The Travel Channel, L.L.C. v. Mike Sylvan
Claim Number: FA1012001365523
Complainant is The Travel Channel, L.L.C. (“Complainant”), represented by Amy E. Salomon of Arent Fox LLP, Washington D.C., USA. Respondent is Mike Sylvan (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <travelchannel3d.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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 30, 2010; the National Arbitration Forum received payment on December 30, 2010.
On Dec 30, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <travelchannel3d.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 4, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 24, 2011 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@travelchannel3d.com. Also on January 4, 2011, 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 January 25, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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:
1. Respondent’s <travelchannel3d.com> domain name is confusingly similar to Complainant’s TRAVEL CHANNEL mark.
2. Respondent does not have any rights or legitimate interests in the <travelchannel3d.com> domain name.
3. Respondent registered and used the <travelchannel3d.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Travel Channel LLC, provides travel-related television programs and other travel media across the United States. Complainant has been operating in the travel field since 1986. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) ( e.g., Reg. No. 1,982,443 issued June 25, 1996) in its TRAVEL CHANNEL mark.
Respondent, Mike Sylvan, registered the disputed domain name on April 1, 2010. The <travelchannel3d.com> domain name resolves to an inactive site. The disputed domain did formerly resolve to a site offering third party links to other websites relating to Complainant’s own business.
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 that it has established its rights in the mark via registration with a federal trademark authority, the USPTO. Previous panels have found that registration with a federal trademark authority establishes ones rights in a given mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Thus, the Panel finds that Complainant has established its rights in the mark under Policy ¶ 4(a)(i), via registration with the USPTO.
Complainant also asserts that the <travelchannel3d.com> domain name is confusingly similar to its own TRAVEL CHANNEL mark. The disputed domain name incorporates the entire mark while removing a space, adding the generic term “3d,” and adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent has failed to sufficiently differentiated its disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i) by removing a space, and adding a generic term and gTLD. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel finds that the requirements of Policy ¶ 4(a)(i) have been met.
The Panel finds that Complainant has met its burden of proof by making a prima facie case against Respondent. Previous panels have found that the burden shifts to Respondent to prove that it has rights or legitimate interests in the disputed domain name after Complainant has met is prima facie burden. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). When a Respondent fails to file an answer to the initial complainant the Panel may assume that Respondent lacks any rights or 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.”). However, the Panel will still examine the entire record to make a final determination of Respondents rights or legitimate interests in the disputed domain or lack thereof according to the factors listed in Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the <travelchannel3d.com> domain name. Respondent has offered no evidence to support that notion that it is commonly known by the disputed domain name. The WHOIS information in the record identifies registrant as “Mike Sylvan.” Thus the Panel finds that Respondent is not commonly known by the <travelchannel3d.com> domain name according to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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 also contends that Respondent is not making a bona fide offering of goods or services or legitimate noncommercial or fair use of the <travelchannel3d.com> domain name. Currently, Respondent’s disputed domain name resolves to an inactive site. Previous panels have found that failure to make an active use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Therefore, the Panel find that Respondent is not making a bona fide offering of goods or services or engaging in a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i), 4(c)(iii).
Complainant asserts that Respondent’s offer to sell the inactive domain name to it for $10,000 is further evidence of Respondent’s lack of rights or legitimate interests in the <travelchannel3d.com> domain name. The Panel finds that Respondents offer to sell the disputed domain name for far more than reasonable out-of-pocket cost does support the contention that it lacks rights or legitimate interests in the mark pursuant 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 Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”).
The Panel finds that the requirements of Policy ¶ 4(a)(ii) have been met.
Complainant contends that Respondent’s offer to sell the <travelchannel3d.com> domain name for $10,000 is evidence of bad faith registration and use under Policy ¶ 4(b)(i). Previous panels have found that offering a domain name for sale is evidence of bad faith registration and use on the part of the offeror. See Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith). Therefore, the Panel finds that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(i).
Complainant asserts that Respondent’s failure to make an active use of the <travelchannel3d.com> domain name constitutes bad faith registration and use. Previous panels have found that failure to make an active use of a domain name is, by itself, evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith). Therefore, the Panel finds that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii) by failing to make an active use of the site.
The Panel finds that the requirements of Policy ¶ 4(a)(iii) have been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <travelchannel3d.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: February 4, 2011
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