ABS-CBN International v. Francisco Cortez
Claim Number: FA1106001392691
Complainant is ABS-CBN International (“Complainant”), represented by S. Roxanne Edwards of Baker & McKenzie LLP, Texas, USA. Respondent is Francisco Cortez (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tfcnow.biz>, <tfcnow.net>, and <tfcnow.co>, registered with eNom, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 8, 2011; the National Arbitration Forum received payment on June 8, 2011.
On June 10, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <tfcnow.biz>, <tfcnow.net>, and <tfcnow.co> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, 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 June 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 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@tfcnow.biz, postmaster@tfcnow.net, postmaster@tfcnow.co. Also on June 13, 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 July 11, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <tfcnow.biz>, <tfcnow.net>, and <tfcnow.co> domain names are confusingly similar to Complainant’s TFC mark.
2. Respondent does not have any rights or legitimate interests in the <tfcnow.biz>, <tfcnow.net>, and <tfcnow.co> domain names.
3. Respondent registered and used the <tfcnow.biz>, <tfcnow.net>, and <tfcnow.co> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, ABS-CBN International, is the California-based affiliate of a large media conglomerate based in the Philippines. Complainant owns multiple trademark registrations for its TFC mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,598,535 issued March 31, 2009). Complainant utilizes the mark as its station name in the television broadcasting industry.
Respondent, Francisco Cortez, registered the <tfcnow.biz>, <tfcnow.net>, and <tfcnow.co> domain names on March 30, 2011, January 3, 2010, and March 18, 2011, respectively. The disputed domain names resolve to a site offering programs from Complainant’s network without Complainant’s authorization.
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.
Under Policy ¶ 4(a)(i), Complainant bears the burden of proving it has rights in the TFC mark. Complainant asserts it has established its rights in the mark by registering the mark with a federal trademark authority, the USPTO (e.g., Reg. No. 3,598,535 issued March 31, 2009). The Panel finds Complainant’s submissions are sufficient in establishing that its has duly registered the mark with the USPTO and, therefore, has established its rights in the mark under 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 Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) 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 maintains that Respondent’s disputed domain names are confusingly similar to its TFC mark. Each of the three domain names incorporate the entire mark and the generic term “now.” The disputed domain names each separately include the top-level domains (“TLD”) “.co,” “.biz,” and “.net.” The Panel finds adding a generic term and the corresponding TLD to be insufficient to remove the disputed domain names from the realm of confusing similarity. See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the <theotheraol.com> and <theotheraol.net> domain names were confusingly similar to the AOL mark, as the addition of common terms to a mark does not distinguish the domain names from the mark); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”); see also Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (finding that the domain name <continentalairlines.biz> is identical to the complainant’s CONTINENTAL AIRLINES mark); see also Europcar Int’l SA v. New Media Research in Romania SRL, FA 123906 (Nat. Arb. Forum Nov. 4, 2002) (“Respondent’s <europcar.ro> domain name is identical to Complainant’s EUROPCAR mark. Respondent’s domain name incorporates Complainant’s mark in its entirety, and only deviates with the addition of the Romanian country-code of “.ro.” Because top-level domains are required of domain name registrants, their addition has been determined to be inconsequential when conducting an identical analysis under Policy ¶ 4(a)(i).”). Therefore, Respondent’s <tfcnow.biz>, <tfcnow.net>, and <tfcnow.co> domain names are confusingly similar to Complainant’s TFC mark under Policy ¶ 4(a)(i).
Policy ¶ 4(a)(i) has been established.
Respondent bears the burden of proving it has rights or legitimate interests in the disputed domain names because the Panel finds Complainant has met its initial burden of proof by making a prima facie showing indicating Respondent’s lack of rights or legitimate interests in the disputed domain names. See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”). Respondent has not only failed to rebut Complainant’s prima facie showing but has failed to file a response at all, allowing the Panel to assume it lacks rights or legitimate interests in the disputed domain names. See 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.”). Nonetheless, the Panel will still examine the record in its entirety to make a determination regarding Respondent’s rights or legitimate interests in the disputed domain names according to the factors enumerated in Policy ¶ 4(c).
Respondent may show it has rights or legitimate interests in the disputed domain names if it is found to be commonly known them under Policy ¶ 4(c)(ii). Complainant asserts Respondent is not commonly known by the disputed domain names. Respondent has offered no evidence to support a finding to the contrary. The WHOIS information identifies the registrant of the disputed domain names as “Francisco Cortez,” which the Panel finds does not indicate an affiliation between Respondent and the disputed domain names. Thus, the Panel finds Respondent is not commonly known by the disputed domain names pursuant to 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).
Respondent may also prove its rights or legitimate interests in the disputed domain names if it is able to sufficiently show that it is engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii), respectively. Complainant maintains Respondent has met the standards for neither requirement indicating a lack of rights or legitimate interests under Policy ¶ 4(a)(ii). Respondent’s disputed domain names resolve to a site offering copied versions of Complainant’s legitimate television programs. The Panel finds Respondent is not engaging in a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(i) and 4(c)(iii) when it offers Complainant’s own goods and services from the site essentially competing with Complainant’s business. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel finds that Respondent’s operation of a website virtually identical to Complainant’s website to offer competing travel reservation services does not fall within the parameters of a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use).
Policy ¶ 4(a)(ii) has been established.
Complainant contends Respondent’s disputed domain names disrupt its business. Respondent’s disputed domain names resolve to a site offering Complainant’s own television programs. Internet users may arrive at Respondent’s site and utilize its services rather than Complainant’s. The Panel finds that this use is competing with Complainant’s own legitimate offerings and as such, disrupts its business under Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant also contends that Respondent registered and used the disputed domain name in bad faith. Respondent’s disputed domain names resolve to a site offering Complainant’s own television programs. Complainant asserts that Respondent does not have its authorization to use its programming and that Respondent is attempting to profit by creating confusion as to Complainant’s affiliation with the disputed domain names. Therefore, the Panel finds that Respondent’s offer of Complainant’s services using the disputed domain names constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO May 1, 2002) (“[U]se of domain names to sell Complainant’s goods and services without Complainant's authority . . . is bad faith use of a confusingly similar domain name.”); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant).
Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tfcnow.biz>, <tfcnow.net>, and <tfcnow.co> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: July 11, 2011
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