Fox Broadcasting Company v. Domain Management / Syed Hussain
Claim Number: FA1208001456947
Complainant is Fox Broadcasting Company (“Complainant”), represented by David M. Kelly of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington, D.C., USA. Respondent is Domain Management / Syed Hussain (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <animationdominationhd.com>, registered with Name.com LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 7, 2012; the National Arbitration Forum received payment on August 7, 2012.
On August 7, 2012, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <animationdominationhd.com> domain name is registered with Name.com LLC and that Respondent is the current registrant of the name. Name.com LLC has verified that Respondent is bound by the Name.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 August 8, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 28, 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@animationdominationhd.com. Also on August 8, 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 September 5, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
BACKGROUND FACTS
A. Fox Broadcasting Company
13. Fox Broadcasting Company is a unit of News Corporation, a diversified global media company.
14. Fox Broadcasting Company’s services and products are offered directly and via its affiliated companies that include Fox Filmed Entertainment, Fox Cable Networks, FOX News Channel, Fox Television Stations, Twentieth Century Fox Television, Twentieth Century Fox Home Entertainment, Twentieth Television, and Fox Television Studios (collectively, “Fox”).
15. Fox offers a wide array of television-related services and products. Specifically, Fox owns and operates television stations; owns and operates a television network; produces and distributes television programming for its own network, other networks, and cable channels; owns and operates numerous cable television channels; and distributes content (television programs and movies) via various outlets. These activities are discussed in further detail below.
16. Fox owns and operates broadcast television stations, specifically, 27 full-power stations including stations located in nine of the top ten largest markets (which include New York, Los Angeles, and Chicago).
17. Fox owns and operates the FOX network, which has approximately 200 affiliated stations (including stations owned by Fox) that carry FOX programming in all time periods in which it is offered. The FOX network reaches approximately 99% of all U.S. television households, and is the leading broadcast television network among the demographic category of Adults 18-49.
18. Fox produces its own television programs, as well as television programs for other networks such as ABC Television Network (“ABC”), CBS Broadcasting, Inc. (“CBS”), NBC Television Network (“NBC”), Comedy Partners (“Comedy Central”), TBS Superstation Inc. (“TBS”), USA Network, TNT, E!., AMC, and Showtime.
19. Fox regularly delivers prime-time programming and Saturday late-night programming to its affiliates each week. Fox’s prime-time programming features numerous popular series such as Glee, The Simpsons, Family Guy, Fringe, New Girl, and Raising Hope; reality series such as American Idol and So You Think You Can Dance; and various movies and specials.
20. Fox’s prime-time line-up is enormously popular and well-received. For example, Fox finished the 2010-2011 season at No. 1 in the key adult demographic category of Adults 18-49 for the seventh consecutive year, a feat that has never been achieved in broadcast history. Fox also finished No. 1 among networks in the more targeted demographic categories of Adults 18-34 and Teen.
21. In addition to Fox’s network television offerings, Fox also has a substantial presence on cable television. Fox Cable Networks is one of the media industry’s largest and most diverse programming groups with 43 domestic programming services reaching more than 550,000,000 subscribing television homes. Fox Cable Networks’ channels include FX, National Geographic Channel, Fox Movie Channel, and NatGeo WILD, as well as numerous sports channels.
22. Fox owns a motion picture and television library (the “Fox Library”) consisting of varying rights to several thousand previously released television programs and motion pictures. The television programming in the Fox Library includes current programming as Family Guy, The Simpsons, Bones, and How I Met Your Mother, as well as classic series such as The Mary Tyler Moore Show, M*A*S*H, Hill Street Blues, and Ally McBeal.
23. Fox has for many years extensively promoted its services and products on the Internet via many websites. For example, Fox maintains websites at the domain names FOX.COM and FOXMOVIES.COM.
B. Fox and its Marks ANIMATION DOMINATION
and ANIMATION DOMINATION HD
24. Fox offers a Sunday night programming block featuring animated series under the mark ANIMATION DOMINATION, and has offered such programming under the ANIMATION DOMINATION mark since May 1, 2005. Currently, Fox’s ANIMATION DOMINATION line-up features the popular shows The Simpsons, Napoleon Dynamite, Family Guy, American Dad!, Bob’s Burgers, and The Cleveland Show.
