Cable News Network, Inc. f/k/a Cable News Network, LP, LLLP v. Guowei Hai Gui
Claim Number: FA1201001426475
Complainant is Cable News Network, Inc. f/k/a Cable News Network, LP, LLLP (“Complainant”), represented by Brian J. Winterfeldt of Steptoe & Johnson LLP, Washington D.C., USA. Respondent is Guowei Hai Gui (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cnnespañol.com>, having a PUNYCODE translation of <xn--cnnespaol-r6a.com>, registered with Moniker Online Services, LLC.
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 January 25, 2012; the National Arbitration Forum received payment on January 25, 2012.
On January 27, 2012, Moniker Online Services, LLC confirmed by e-mail to the National Arbitration Forum that the <cnnespañol.com> domain name, having a PUNYCODE translation of <xn--cnnespaol-r6a.com>, is registered with Moniker Online Services, LLC and that Respondent is the current registrant of the name. Moniker Online Services, LLC has verified that Respondent is bound by the Moniker Online Services, LLC 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 February 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 2012 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@xn—cnnespaol-r6a.com. Also on February 3, 2012, 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 March 1, 2012, 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 <cnnespañol.com> domain name, having a PUNYCODE translation of <xn--cnnespaol-r6a.com>, is confusingly similar to Complainant’s CNN mark.
2. Respondent does not have any rights or legitimate interests in the <cnnespañol.com> domain name, having a PUNYCODE translation of <xn--cnnespaol-r6a.com>.
3. Respondent registered and used the <cnnespañol.com> domain name, having a PUNYCODE translation of <xn--cnnespaol-r6a.com>, in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant holds multiple trademark registrations for its CNN mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,597,839 registered May 22, 1990) and with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 761,526 registered August 14, 2005). Complainant uses its CNN mark to identify its news and information services.
Respondent registered the <cnnespañol.com> domain name, having a PUNYCODE translation of <xn--cnnespaol-r6a.com>, on June 7, 2004. The disputed domain name resolves to a website hosting hyperlinks to third parties unrelated to Complainant.
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.
Preliminary Issue: Internationalized Domain Name
The domain name in dispute, <cnnespañol.com>, is an internationalized domain name (“IDN”) with the PUNYCODE translation of <xn--cnnespaol-r6a.com>. An IDN is a domain name that contains non-traditional characters, such as letters with diacritics or other non-ASCII characters. In order to display characters or symbols in a domain name, the terms of the domain name are encoded into a scheme such as PUNYCODE. For Complainant to display the <cnnespañol.com> domain name properly, it first had to encode it into the <xn--cnnespaol-r6a.com> domain name.
In the past, panels have found IDNs and their PUNYCODE translations to be equivalent. See Damien Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding an internationalized domain name, <têtu.com>, and its PUNYCODE translation, <xn--ttu-fma.com>, to be one and the same under the Policy); see also Württembergische Versicherung AG v. Emir Ulu, D2006-0278 (WIPO May 4, 2006) (finding that the <xn--wrttembergische-versicherung-16c.com> should be considered as equivalent to the <württembergische-versicherung.com> domain name, based on previous panel decisions recognizing the relevance of I-nav software for translating German letters such as “ä” or “ü” into codes such as <xn--[name]-16c> and similar); see also Fujitsu Ltd. v. tete and Lianqiu Li, D2006-0885 (WIPO Oct. 12, 2006) (finding the <xn--zqsv0e014e.com> domain name to be an exact reproduction of the complainant’s Chinese trademark in a domain name). This Panel finds that the <cnnespañol.com> domain name is the same as its PUNYCODE translation, <xn--cnnespaol-r6a.com>, for purposes of this proceeding.
