Scripps Networks, LLC v. Domain Tech Enterprises / Domain Administrator
Claim Number: FA1111001415133
Complainant is Scripps Networks, LLC (“Complainant”), represented by Ryan C. Compton of DLA Piper LLP (US), Washington, D.C., USA. Respondent is Domain Tech Enterprises / Domain Administrator (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hgtvfrontdoor.com>, registered with Power Brand Center Corp.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 10, 2011; the National Arbitration Forum received payment on November 16, 2011.
On November 18, 2011, Power Brand Center Corp. confirmed by e-mail to the National Arbitration Forum that the <hgtvfrontdoor.com> domain name is registered with Power Brand Center Corp. and that Respondent is the current registrant of the name. Power Brand Center Corp. has verified that Respondent is bound by the Power Brand Center Corp. 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 November 23, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 13, 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@hgtvfrontdoor.com. Also on November 23, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 December 19, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <hgtvfrontdoor.com> domain name is confusingly similar to Complainant’s HGTV mark.
2. Respondent does not have any rights or legitimate interests in the <hgtvfrontdoor.com> domain name.
3. Respondent registered and used the <hgtvfrontdoor.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Scripps Networks, LLC, operates a television network under the HGTV mark. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office ("USPTO") for the HGTV and Design (e.g., Reg. No. 1,954,686 registered February 6, 1995) and HGTV marks (e.g., Reg. No. 3,158,828 registered October 17, 2006). Complainant uses the term “frontdoor” for its online real estate information services, but does not currently own a trademark registration for this mark.
Respondent, Domain Tech Enterprises / Domain Administrator, registered the <hgtvfrontdoor.com> domain name on March 1, 2009. Respondent’s domain name resolves to a pay-per-click website featuring various third-party links to unrelated and competing websites.
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 claims that it has legitimate trademark rights in its HGTV marks and the term “frontdoor.” In support of this contention, Complainant supplies its various trademark registrations with the USPTO for its HGTV and Design (e.g., Reg. No. 1,954,686 registered February 6, 1995) and HGTV marks (e.g., Reg. No. 3,158,828 registered October 17, 2006). However, Complainant does not own a valid trademark registration with the any trademark authorities for the term “frontdoor,” and Complainant does not specify any further rights in that mark, other than to say that it has used it since 2007. Therefore, the Panel chooses to proceed in this Complaint with Complainant establishing rights in the HGTV mark under Policy ¶ 4(a)(i). 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 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).
Complainant contends that the <hgtvfrontdoor.com> domain name is confusingly similar to Complainant’s HGTV mark. Complainant notes that the domain name contains the entire HGTV mark while also adding the term “frontdoor,” which Complainant claims to have used since 2007 in connection with online real estate services. The Panel finds that the combination of Complainant’s registered mark and a generic and descriptive term that is used by Complainant, as well as the added generic top-level domain (“gTLD”) “.com,” does not remove the domain name from being confusingly similar to the HGTV mark. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Therefore, the Panel finds that Respondent’s <hgtvfrontdoor.com> domain name is confusingly similar to Complainant’s HGTV mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied the requirements under Policy ¶ 4(a)(i).
Complainant has contended that Respondent does not have any rights or legitimate interests in the <hgtvfrontdoor.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). 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).
Complainant asserts that it has not granted Respondent permission to use its HGTV mark and that Respondent is not commonly known as the <hgtvfrontdoor.com> domain name. The WHOIS information for the disputed domain name lists the registrant as “Domain Tech Enterprises / Domain Administrator,” which does not indicate that Respondent is commonly known as the disputed domain name. Respondent has not produced any evidence to show that it is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under 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 IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant submits evidence to show that Respondent’s disputed domain name resolves to a commercial links directory website that contains third-party links to competing and unrelated entities. Such links appear under headings such as “Bank of America,” “View Foreclosure Listings,” “HUD Homes - $10,000,” among others. Complainant notes that under its <frontdoor.com> domain name it provides online real estate services, thus making the links relating to real estate competing links. The Panel agrees with Complainant and finds that Respondent is not making 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 Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
As discussed above, Respondent’s domain name resolves to a website that features many third-party links to companies offering similar real estate services. Previous panels have determined that such use effectively disrupts Complainant’s business and is evidence of bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors). This Panel finds accordingly.
Further, Complainant contends that Respondent receives commercial gain through its use of the confusingly similar domain name by collecting click-through fees each time an Internet users clicks on one of the displayed links. Complainant alleges that Respondent is able to do this by creating confusion as to Complainant’s affiliation with the website. The Panel agrees and finds that Respondent’s use of the domain name as a commercial links directory is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); 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)).
Lastly, Complainant asserts that Respondent had actual and/or constructive notice of Complainant and its rights in the mark prior to registration of the domain name. Complainant contends that “the facts show that Respondent knew of Complainant and its famous [marks] at the time it registered the Domain Name…” Further, Complainant notes that the domain name contains two marks that it uses extensively. Although constructive knowledge has generally not been held sufficient to support a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hgtvfrontdoor.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 30, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page