25. Fox’s ANIMATION DOMINATION line-up has had substantial commercial success, and draws many millions of viewers and fans. For example, on January 15, 2012, Fox’s ANIMATION DOMINATION programs The Simpsons drew 15.7 million viewers; Napoleon Dynamite drew 9.5 million viewers; and Family Guy drew 8.5 million viewers. In another example, Fox’s page on the Facebook website for its ANIMATION DOMINATION programming has more than 145,000 fans, and Fox’s pages dedicated to the individual shows in the ANIMATION DOMINATION line-up have tens of millions of fans. Fox’s Facebook pages for its ANIMATION DOMINATION programming and the shows The Simpsons, Family Guy, and American Dad! together have more than 100 million fans.
26. Fox spends significant amounts of money each year to promote and advertise its ANIMATION DOMINATION programming. Fox’s ANIMATION DOMINATION programming has also received substantial publicity over the years. For example, between 2005-2012, Fox’s ANIMATION DOMINATION programming received publicity in various nationwide and/or regional publications (both print and online) such as CNN, The New York Times, the San Francisco Chronicle, Daily Variety, TV Squad, the Chicago Tribune, and the Boston Herald, to name a few.
27. On April 24, 2012, Fox announced its launch of a Saturday night programming block featuring animated series under the mark ANIMATION DOMINATION HD. Fox’s programming under the ANIMATION DOMINATION HD mark will air in the 2012-2013 season.
28. The announcement of Fox’s ANIMATION DOMINATION HD programming generated substantial public interest prior to April 26, 2012 when Respondent registered the Domain Name. Many media outlets reaching significant numbers of people published news stories regarding Fox’s ANIMATION DOMINATION HD programming.
C. Complainant’s Trademark Holdings
29. Complainant owns the following U.S. federal trademark registrations for the ANIMATION DOMINATION mark:
a. U.S. Registration No. 3,973,585, first used May 1, 2005, filed September 29, 2010, issued June 7, 2011, covering services in International Class 41 (entertainment services, namely, provision of ongoing multimedia programs in the field of comedy distributed via various platforms across multiple forms of transmission media; providing on-line entertainment information in the field of comedy).
b. U.S. Registration No. 3,973,586, first used May 1, 2005, filed September 29, 2010, issued June 7, 2011, covering services in International Class 38 (television and cable broadcasting services).
30. Complainant’s rights to the mark ANIMATION DOMINATION extend to the mark ANIMATION DOMINATION HD because the latter mark incorporates ANIMATION DOMINATION in its entirety and differs only by the addition of “HD” at the end of the ANIMATION DOMINATION mark.
31. Complainant also has independent common law rights in the ANIMATION DOMINATION HD mark were established at least as early as April 24, 2012, the day that Complainant announced its ANIMATION DOMINATION HD programming. Complainant promoted its announcement on its website, reaching millions of people, and many media outlets publicized Complainant’s announcement of ANIMATION DOMINATION HD mark. These advertising and marketing efforts by Complainant and the significant and widespread publicity resulting from Complainant’s efforts clearly establish Complainant’s priority to the ANIMATION DOMINATION HD mark for the very first use of the mark. McCarthy § 20:16, citing T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37 U.S.P.Q.2d 1879 (Fed. Cir. 1995) (pre-sales activities such as use in press releases announcing the offering in a few months of the new service; use in a slide show marketing presentation; trade show demonstrations using the term; and use in a marketing brochure distributed to prospective purchasers constituted analogous trademark use sufficient to establish priority); Walt Disney Prod. v. Kusan, Inc., 204 U.S.P.Q 284 (C.D. Cal 1979) (pre-release publicity is sufficient to obtain trademark rights); New West Corp. v. NYM Co. of Cal. Inc., 595 F.2d 1194, 1200 (9th Cir. 1979) (“use in a way sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind as those of the adopter of the mark, is competent to establish ownership, even without evidence of actual sales.”).