Complainant provides the Panel with evidence of its trademark registrations for its CNN mark with the USPTO (e.g., Reg. No. 1,597,839 registered May 22, 1990) and the SAIC (e.g., Reg. No. 761,526 registered August 14, 2005). As Respondent registered the <cnnespañol.com> domain name, having a PUNYCODE translation of <xn--cnnespaol-r6a.com>, on June 7, 2004, the Panel determines that Complainant’s USPTO trademark registration is the best evidence of Complainant’s rights for this case. Based on Complainant’s USPTO trademark registration, the Panel holds that Complainant owns rights in its CNN mark under Policy ¶ 4(a)(i), regardless of the fact that Complainant did not hold a trademark registration in China, where Respondent resides, at the time of Respondent’s registration of the domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks 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 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 claims that Respondent’s <cnnespañol.com> domain name, having a PUNYCODE translation of <xn--cnnespaol-r6a.com>, is confusingly similar to Complainant’s CNN mark. The Panel notes that the only differences between the disputed domain name and Complainant’s mark are the additions of the Spanish term “español” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent’s additions to Complainant’s mark fail to adequately distinguish the disputed domain name from the mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); 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 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.”). Thus, the Panel ultimately concludes that Respondent’s <cnnespañol.com> domain name, having a PUNYCODE translation of <xn--cnnespaol-r6a.com>, is confusingly similar to Complainant’s CNN mark pursuant to Policy ¶ 4(a)(i).
The Panel deems Policy ¶ 4(a)(i) satisfied.
Complainant alleges that Respondent does not have any rights or legitimate interests in the <cnnespañol.com> domain name, having a PUNYCODE translation of <xn--cnnespaol-r6a.com>. The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds Complainant made a sufficient prima facie case. Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). 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 contends that Respondent is not and has not been commonly known by the <cnnespañol.com> domain name, having a PUNYCODE translation of <xn--cnnespaol-r6a.com>. Complainant states that it did not authorize Respondent to use Complainant’s CNN mark. Complainant also claims that the WHOIS information, which identifies “Guowei Hai Gui” as the registrant of the disputed domain name, indicates that Respondent is not commonly known by the domain name. Respondent did not respond to these contentions. Thus, the Panel must find that Respondent is not commonly known by the disputed domain name for the purposes of Policy ¶ 4(c)(ii). See 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); 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).
Complainant asserts that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <cnnespañol.com> domain name, having a PUNYCODE translation of <xn--cnnespaol-r6a.com>. Complainant alleges that Respondent’s disputed domain name resolves to a parked website that displays monetized hyperlinks to third-party websites. However, the screenshot Complainant provided indicates that the disputed domain name resolves to a website nearly identical to Complainant’s website, except for being in Spanish. On closer examination, the Panel determines that the screen shot provided by Complainant is for the website resolving from the <cnnespanol.com> domain name and not from the disputed domain name. The Panel conducted independent research and found that the <cnnespañol.com> domain name, having a PUNYCODE translation of <xn--cnnespaol-r6a.com>, does resolve to a parked website hosting third-party hyperlinks that appear to be unrelated to Complainant’s news and information business. Consequently, the Panel concludes that Respondent makes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <cnnespañol.com> domain name, having a PUNYCODE translation of <xn--cnnespaol-r6a.com>. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
The Panel deems Policy ¶ 4(a)(ii) satisfied.
Complainant contends that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv) because Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion as to Complainant’s affiliation. Complainant argues that Respondent’s <cnnespañol.com> domain name, having a PUNYCODE translation of <xn--cnnespaol-r6a.com>, resolves to a website that hosts third-party hyperlinks. As noted above, the Panel finds that Complainant is accurate in its description of the resolving website and that the featured hyperlinks resolve to third-party websites unrelated to Complainant. Complainant further contends that Respondent receives compensation for the unrelated hyperlinks and that it commercially benefits Respondent to increase traffic to the resolving website by creating confusion as to Complainant’s affiliation with the disputed domain name. The Panel agrees with Complainant and holds that Respondent registered and uses the <cnnespañol.com> domain name, having a PUNYCODE translation of <xn--cnnespaol-r6a.com>, in bad faith pursuant to Policy ¶ 4(b)(iv). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s CNN mark because Complainant’s CNN mark is famous throughout the world. Complainant further contends that Complainant holds trademark registrations throughout the world for its CNN mark, which implies that Complainant believes Respondent had constructive knowledge of Complainant’s CNN mark. While constructive knowledge is not sufficient for a finding of bad faith registration, a finding of actual knowledge can be sufficient. See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name"). Based on Complainant’s widespread use of the CNN mark, the Panel infers that Respondent had actual knowledge of Complainant’s mark, evidencing Respondent’s bad faith registration of the disputed domain name under Policy ¶ 4(a)(iii).
The Panel deems Policy ¶ 4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cnnespañol.com> (encoded as <xn—cnnespaol-r6a.com>) domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 13, 2012
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