Public Broadcasting Service v. eLogix Uruguay
Claim Number: FA1103001377341
Complainant is Public Broadcasting Service (“Complainant”), represented by Marc Mangum, Virginia, USA. Respondent is eLogix Uruguay (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pbskidsgames.us>, registered with GoDaddy.com, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 11, 2011; the Forum received a hard copy of the Complaint on March 11, 2011.
On March 14, 2011, GoDaddy.com, Inc. confirmed by e-mail to the Forum that the <pbskidsgames.us> domain name is registered with GoDaddy.com, Inc. and that 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 the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On March 25, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 28, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 18, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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 <pbskidsgames.us> domain name is confusingly similar to Complainant’s PBS KIDS mark.
2. Respondent does not have any rights or legitimate interests in the <pbskidsgames.us> domain name.
3. Respondent registered and used the <pbskidsgames.us> domain name 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 nearly all of the nation’s public television stations. Complainant acquires and distributes noncommercial television and video programming via various media on behalf of its member stations and also provides a wide range of related products and services for the advancement of education, culture, and citizenship. Complainant uses its PBS KIDS mark to promote a range of services and games it provides both through its television media and through online sites. Complainant holds multiple trademark registrations for the PBS KIDS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,559,131 issued April 9, 2002).
Respondent, eLogix Uruguay, registered the disputed domain name on May 26, 2009. The disputed domain name resolves to a website which purports to offer games, but Respondent is using games created by other parties, including Complainant. The resolving website also features numerous advertisements from which Respondent is likely profiting.
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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant contends it has rights in its PBS KIDS mark based on its registration of the mark with the USPTO (e.g., Reg. No. 2,559,131 issued April 9, 2002). The Panel finds that a valid trademark registration with a federal trademark authority is sufficient evidence of Complainant’s rights in the PBS KIDS mark for the purposes of Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to UDRP ¶ 4(a)(i)). Additionally, the Panel finds that according to Policy ¶ 4(a)(i), it is irrelevant whether Complainant possesses a trademark registration in the country where Respondent resides or operates and that registration of a mark in another jurisdiction is sufficient. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant alleges that Respondent’s <pbskidsgames.us> domain name is confusingly similar to Complainant’s PBS KIDS mark. The disputed domain name omits the space between the terms of Complainant’s mark, adds the descriptive term “games,” and adds the country-code top-level domain (“ccTLD”) “.us.” The Panel finds that spaces are impermissible in a domain name and that a TLD is a required element, Respondent’s alterations in these areas are irrelevant to a Policy ¶ 4(a)(i) analysis. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under UDRP ¶ 4(a)(i). Additionally, the addition of the word “games,” which specifically relates to Complainant’s use of its PBS KIDS mark to offer online games for children, does not help to distinguish the disputed domain name from Complainant’s mark. 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.”). Therefore, the Panel finds that, pursuant to Policy ¶ 4(a)(i), Respondent’s <pbskidsgames.us> domain name is confusingly similar to Complainant’s PBS KIDS mark.
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <pbskidsgames.us> domain name. The burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) when Complainant makes a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent has rights or legitimate interests in the disputed domain name. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also 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 examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
There is no evidence in the record that would allow the Panel to conclude that Respondent owns any service marks or trademarks that reflect the <pbskidsgames.us> domain name. Therefore, the Panel finds that Respondent does not have rights and legitimate interests under Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant states that Respondent is not commonly known by the <pbskidsgames.us> domain name and Complainant has not authorized Respondent to utilize its PBS KIDS mark in any capacity. The Panel finds, upon examination of the WHOIS record, finds that the registrant of the domain name is listed as “eLogix Uruguay.” The Panel can find no possible connection between Respondent and the disputed domain name, either from the WHOIS information or anything else in the record. Therefore, the Panel finds that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(iii). 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 UDRP ¶ 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 UDRP ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv). Respondent’s disputed domain name resolves to a website that purports to offer children’s games. Complainant asserts that the games offered by Respondent are merely “pirated” from other websites, including Complainant’s official websites. Complainant goes on to describe Respondent’s resolving website as containing “a significant number of advertisements on each page.” Complainant presumes that Respondent profits from the sale of advertisements displayed on its website. The Panel finds that Respondent’s use of the <pbskidsgames.us> domain name to offer some content identical to that offered by Complainant and to profit from the sale of advertisements cannot be said to be a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under [UDRP] ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under [UDRP] ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith to disrupt and compete with Complainant’s business. Respondent’s <pbskidsgames.us> domain name diverts Internet users seeking Complainant’s online goods and services to Respondent’s website which features a number of games pirated directly from Complainant’s official websites. The Panel finds that Respondent is acting as a competitor of Complainant when it offers games identical to those offered by Complainant and as such, Respondent has demonstrated bad faith pursuant to Policy ¶ 4(b)(iii). See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that the respondent registered and used the domain name primarily for the purpose of disrupting the business of the complainant by offering personal e-mail accounts under the domain name <openmail.com> which is identical to the complainant’s services under the OPENMAIL mark).
Finally, Complainant argues that Respondent’s registration and use of the disputed domain name is intentionally designed to exploit Internet user confusion for commercial gain. Complainant alleges that the confusingly similar <pbskidsgames.us> domain name capitalizes on Complainant’s goodwill and the PBS KIDS mark by attempting to attract Internet users who intend to visit one of Complainant’s online children’s websites. Once Internet users arrive at Respondent’s website, Respondent offers a number of games, several of which were taken directly from Complainant’s websites. Along with the games, Respondent features a number of advertisements from which Respondent presumably profits. The Panel finds that such behavior by Respondent is a clear instance of 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 UDRP ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
The Panel finds that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pbskidsgames.us> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 19, 2011
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