32. Common-law rights, such as Complainant’s rights in the ANIMATION DOMINATION HD mark, have uniformly been found to be sufficient grounds for filing a complaint under the UDRP. Further, UDRP Panels have also held that pre-use publicity is sufficient to establish common-law rights in a mark including in the context of publicizing a new service, product, or company names. See, e.g., Disney Enterprises v. PushTravel.com (NAF FA0206000114626) (holding the complainant’s common-law rights in the PUSH, NEVADA mark for a yet-to-be-aired television series called “Push, Nevada”, as established by its pre- launch promotional efforts, sufficient to show that complainant’s rights were established before respondent registered the domain name <pushnevada.com>); Time Warner and EMI v. CPIC Net (WIPO D2000-0433) (holding complainants have rights in the mark WARNER EMI among others as shown by the complainants’ merger announcement, the news articles reporting the merger announcement and new name, and complainants’ established rights in the marks that were combined to create the new mark and name); H-D Michigan v. Martin (NAF FA0909001286735) (holding complainant’s common-law rights in the DARK CUSTOM mark sufficient to proceed under the UDRP).
33. Complainant’s proprietary rights in its Marks well predate Respondent’s registration of the Domain Name.
D. Respondent’s Infringing Activities and Bad-Faith Acts
34. Respondent registered the domain name ANIMATIONDOMINATIONHD.COM on April 26, 2012, well after (a) Complainant began using its ANIMATION DOMINATION mark, (b) Complainant registered its ANIMATION DOMINATION mark, and (c) Complainant’s ANIMATION DOMINATION mark became famous.
35. Respondent also registered the Domain Name opportunistically two days after Complainant announced its ANIMATION DOMINATION HD mark and services.
36. Respondent, under his own name and the names CPIC and MIC, has an extensive history of registering and using trademark-related domain names in bad faith, with a particular focus on registering domain names opportunistically in response to trademark owners’ news announcements regarding new services, products, or company names.
37. For example, in 2000, Respondent’s registration and use of the domain names domain names <radioshackcorporation.com>, <radioshackcorporation.org>, <radioshackcorporation.net>, and <radioshackcorp.com> were the subject of Technology Properties v. Syed Hussain et al. (NAF FA0008000095411). In that case, the UDRP Panel ordered the domain names transfers, holding: “The Respondent (also known as CPIC NET and MIC) has registered at least one hundred domain names, many of which are the same as or deceptively similar to a famous trademark or a misspelled derivation thereof. The Respondent is a ‘cyber-squatter’ hoping to monetarily benefit from the registration of domain names containing famous trademarks.” The Panel further held, “The Respondent took advantage of the public announcement that Tandy Corporation was changing its name to RadioShack by registering the domain names on the same day as a public announcement of a company’s name change. This is also evidence of bad faith.”
38. Respondent’s opportunistic registration of trademark-related domain names in bad faith has been the subject of at least 16 additional adverse UDRP decisions.
39. Additional adverse UDRP decisions against Respondent for his cybersquatting activities include the following: Reed Elsevier v. Domain Management / Syed Hussain (NAF FA1111001416531) (ordering the transfer of the domain names <lexisnexis-es.com> and <lexisnexises.com>); Boyd Gaming v. MIC / Syed Hussain (NAF FA1007001336260) (ordering the transfer of the domain name <boydstationcasinos.com>); State Farm v. MIC c/o Syed Hussain (NAF FA1004001322235) (ordering the transfer of the domain name <statefarm2save.com>); Venator Group Retail v. Syed Hussain dba MIC (NAF FA0110000100706) (ordering the transfer of the domain name <footlockerinc.com>).
40. Respondent uses the domain name ANIMATIONDOMINATIONHD.COM for a commercial pay-per-click website featuring sponsored-link advertisements for directly competing websites and other commercial websites. Respondent undoubtedly receives “click- through” commissions when Internet users click on the sponsored-link ads featured on the his website.
41. Respondent offers to sell the Domain Name on (a) the domain-name marketplace website Sedo, (b) the website associated with the Domain Name, via the link “The domain animationdominationhd.com may be for sale by its owner” that connects to Sedo’s website, and (c) the WHOIS record for the Domain Name, which advertises “AnimationDominationHd.com is for sale / The owner of the domain you are researching has it listed for sale / Buy AnimationDominationHd.com now” and links to Respondent’s listing on Sedo’s website.
