National Cable Satellite Corporation, d/b/a C-SPAN v. Walter Sanchez Escobar
Claim Number: FA1003001315762
Complainant is National Cable Satellite Corporation, d/b/a C-SPAN (“Complainant”), represented by Marc
Miller, of McLeod,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <cspan.tv>, registered with GoDaddy.com.
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 March 26, 2010.
On March 29, 2010, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <cspan.tv> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 March 30, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@cspan.tv. Also on March 30, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 23, 2010, 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" through submission of a Written Notice, as defined in Rule 1. 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 has registered the C-SPAN service mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,081,620, issued July 22, 1997).
Complainant uses the mark in connection with the broadcasting of non-partisan news coverage of the United States Congress, events related to governmental and public affairs, as well as other programming.
Complainant has not given to Respondent any license or other authorization to use the C-SPAN mark.
Respondent registered the disputed domain name on June 13, 2007.
The disputed <cspan.tv> domain name resolves to a parked website displaying general advertisements and links to third-party websites that compete with Complainant’s services provided under its mark.
Respondent’s <cspan.tv> domain name is identical to Complainant’s C-SPAN mark.
Respondent is not commonly known by the disputed domain name.
Respondent does not have any rights to or legitimate interests in the disputed <cspan.tv> domain name.
Internet users searching for Complainant’s services may be confused by the disputed domain name because it is identical to Complainant’s C-SPAN mark but resolves to a parked web directory that displays general advertisements and includes links to third-party websites that compete with the business of Complainant.
Respondent registered and uses the <cspan.tv> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical to a service mark in which Complainant has rights; and
(2) Respondent has no rights to 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’s registration of its C-SPAN service mark with
the USPTO is sufficient to establish Complainant’s rights in the mark pursuant
to Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James,
FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding that a complainant had
registered its mark with national trademark authorities, a panel determined
that “such registrations present a prima
facie case of Complainant’s rights in the mark for purposes of Policy ¶
4(a)(i).”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding
that it does not matter whether a complainant has registered its trademark in
the country in which a respondent resides, only that it can establish rights in
its mark in some jurisdiction).
Complainant contends that Respondent’s <cspan.tv> domain name is identical to Complainant’s C-SPAN mark pursuant to Policy ¶ 4(a)(i). Respondent’s domain name contains Complainant’s mark in its entirety, with the only modifications being the omission of the hyphen between the terms of the mark and the affixation of the country-code top level domain “.tv.” These alterations are insufficient to avoid a finding of identity under Policy ¶ 4(a)(i). See Albertson’s, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002):
[T]he
absence of a space and the hyphen between the words of the mark are not changes
that are capable of overcoming a Policy ¶ 4(a)(i)
identical analysis.
See also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb.
18, 2004) (finding that hyphens and top-level domains are irrelevant for
purposes of the Policy); further see World Wrestling Fed'n Entm't,
Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001):
The addition of the country code top level domain (ccTLD) designation
<.tv> does not serve to distinguish [the disputed domain] names from the
complainant’s marks since ‘.tv’ is a common Internet address identifier that is
not specifically associated with Respondent.
The Panel therefore determines
that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights to or legitimate interests in the disputed domain name. Once Complainant has made out a prima facie case in support of this proposition, the burden to establish that Respondent has rights to or legitimate interests in the disputed domain name shifts to Respondent. See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan 4, 2008):
It
is well established that, once a complainant has made out a prima facie case in
support of its allegations, the burden shifts to respondent to show that it
does have rights or legitimate interests pursuant to paragraph 4 (a)(ii) of the Policy.
Complainant has established a prima facie case, thus shifting the burden to Respondent. Because Respondent has not responded to the Complaint, we may presume that Respondent lacks rights to and legitimate interests in the disputed 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).
Nonetheless, we elect to examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name. Moreover, the WHOIS information for the <cspan.tv> domain name lists the registrant only as “Walter Sanchez Escobar”, which does not resemble the disputed domain name. Further, Complainant asserts that it has not given any license or other authorization to Respondent to use the C-SPAN mark. On this record, we are constrained to conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated any rights to legitimate interests in the contested domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name where there was no evidence in the record showing that that respondent was commonly known by that domain name, and where a complainant asserted that it did not authorize or license that respondent’s use of its mark in a domain name); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights to or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly know by a disputed domain name).
We also observe that there is no dispute as to Complainant’s allegation that Respondent’s domain name resolves to a parked website displaying general advertisements and links to third-party websites that compete with Complainant’s services provided under its mark. In the circumstances here presented, we presume that Respondent receives click-through fees or similar income for each visit to the sponsored links by Internet users who access the website resolving from the contested domain name. We conclude, therefore, that Respondent is not useing the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate non-commercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that a respondent’s parking of a domain name containing a complainant’s mark did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via the use of sponsored links to a complainant’s business competitors does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain under Policy ¶ 4(c)(iii)).
The Panel thus determines
that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the disputed domain name to resolve to a
parked web directory that displays general advertisements and includes links to
third-party websites that compete with Complainant’s services provided under
its mark. Respondent’s use of a domain name substantively identical to
Complainant’s mark in the manner alleged constitutes disruption of
Complainant’s business and evidences bad faith registration and use of the
contested domain name pursuant to Policy ¶ 4(b)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb.
Forum June 11, 2006) (holding that a respondent’s use of the
<bankofamericanfork.com> domain name to maintain a web directory was
evidence of bad faith where that respondent presumably benefited commercially by
receiving click-through fees for diverting Internet users to unrelated
third-party websites); see also Hewlett Packard Co. v. Full Sys., FA
94637 (Nat. Arb. Forum May 22, 2000) (finding that a respondent registered and
used a domain name primarily for the purpose of disrupting the business of a
complainant under the domain name <openmail.com> which was identical to
that complainant’s OPENMAIL mark).
Complainant also asserts that Internet users searching for
Complainant’s services will be confused by the disputed domain name because it
is identical to Complainant’s C-SPAN mark but resolves to a parked web
directory displaying general advertisements and links to third-party websites
that compete with the business of Complainant. We agree that Internet users
interested in Complainant and its services may become confused as to the
possibility of Complainant’s sponsorship of or affiliation with the resolving
website. Moreover, Respondent evidently attempts to profit from this confusion via
the receipt of click-through or similar fees from the sponsored links and advertisements.
Respondent’s registration and use of the <cspan.tv>
domain name thus creates a likelihood of confusion with the Complainant’s mark
and demonstrates bad faith registration and use of the disputed domain name pursuant
to Policy ¶ 4(b)(iv). See Bank of Am.
Corp. v.
For these reasons, the Panel
determines that Complainant has satisfied 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 <cspan.tv> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 30, 2010
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