Discovery Communications, LLC v. Tripp Wood
Claim Number: FA0912001299987
Complainant is Discovery Communications, LLC (“Complainant”), represented by Emily
Mechem, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <discoveryaudio.com>, registered with GoDaddy.com, 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.
Anne M. Wallace, Q.C., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
On December 22, 2009, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <discoveryaudio.com> domain names is registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 December 28, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 19, 2010 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
Complaint’s Additional Submission was received
Respondent’s Additional Submission was received
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant asserts that:
numerous trademark and service mark registrations for its DISCOVERY
disputed domain name is identical and/or confusingly similar to Complainant’s
is not currently authorized or licensed to use DISCOVERY
· Respondent, Tripp Wood, is registrant of the disputed domain name. There is no evidence Respondent is commonly known by the disputed domain name.
· Respondent’s use of the disputed domain name to obtain click-through fees is evidence of registration and use in bad faith. Complainant says panel can infer Respondent’s knowledge of Complainant’s right based on its federal registrations which pre-date registration of the disputed domain name. Complainant also asserts that Respondent admitted to Complainant’s representative that he had been in negotiations with Complainant regarding a project and that he is friendly with certain of Complainant’s talent.
is acting in bad faith because he is attempting to divert Internet users to a
deceptive commercial website that refer to Complainant and provides links to
unrelated third party websites and competitor’s websites. Complainant says
Respondent receives click-through fees which amounts
to using the disputed domain name for commercial gain. Complainant says
Respondent is using the DISCOVERY
Respondent asserts that:
C. Additional Submissions
Complainant asserts that:
Respondent asserts that while it would have been nice to have well drawn documents and letterheads for all his business and philanthropic ideas, the practicality of such documents being drafted for each one are logistically and financially impractical. Any good idea Respondent ever came up with started on a restaurant napkin, paper bag or on the edge of a newspaper.
Respondent provided a recording of a telephone conversation with a representative of GoDaddy.com. in which the representative confirmed that the disputed domain name has never been placed in a position that would benefit Respondent, monetarily or otherwise. Under the terms of the agreement with GoDaddy.com, the domain name automatically resolves to a free parking page unless the registrant chooses otherwise.
1. The disputed domain name is confusingly similar to Complaint’s DISCOVERY trademark.
2. Respondent has no rights or legitimate interests in the disputed domain name.
3. Respondent has registered and used the disputed domain name 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 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 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.
Complainant owns a number of trademark registrations for the
DISCOVERY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 883,953 issued
argues that Respondent’s <discoveryaudio.com> domain name is confusingly
similar to Complainant’s DISCOVERY mark pursuant to Policy ¶ 4(a)(i). Complainant argues that Respondent’s disputed
domain name contains Complainant’s DISCOVERY mark in its entirety, adds the
generic term “audio,” and adds the generic top-level domain (“gTLD”)
“.com.” The generic term “audio,” when added to Complainant’s
DISCOVERY mark in the disputed domain name, creates a confusing similarity
between Complainant’s mark and the disputed domain name. This is further
confusing because the generic term “audio” has an obvious relationship to
Complainant’s offering of various products in the audio and audio-related
industry. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum
Having reviewed all the evidence, the Panel finds that
Respondent’s <discoveryaudio.com> domain name is confusingly
similar to Complainant’s DISCOVERY mark pursuant to Policy ¶ 4(a)(i).
Complainant has significant rights in the DISCOVERY
Complainant must first make a prima facie case that
Respondent lacks rights and legitimate interests in the disputed domain name
under Policy ¶ 4(a)(ii). Then the burden shifts to
Respondent to show it does have rights or legitimate interests. See Hanna-Barbered Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Aug. 18, 2006) (holding that the complainant must first make a prima facie
case that the respondent lacks rights and legitimate interests in the disputed
domain name under UDRP ¶ 4(a)(ii) before the burden
shifts to the respondent to show that it does have rights or legitimate
interests in a domain name); see also
There is no evidence before the Panel to show that Respondent has trade
mark rights in the disputed domain name or that Complainant has been authorized
Respondent to use the DISCOVERY
Under Policy 4(c), there are three possibilities. Under Policy 4(c)(i), Respondent has not demonstrated that before notice of the dispute he used or made demonstrable preparations to use the domain name or a corresponding domain name in connection with a bona fide offering of goods or services. Respondent asserts his notes on a napkin demonstrate preparations to use the domain name. Under the policy, the preparations must be demonstrable. I am not satisfied that some notes on a napkin are demonstrable preparations to use the disputed domain name. The notes on the napkin were allegedly made in March of 2006. Respondent acquired the disputed domain name in the summer of 2007, more than a year later. Respondent provided no evidence of anything he did in the ensuing two and one half years to prepare to use the disputed domain name as he alleges he intends to use it. There is, therefore, no evidence of demonstrable preparation.
Under Policy 4(c)(ii), Complainant argues that
Respondent is not commonly known by the disputed domain name or by
Complainant’s DISCOVERY mark by providing evidence that Respondent’s WHOIS
information identifies the registrant as “Tripp Wood.” There is no evidence before the Panel to show
that Respondent has been commonly known by the disputed domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006)
(finding that the respondent failed to establish rights and legitimate
interests in the <emitmortgage.com> domain name as the respondent was not
authorized to register domain names featuring the complainant’s mark and failed
to submit evidence of that it is commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum
Lastly, under 4(c)(iii), there is no evidence that Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
Complainant alleges that Respondent is using the disputed domain name to intentionally attract Internet users to its website by creating a strong possiblity of confusion with Complainant’s marks and offering links to unrelated websites. If one searches the disputed domain name, it resolves to a “Free Parking” site sponsored by GoDaddy.com. Complainant asserts that presumably Respondent is obtaining click-through fees from the advertising on this web site.
Respondent has provided a recording of a telephone interview with a representative of GoDaddy.com in which the representative confirms that Respondent receives no click-through fees. The domain is automatically parked at this site until Respondent does something else with it. Respondent asserts, therefore, that since he is not receiving any income from the disputed domain name, bad faith is not established. I disagree. Particularly given the length of time during which Respondent has taken no steps to do anything with the disputed domain name, a closer look at this situation is required.
Respondent asserts that he is not engaged in bad faith behavior because he does not control the links generated by the parking service and he does not receive revenue from the parking service. Respondent, however, is ultimately responsible for the content resolving from the disputed domain name. He has allowed the disputed domain name to resolve to the GoDaddy.com sponsored site, which site has links to other commercial ventures. Other panels have decided, and I agree, that a respondent engages in bad faith registration and use when the respondent has authorized the use of the parking service and thus condoned its use of the disputed domain name. Respondent in this case has done this by entering into the agreement he entered into with GoDaddy.com.
See St. Farm Mutual Auto. Insr.
I see no distinguishing feature between this case and those of other panels dealing with “parked” domain names. Respondent allowed the domain name to be “parked” with GoDaddy. While he may not have been receiving click-through referral fees, he did allow the disputed domain name to be used to attract, for commercial gain, Internet users who may be confused as to Complainant’s affiliation with those sites. This constitutes bad faith registration and use.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <discoveryaudio.com> domain name be TRANSFERRED from Respondent to Complainant.
Anne M. Wallace, Q.C., Panelist
Dated: February 19, 2010
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