national arbitration forum

 

DECISION

 

Public Broadcasting Service v. Jt Enterprises

Claim Number: FA1206001448717

 

PARTIES

Complainant is Public Broadcasting Service (“Complainant”), represented by Darlene R. Seymour of Continental Enteprises, Indiana, USA.  Respondent is Jt Enterprises (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <pbsgamesforkids.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 14, 2012; the National Arbitration Forum received payment on June 14, 2012.

 

On June 14, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <pbsgamesforkids.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 June 15, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 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@pbsgamesforkids.com.  Also on June 15, 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 July 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

    1. Complainant, Public Broadcasting Service, is a nonprofit corporation founded in 1969, whose members are most of America’s public television stations.
    2. Complainant provides television programming geared toward children and also offers online games and activities through its <pbskids.org> domain name.
    3. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its PBS (e.g., Reg. No. 1,561,651 registered October 17, 1989) and PBS KIDS marks (e.g., Reg. No. 2,306,930 registered January 11, 2000).
    4. Respondent, Jt Enterprises, registered the <pbsgamesforkids.com> domain name on December 23, 2010.
    5. Respondent’s <pbsgamesforkids.com> domain name is confusingly similar to Complainant’s PBS and PBS KIDS marks.
    6. Respondent is not and has never been known as PBS or “PBS Games for Kids.” 

                                          i.    The WHOIS information identifies “Jt Enterprises” as the domain name registrant.

    1. Respondent is using the disputed domain name in a manner that does not provide it with rights or legitimate interests in the disputed domain name.

                                          i.    Respondent’s disputed domain name resolves to a website that displays third-party links to other websites.

    1. Respondent has registered and is using the disputed domain name in bad faith by creating a likelihood that consumers will be confused as to the affiliation of the disputed domain name with Complainant.

 

B. Respondent

Respondent did not submit a Response.

 

FINDINGS

For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.

 

DISCUSSION

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."

 

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.

 

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.”).

 

Identical and/or Confusingly Similar

 

Complainant contends that it has rights in the PBS and PBS KIDS marks under Policy ¶ 4(a)(i).  Complainant provides the Panel with evidence of trademark registrations with the USPTO for the PBS (e.g., Reg. No. 1,561,651 registered October 17, 1989) and PBS KIDS marks (e.g., Reg. No. 2,306,930 registered January 11, 2000).  Complainant’s trademark registrations with the USPTO are sufficient for it to establish rights in the PBS and PBS KIDS marks under Policy ¶ 4(a)(i).  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).

 

Further, Complainant contends that the <pbsgamesforkids.com> domain name is confusingly similar to Complainant’s PBS and PBS KIDS marks.  The disputed domain name contains the PBS KIDS mark entirely, absent the space between the terms, while adding the descriptive term “games” and the generic term “for,” as well as the generic top-level domain (“gTLD”) “.com.”  The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s PBS KIDS mark under Policy ¶ 4(a)(i).  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 Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).

 

Complainant has proven this element.

 

Rights or Legitimate Interests

 

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.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant argues that Respondent is not, and has not been, known as PBS or “PBS Games for Kids.”  Further, Complainant asserts that the WHOIS information does not provide support for Respondent being commonly known by the disputed domain name where the registrant is identified as “Jt Enterprises.”  The Panel agrees and finds that Respondent is not commonly known by the disputed domain name under 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).

 

Further, Complainant argues that Respondent is “only using the domain name to link to other websites.”  Complainant argues that “failure to use the disputed Domain is not a use in connection with 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).”  Complainant’s screenshot of the resolving website shows that Respondent’s website features many hyperlinks to children’s games online.  The Panel finds that Respondent’s use of the disputed domain name is not 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 United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors.  The Panel finds this to be 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).”).

 

Complainant has proven this element.

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent has registered and is using the disputed domain name in bad faith by creating a likelihood that consumers will be confused as to the affiliation of the disputed domain name with Complainant.  Complainant notes that Respondent has a “complete lack of connection” to the PBS name and mark and that Respondent’s intent to trade off of Complainant’s goodwill is present in this case.  Complainant further argues that Respondent has set up its domain name and resolving website to attract attention to the resolving website for commercial gain by using Complainant’s marks.  The Panel finds that Respondent has registered and is using the <pbsgamesforkids.com> domain name in bad faith under Policy ¶ 4(b)(iv).  See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).

 

Complainant has proven this element.

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is ORDERED that the <pbsgamesforkids.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  July 13, 2012

 

 

 

 

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