Public Broadcasting Service v. Taeho Kim a/k/a SMS
Claim Number: FA1006001331247
Complainant is Public
Broadcasting Service (“Complainant”), Virginia,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain name at issue is <pbsnews.org> and <pbsnews.com>, registered with Fabulous.com Pty Ltd.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 22, 2010.
On June 23, 2010, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <pbsnews.org> and <pbsnews.com> domain names are registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the names. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 June 25, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 15, 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@pbsnews.org and postmaster@pbsnews.com. Also on June 25, 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 July 21, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
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 "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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <pbsnews.org> and <pbsnews.com> domain names are confusingly similar to Complainant’s PBS mark.
2. Respondent does not have any rights or legitimate interests in the <pbsnews.org> and <pbsnews.com> domain names.
3. Respondent registered and used the <pbsnews.org> and <pbsnews.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Public Broadcasting Service, is a non-profit
membership corporation whose members include virtually all of the public
television stations in the
Respondent, Taeho Kim a/k/a SMS, registered the <pbsnews.org> domain name on April 29, 2004 and registered the <pbsnews.com> domain name on December 24, 1999. The disputed domain names resolve to websites featuring sponsored links including links to competing news sources.
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 the 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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 asserts rights in its PBS mark based on its holding of several trademark registrations with the USPTO (e.g. Reg. No. 1,247,905 issued August 9, 1983). The Panel finds that Complainant’s registration of its PBS mark with the USPTO sufficiently demonstrates Complainant’s rights in the mark for the purpose of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant argues that Respondent’s <pbsnews.org> and <pbsnews.com> domain names are confusingly similar to Complainant’s PBS mark. Respondent’s disputed domain names incorporate the entirety of Complainant’s mark and then merely add the descriptive term “news” and the generic top-level domain (“gTLD”) “.com” or “.org.” The Panel finds that these alterations are not sufficient to avoid a finding of confusing similarity. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s <pbsnews.org> and <pbsnews.com> domain names are confusingly similar to Complainant’s PBS mark.
The Panel finds the Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights and
legitimate interests in the disputed domain names. Pursuant to the requirements of Policy ¶ 4(a)(ii), Complainant must first make a prima facie case in support of its assertions before the burden
will shift to Respondent to prove it does have rights or legitimate interests
in the disputed domain names. See Hanna-Barbera 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 Policy ¶ 4(a)(ii) before
the burden shifts to the respondent to show that it does have rights or
legitimate interests in a domain name).
The Panel finds that based on the arguments made in the Complaint,
Complainant has established a prima facie
case that Respondent lacks rights and legitimate interests in the disputed
domain names. Thus, the burden has
effectively shifted to Respondent who has failed to submit a Response to these
proceedings. The Panel infers that
Respondent’s lack of response to these proceedings allows an inference that
Respondent does in fact lack rights and legitimate interests in the disputed domain
names. See Am. Express Co.
v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”). Nevertheless, the Panel will examine the
record in light of the factors outlined in Policy ¶ 4(c) to determine whether
Respondent has any rights or legitimate interests in the disputed domain
name.
Complainant asserts that it has not authorized Respondent to use its mark. The WHOIS information indicates that the registrant of the disputed domain names is “Taeho Kim a/k/a SMS” which Complainant argues provides no discernable connection to the disputed domain name. The Panel agrees and finds that without any evidence in the record to the contrary, Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant asserts that Respondent’s disputed domain names resolve to websites that offer an assortment of sponsored links, including to news sources that compete with the news services offered by Complainant. Complainant further asserts that Respondent is likely receiving compensation when Internet users click on the displayed links. The Panel finds that Respondent’s use of the confusingly similar disputed domain names to display links to Complainant’s competitors is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent is using the disputed domain names in bad faith to disrupt Complainant’s business. Complainant contends that Respondent is attempting to divert users seeking Complainant’s online goods and services to Respondent’s websites resolving from the <pbsnews.org> and <pbsnews.com> domain names. The Panel finds that this is evidence of Respondent’s bad faith registration and use in bad faith pursuant to Policy ¶ 4(b)(iii) and that the disputed domain names are being used to disrupt Complainant’s business. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant alleges that Respondent’s use of the disputed domain names is also intentionally designed to exploit consumer confusion for Respondent’s commercial gain. Complainant further alleges that the disputed domain names capitalize on Complainant’s PBS mark by attracting consumers who intend to visit one of Complainant’s online news portals. Once Internet users land at Respondent’s resolving websites, Respondent offers nothing more than third-party links to Complainant’s competitors in the news services industry. Complainant asserts, and the Panel presumes, that Respondent is receiving click-through fees and is thus profiting from its attempts to confuse Internet users. The Panel therefore finds that Respondent has demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <pbsnews.org> and <pbsnews.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: July 23, 2010
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