national arbitration forum

 

DECISION

 

Mutual of Omaha Insurance Company v. WebDomains.TV

Claim Number: FA1008001339478

 

PARTIES

Complainant is Mutual of Omaha Insurance Company (“Complainant”), represented by Anthony D. Scioli, of Kutak Rock LLP, Nebraska, USA.  Respondent is WebDomains.TV (“Respondent”), Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wildkingdom.tv>, registered with Enom, Inc.

 

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.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 5, 2010.

 

On August 6, 2010, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <wildkingdom.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 August 10, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 30, 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@wildkingdom.tv by e-mail.  Also on August 10, 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 September 15, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 (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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <wildkingdom.tv> domain name is identical to Complainant’s WILD KINGDOM mark.

 

2.      Respondent does not have any rights or legitimate interests in the <wildkingdom.tv> domain name.

 

3.      Respondent registered and used the <wildkingdom.tv> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Mutual of Omaha Insurance Company, has produced the television program WILD KINGDOM since 1963, which is broadcast both domestically and internationally and currently shows on the Animal Planet Cable Network.  Complainant owns multiple trademark registrations for the WILD KINGDOM and related marks with the United States Patent and Trademark Office (“USPTO”) and the Canadian Intellectual Property Office (“CIPO”):

 

USPTO

WILD KINGDOM      Reg. No. 954,229        issued February 27, 1973;

WILD KINGDOM      Reg. No. 2,866,922     issued July 27, 2004;

WILD KINGDOM      Reg. No. 2,891,341     issued October 5, 2004;

WILD KINGDOM      Reg. No. 2,908,519     issued December 7, 2004;

WILD KINGDOM      Reg. No. 3,333,362     issued November 13, 2007; &

 

CIPO

MUTUAL OF OMAHA’S WILD KINGDOM    TMA236,814   issued October 31, 2008.

 

Respondent, WebDomains.TV, registered the <wildkingdom.tv> domain name on June 3, 2007.  The disputed domain name resolves to a website that hosts pay-per-click links to websites about animals and other unrelated content.

 

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."

 

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.

 

Identical and/or Confusingly Similar

 

Complainant owns multiple trademark registrations for the WILD KINGDOM and related marks with the USPTO and the CIPO.  The Panel finds that trademark registrations with the USPTO and the CIPO are sufficient to establish Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i).  See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).

 

Complainant alleges that Respondent’s <wildkingdom.tv> domain name is identical to Complainant’s WILD KINGDOM mark as the only differences between the two are the elimination of the space between the terms of Complainant’s mark and the affixation of the country code top-level domain (“ccTLD”) “.tv.”  The Panel finds that neither the elimination of the space nor the addition of the ccTLD has any bearing on a Policy           ¶ 4(a)(i) analysis and does not prevent the disputed domain name from being identical to Complainant’s mark.  See Clairol Inc. v. Fux, DTV2001-0006 (WIPO May 7, 2001) (finding that the domain name <clairol.tv> is identical to the complainant’s CLAIROL marks); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).  Therefore, the Panel finds that Respondent’s <wildkingdom.tv> domain name is identical to Complainant’s WILD KINGDOM mark according to Policy ¶ 4(a)(i).

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Policy ¶ 4(a)(ii) requires that Complainant put forth a prima facie case when alleging Respondent lacks rights and legitimate interests.  After Complainant has satisfied this obligation, the burden transfers to Respondent to demonstrate its rights and legitimate interests in the disputed domain name.  Complainant has presented a sufficient case in this proceeding, but Respondent has not met its burden due to its failure to respond.  As a result, the Panel may infer that Complainant’s allegations are true as stated and that Respondent does not possess rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the domain name.”).  The Panel elects to consider the evidence in record in light of the Policy ¶ 4(c) factors, however, in order to make a complete determination on Respondent’s rights and legitimate interests.

 

Complainant argues that it has neither licensed its WILD KINGDOM mark to Respondent nor authorized its use.  Complainant also asserts that Respondent has no connection to the WILD KINGDOM mark and is not commonly known by the mark or the disputed domain name.  The WHOIS information for the <wildkingdom.tv> domain name lists the registrant as “WebDomain.TV.”  In an email correspondence from Respondent, an email from “Kevin Aus,” Respondent also did not identify itself as the disputed domain name.  The Panel thus finds that Complainant is not commonly known by the <wildkingdom.tv> domain name and does not have rights and legitimate interests under Policy ¶ 4(c)(ii).  See 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); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Complainant contends that Respondent is using the <wildkingdom.tv> domain name to host a series of pay-per-click links that direct Internet users to third-party websites related to animals and other content unrelated to Complainant.  The Panel finds, that this use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶¶ 4(c)(i) or 4(c)(iii).  See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).    

 

Complainant alleges that Respondent offered to sell the <wildkingdom.tv> domain name to Complainant in email correspondence prior to the initiation of this proceeding.  The Panel finds that offering to sell the disputed domain name indicates a lack of rights and legitimate interests on the part of Respondent according to Policy ¶ 4(a)(ii).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)). 

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant asserts that some of the links listed on Respondent’s <wildkingdom.tv> domain name direct Internet users to websites in competition with Complainant because they feature animal related content.  The Panel finds that the presence of such links at the disputed domain name disrupts Complainant’s business and facilitates competition with Complainant, demonstrating bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).

 

Complainant contends that Respondent uses the <wildkingdom.tv> domain name in order to attract Internet users seeking Complainant and expecting to find Complainant at the disputed domain name.  Complainant argues that Respondent attempts to appropriate Complainant’s mark in this way in order to commercially profit when the Internet users arrive at Respondent’s pay-per-click website and click on the links, generating click-through fees.  The Panel finds that Respondent’s efforts to attract and mislead Complainant’s intending customers in order to gain financially reveals bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).    

 

The Panel finds Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <wildkingdom.tv> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  September 23, 2010

 

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