VI. THE DOMAIN NAME IS IDENTICAL AND CONFUSINGLY SIMILAR TO COMPLAINANT’S MARKS
42. The Domain Name is confusingly similar to Complainant’s famous and federally registered ANIMATION DOMINATION mark because it is comprised of Complainant’s mark in its entirety with the letters H and D. See, e.g., Reed Elsevier v. Domain Management / Syed Hussain (NAF FA1111001416531) (finding the domain name <lexisnexises.com> confusingly similar to complainant’s LEXISNEXIS mark because it contains complainant’s mark in its entirety, the letters E and S, and the non-distinguishing “.com”); Bloomberg v. MIC c/o Syed Hussain (NAF FA1001001304768) (finding the domain name <bloombergbw.com> confusingly similar to complainant’s BLOOMBERG mark because it contains complainant’s mark in its entirety and adds the letters B and W); DIRECTV v. Fuhrman (NAF FA1007001334678) (finding the domain name <directvhd.com> confusingly similar to complainant’s mark DIRECTV).
43. In addition, the Domain Name is identical and confusingly similar to Complainant’s ANIMATION DOMINATION HD mark because it is comprised of Complainant’s mark in its entirety and the non-distinguishing gTLD .COM. See, e.g., American Airlines v. Nakhleh (NAF FA0708001063459) (“Respondent’s <americanairlines.mobi> domain name contains Complainant’s mark in its entirety, eliminates the space between the two words of Complainant’s mark and adds the generic top-level domain (‘gTLD’) ‘.mobi.’ The Panel finds that the lack of a space between the two words in a mark and the addition of a gTLD to an otherwise identical mark fails to adequately distinguish the domain name from the mark pursuant to Policy ¶4(a)(i).”); H-D Michigan v. Martin (NAF FA0909001286735) (finding the domain name <darkcustom.com> identical to complainant’s DARK CUSTOM mark because it contains complainant’s mark “in its entirety, omits a space between the terms, and adds the [gTLD] ‘.com.’ The Panel finds that the omission of spacing and the addition of a gTLD are irrelevant in distinguishing a disputed domain name from an established mark.”); Toyota Motor Sales, U.S.A. v. Straus (NAF FA0309000198019) (finding the domain name <landcruiser.org> identical to complainant’s LAND CRUISER mark “because the domain name fully incorporates the mark, omits the space between the two words in the mark, and merely adds the generic top-level domain ‘.org’ to the mark. The omission of the space between the words of the mark and the addition of a generic top-level domain to the mark is insufficient to circumvent the Panel from finding the domain name confusingly similar.”).
VII. RESPONDENT HAS NO LEGITIMATE INTEREST IN THE DOMAIN NAME
44. Respondent clearly has no rights or legitimate interest in the Domain Name for the following reasons.
45. First, Respondent’s registration and use of the Domain Name for a commercial pay-per-click website featuring sponsored-link advertisements for directly competing websites and other commercial websites does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name. UDRP Panels have consistently found no legitimate interest in the use of trademark-related domain names to earn “click- through” fees from pay-per-click websites and/or similar websites featuring sponsored-link advertisements, including many UDRP Panels deciding cases involving Respondent. See, e.g., Broadcom v. Domain Management / Syed Hussain (NAF FA1112001419370) (holding Respondent’s use of the domain name <broadcomnetlogic.com> for a pay-per-click website featuring links to competing websites does not constitute a bona fide offering of goods or services or a legitimate non-commercial or fair use); Reed Elsevier v. Domain Management / Syed Hussain (NAF FA1111001416531) (holding Respondent’s use of the domain names <lexisnexis-es.com> and <lexisnexises.com> for a pay-per-click website featuring links to competing websites does not constitute a bona fide offering of goods or services or a legitimate non-commercial or fair use); Boyd Gaming v. MIC / Syed Hussain (NAF FA1007001336260) (holding Respondent’s use of the domain name <boydstationcasinos.com> for a pay-per-click website does not constitute a bona fide offering of goods or services or a legitimate non- commercial or fair use); State Farm v. MIC c/o Syed Hussain (NAF FA1004001322235) (holding respondent’s use of the domain name <statefarm2save.com> for a pay-per-click website featuring links to third-party websites unrelated to complainant’s services does not constitute a bona fide offering of goods or services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)”); Bloomberg v. MIC c/o Syed Hussain (NAF FA1001001304768) (finding no legitimate interest in respondent’s use of the domain name <bloombergbw.com> for a pay-per-click website).
