadmissible because it would constitute settlement discussions.
The disputed domain name <sina.tv> is confusingly similar to Complainants’ mark and domain names. Respondent lacks rights and a legitimate interest in the disputed domain name. Respondent’s registration and use of the domain name is in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 Complainants 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainants have 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.
Complainants have sufficiently established
ownership rights in the SINA mark through registration of the mark with the
The WHOIS information identifies Respondent as “Cybertavern, LLC.” Moreover, the record shows Respondent does not have Complainants’ permission to use Complainants’ SINA mark. The record shows Respondent is not commonly known by the <sina.tv> domain name. Complainant has met its initial burden to make out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006). The burden thus shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
In seeking to meet
this burden, Respondent asserts that it uses the disputed domain name to make a
bona fide offering of goods and services.
Respondent also argues that the SINA mark is generic and that
Complainants thus do not have a right to its exclusive use. Complainants’ registration of the mark
creates a presumption that the mark is inherently distinctive and that it has
acquired secondary meaning. See Expedia, Inc. v. Emmerson, FA 873346
(Nat. Arb. Forum Feb. 9, 2007). The
record shows not only that Complainants own a registration of the SINA mark but
that they have used it in connection with their business since June 1,
1995. Assuming that the SINA mark is a
generic term for
evidence shows that the <sina.com> website
is the third most visited website in
Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services and do not constitute a legitimate use within the meaning of Policy ¶4(a)(ii). See Lockheed Martin Corp. v. Extraordinary Things LLC, FA 1117826 (Nat. Arb. Forum Jan. 23, 2008).
Complainants have shown that when their representative contacted Respondent about acquiring the <sina.tv> domain name, Respondent replied by inviting Complainants to “make an offer” for the disputed domain name by directing Complainant to a website listing market rates for domain names. The subsequent negotiations show a willingness of Respondent to sell the domain name to Complainants only if the price exceeded $20,000. Respondent’s willingness to sell its rights in the disputed domain name for an amount far more than its out-of-pocket costs is evidence of its bad faith within the meaning of Policy ¶4(a)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007). Respondent's contention that the SINA mark is descriptive, is dubious, and it can be inferred from the circumstances that it is more likely than not that Respondent was predisposed to selling the domain name at the time of registration regardless of whether or not another had trademark rights therein. Therefore, the parties' negotiations are less innocuous than the Respondent has tried to paint them and there is little basis to couch such negotiations as "settlement discussions" which might be excluded as evidence of bad faith.
No doubt exists under the record that Respondent is attempting to benefit commercially from its use of the <sina.tv> domain name by trading on the similarity of the domain name to Complainants’ mark and domain names. Respondent is exploiting this similarity to attract consumers to its website with an obvious purpose to obtain click-through revenue from the diversion of Internet users seeking goods and services offered by Complainants. This activity constitutes bad faith registration and use of the disputed domain name. See Gardeners Alive, Inc. v. D & S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003).
Complainants have demonstrated that Respondent registered and used the disputed domain name in bad faith within the meaning of Policy ¶4(a)(iii).
Because Complainants established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sina.tv> domain name be TRANSFERRED from Respondent to Complainants.
Mark McCormick, Chair
Paul M. DeCicco, Panelist
Dated: January 13, 2009
I respectfully dissent. I do not believe there are any exceptional circumstances present warranting the consideration of additional submissions, and I do not believe that Complainant has met its burden of proving that Respondent registered and has used the disputed domain name in bad faith, as required by Paragraph 4(a)(iii) of the Policy.
With regard to the parties’
additional submissions, Paragraph 12 of the Rules confers upon the Panel the
sole discretion to decide whether to receive supplemental material from the
parties (notwithstanding the Forum’s Supplemental Rule 7, which sets forth a
procedure by which parties may submit additional material for possible
consideration by a panel). Darice, Inc. v.
In this case, neither party has even alleged the presence of any exceptional circumstances, let alone identified what those circumstances might be, and at least to this Panelist no such circumstances are apparent. I therefore would not have considered the substance of either party’s additional submission (although I note that I do not think that declining to consider these materials would have any effect on the outcome of this proceeding).
With regard to the
substance of the matter before the Panel, I would hold that Complainant has failed
to prove bad faith registration and use under Paragraph 4(a)(iii) of the Policy. That provision effectively requires that the
Respondent harbor a specific intent directed against the Complainant, targeting
the Complainant or its mark. Ohio Savings Bank v. Kempa, FA 605065
(Nat. Arb. Forum Jan. 25, 2006); Franklin
Mint Fed. Credit Union v. GNO, Inc., FA 860527 (Nat. Arb. Forum Mar. 9,
2007); see also Google Inc. v.
The preponderance of
the evidence before this Panel indicates that SINA is both a trademark
associated with Complainant and (Complainant’s trademark registrations
notwithstanding) a generic term for
Nor do I draw any inference of bad faith from Respondent’s alleged willingness to sell the domain name, apparently expressed by Respondent’s counsel in response to an unsolicited overture by Complainant during settlement discussions. See Mirama Enters. Inc. v. NJDomains, FA 588486 (Nat. Arb. Forum Jan. 16, 2006) (responding to an unsolicited offer to purchase a domain name does not demonstrate bad faith); Reed Elsevier Inc. v. ECS Composites - ECS - E01, FA 727967 (Nat. Arb. Forum July 26, 2006) (an offer to sell communicated by an attorney in the context of settlement negotiations is not evidence of bad faith). I note further that the only evidence of any desire by Respondent to profit from such a transaction dates to several years after the initial registration of the domain name, and thus even if it did somehow support an inference of bad faith use, it would not be probative of Respondent’s intentions at the time of the initial domain name registration.
I therefore would hold that Complainant has failed to prove bad faith registration and use, and would dismiss the Complaint on that ground.
David E. Sorkin, Panelist
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