Time Warner
Entertainment Company LP v. CCNet Resource, Inc.
Claim
Number: FA0301000142135
PARTIES
Complainant is
Time Warner Entertainment Company LP, New York, NY (“Complainant”)
represented by J. Andrew Coombs, of J. Andrew Coombs, A Professional
Corporation. Respondent is CCNet Resource, Inc., Ashland, VA
(“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The
domain name at issue is <carolinerheashow.com>, registered with Melbourne
It, Ltd. d/b/a Internet Names Worldwide.
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 (the "Forum")
electronically on January 17, 2003; the Forum received a hard copy of the
Complaint on January 17, 2003.
On
January 20, 2003, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed
by e-mail to the Forum that the domain name <carolinerheashow.com>
is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that
Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a
Internet Names Worldwide has verified that Respondent is bound by the Melbourne
It, Ltd. d/b/a Internet Names Worldwide 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
January 20, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 10, 2003 by which Respondent could file a Response to
the Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@carolinerheashow.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
February 17, 2003, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr.,
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 for Uniform Domain Name Dispute Resolution Policy
(the "Rules") "to employ reasonably available means calculated
to achieve actual notice to Respondent."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN 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 <carolinerheashow.com>
domain name is confusingly similar to Complainant’s THE CAROLINE RHEA SHOW
mark.
2. Respondent does not have any rights or legitimate
interests in the <carolinerheashow.com> domain name.
3. Respondent registered and used the <carolinerheashow.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant’s
television series “The Caroline Rhea Show” (the “Show”) is a daytime program
that developed from comedienne Caroline Rhea’s relationship with Rosie
O’Donnell and Ms. Rhea’s duties as a substitute host of “The Rosie O’Donnell
Show.” The Show began during the 2002-2003 television season and currently airs
throughout the United States and Canada in more than 150 local broadcast
markets. Complainant has promoted the Show extensively since July 2001.
Complainant has a pending trademark application with the United States Patent
and Trademark Office (“USPTO”) for EVERYDAY WITH CAROLINE RHEA. Complainant
also operates a website at <carolinerhea.com>, which automatically
redirects Internet traffic to <caroline.warnerbros.com> where Internet
users may access Complainant’s products and services.
Respondent
registered the <carolinerheashow.com> domain name on March 16,
2002. Respondent is using the disputed domain name to redirect Internet traffic
to an adult entertainment website, <adult.ccnetresource.com>.
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.
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 has
established rights with the USPTO for the EVERYDAY WITH CAROLINE RHEA mark
through pending registration (filing date February 22, 2002). Respondent’s <carolinerheashow.com>
domain name is confusingly similar to Complainant’s mark because the disputed
domain name merely removes the first two words of the mark and adds the generic
term “show” at the end. In this case, the dominant element of Complainant’s
mark is CAROLINE RHEA. The use of the dominant element of the mark does not
distinguish the disputed domain name from Complainant’s mark, which has pending
registration with the USPTO. See
Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the
<westfieldshopping.com> domain name confusingly similar because the
WESTFIELD mark was the dominant element); see also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000)
(finding that “Respondent does not by adding the common descriptive or generic
terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different
marks in which it has rights or legitimate interests, nor does it alter the
underlying PG&E mark held by Complainant”).
Complainant has
also established rights in THE CAROLINE RHEA SHOW mark through continuous use
in commerce since July 2001. It is not necessary for a Complainant to register
a trademark with a trademark authority. See McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4
(2000) (The ICANN dispute resolution policy is “broad in scope” in that “the
reference to a trademark or service mark ‘in which the complainant has rights’
means that ownership of a registered mark is not required–unregistered or
common law trademark or service mark rights will suffice” to support a domain
name Complaint under the Policy); see also British Broadcasting Corp. v.
Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not
distinguish between registered and unregistered trademarks and service marks in
the context of abusive registration of domain names” and applying the Policy to
“unregistered trademarks and service marks”).
Respondent’s <carolinerheashow.com>
domain name is confusingly similar to Complainant’s mark because the domain
name simply removes the word “The” from the beginning of the mark and removes
the spaces between the words of Complainant’s mark. The deletion of the word
“the” and the spaces between the words are not sufficiently distinguishing
characteristics pursuant to Policy ¶ 4(a)(i). See WestJet Air Center, Inc. v. West Jets LLC, FA 96882 (Nat. Arb.
Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is
confusingly similar to Complainant’s mark, where Complainant holds the WEST JET
AIR CENTER mark); see also Maple
Leaf Sports & Entertainment Ltd. v. Toronto Maple Leafs!, D2000-1510 (Jan.
24, 2001) (finding that the domain name <leafs.com> is confusingly
similar to Complainant’s marks, where Complainant holds many trademarks that
contain the term “LEAFS”); see also Hannover Ruckversicherungs-AG v.
Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding
<hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
not submitted a Response in this proceeding. Therefore, the Panel may accept
all reasonable allegations and inferences in the Complaint as true. See
Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat.
Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows
all reasonable inferences of fact in the allegations of Complainant 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”).
Furthermore,
based on Respondent’s failure to respond, the Panel may presume that Respondent
lacks any rights or legitimate interests in the disputed domain name. See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that once Complainant asserts that Respondent has no rights or legitimate
interests with respect to the domain, the burden shifts to Respondent to
provide credible evidence that substantiates its claim of rights and legitimate
interests in the domain name); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000)
(finding that Respondent has no rights or legitimate interests in the domain
name because the Respondent never submitted a response nor provided the Panel
with evidence to suggest otherwise).
Respondent is
using the <carolinerheashow.com> domain name to divert Internet
traffic to <adult.ccnetresource.com>, a website that features adult entertainment.
The Panel may presume that Respondent's sole purpose
in selecting the domain names was to cause confusion with Complainant's website
and marks. This is neither a use in connection with a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech.,
Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s
commercial use of the domain name to confuse and divert Internet traffic is not
a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9,
2000) (finding no legitimate use when Respondent was diverting consumers to its
own website by using Complainant’s trademarks).
Moreover,
Respondent has linked the disputed domain name to websites that feature
pornography. Cases have consistently held that diverting Internet users to
pornographic websites is neither a bona fide offering of goods or services
pursuant to Policy ¶ 4 (c)(i), nor a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See
Nat’l Football League Prop., Inc. v. One Sex Entm’t Co., D2000-0118 (WIPO
Apr. 17, 2000) (finding that the Respondent had no rights or legitimate
interests in the domain names <chargergirls.com> and
<chargergirls.net> where the Respondent linked these domain names to its
pornographic website); see also
Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5,
2001) (finding that infringing on another's well-known mark to provide a link
to a pornographic site is not a legitimate or fair use).
Respondent has
not come forward with proof and there is no evidence in the record to establish
that Respondent is commonly known as CAROLINE RHEA SHOW or <carolinerheashow.com>.
Therefore, Respondent has failed to establish that it has rights or legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also Great
S. Wood Pres., Inc. v. TFA Assocs.,
FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not
commonly known by the domain name <greatsouthernwood.com> where
Respondent linked the domain name to <bestoftheweb.com>).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <carolinerheashow.com> domain name to divert Internet
users to <adult.ccnetresource.com>, a website that features adult
entertainment. By linking a confusingly similar domain name to a pornographic
website, Respondent has demonstrated bad faith registration and use pursuant to
Policy ¶ 4(a)(iii). See Brown
& Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use
of another's well-known mark to provide a link to a pornographic site is
evidence of bad faith registration and use); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat.
Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users
to his website for commercial gain and linked his website to pornographic
websites). The Panel may infer that Respondent is making a profit from the
Internet traffic that is diverted to this website. Therefore, Respondent is
using a confusingly similar domain name to create Internet-user confusion for
Respondent’s commercial benefit, which is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA
123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and
used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because
Respondent was using the confusingly similar domain name to attract Internet
users to its commercial website); see also Kmart v. Kahn, FA 127708
(Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its
diversionary use of Complainant's mark when the domain name resolves to
commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)).
Furthermore,
Respondent offered to sell the disputed domain name to complainant in an e-mail
message on December 5, 2002. In addition, Respondent printed “FOR SALE!!!!!” in
the Organization Address column of its registration. Registration of a domain
name primarily for the purpose of selling, renting or transferring it is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad
faith where Respondent offered domain names for sale); see also Am.
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that “general offers to sell the domain name, even if no certain price
is demanded, are evidence of bad faith”).
The Panel thus finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <carolinerheashow.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
February 24, 2003
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