46. Second, Respondent is not and has not been commonly known by the Domain Name. Nothing in Respondent’s WHOIS information or the record demonstrates that Respondent is commonly known by the Domain Name. Further, Complainant has never authorized Respondent to use Complainant’s Marks. See, e.g., Twentieth Century Fox Film Corporation v. Leverett Consulting (NAF FA0410000338370) (holding respondent did not establish rights or legitimate interests in the disputed domain names because there was no proof in the record that respondent was known by the domain names and because Complainant did not authorize or license respondent to use its FOX SPORTS RADIO and FOX SPORTS marks); Broadcom v. Domain Management / Syed Hussain (NAF FA1112001419370) (finding Respondent is not commonly known by the domain name <broadcomnetlogic.com> domain name because Respondent is not licensed or authorized to use complainant’s BROADCOM mark in a domain name and the WHOIS information for the disputed domain name lists “Domain Management / Syed Hussain” as the registrant); State Farm v. MIC c/o Syed Hussain (NAF FA1004001322235) (holding respondent’s offer to sell the domain name <statefarm2save.com> is additional evidence that Respondent lacks rights or legitimate interests under the UDRP).
47. Finally, Respondent’s offer to sell the Domain Name is also an independent ground for finding that Respondent lacks a legitimate interest in the Domain Name under prior UDRP decisions. See, e.g., Broadcom v. Domain Management / Syed Hussain (NAF FA1112001419370) (finding no legitimate interest where Respondent offered to sell the domain name <broadcomnetlogic.com>); Getronics Nederland v. MIC a/k/a Syed Hussain (NAF FA0207000114752) (“Respondent’s willingness to transfer title of the subject domain name evidences its lack of rights or legitimate interests in the domain name under Policy ¶4(a)(ii).”); OneWest v. Rajpoot (NAF FA1110001412187) (finding respondent’s offer to sell the domain name <onewestbank.mobi> is evidence that respondent lacks rights and legitimate interests in the domain name.
VIII. RESPONDENT’S BAD FAITH UNDER SECTION 4(B) OF THE UDRP
48. Respondent’s registration and use of the Domain Name squarely meet the grounds of bad faith outlined in the UDRP, as well as additional grounds of bad faith defined in previous UDRP decisions.
49. First, Respondent registered the Domain Name opportunistically in bad faith immediately after Complainant announced its launch of the ANIMATION DOMINATION HD services on April 24, 2012. UDRP Panels have consistently ordered the transfer of domain names that were opportunistically registered after publicity regarding a new service, product, or company name, including the Panels in the 17 UDRP cases involving Respondent described in detail in Paragraphs 36-38.
50. Second, Respondent’s registration of the Domain Name constitutes bad faith under Section 4(b)(ii) because Respondent’s registration of the disputed Domain Name and the numerous adverse UDRP decisions against Respondent described above in Paragraphs 36-38 demonstrates a bad-faith pattern of registering trademark-related domain names. Indeed, many UDRP Panels have specifically held that Respondent has a bad-faith pattern of registering trademark-related domain names. See, e.g., Broadcom v. Domain Management / Syed Hussain (NAF FA1112001419370) (holding Respondent registered and used the <broadcomnetlogic.com> domain name in bad faith pursuant to Section 4(b)(ii) because there are several adverse UDRP decisions against Respondent); Ameritrade v. MIC a/k/a Syed Hussain (NAF FA0105000097320) (“Respondent’s registration and use of the domain names [<ameritradepro.com> and <cibcameritrade.com>] meet the bad faith element set forth in Policy ¶4(b)(ii), because he has consistently engaged in a pattern of registering trademark-related domain names. Again, Respondent’s activities have been repeatedly found to be in bad faith under the UDRP.”); Technology Properties v. Syed Hussain et al. (NAF FA0008000095411) (“Respondent also has engaged in a pattern of registering numerous domain names that infringe on famous marks. Preventing owners of marks from reflecting the marks in domain names, provided there is a pattern of conduct, is evidence of bad faith. Policy ¶4.b.(ii).”).
51. Third, Respondent’s registration of the Domain Name constitutes bad faith under Section 4(b)(i) because Respondent registered the Domain Name primarily to sell, rent, or otherwise transfer the Domain Name for valuable consideration in excess of his documented out- of-pocket expenses. As shown above, Respondent offers to sell the Domain Name on Sedo’s website, on the website associated with the Domain Name, and on the WHOIS record for the Domain Name. See, e.g., Broadcom v. Domain Management / Syed Hussain (NAF FA1112001419370) (holding Respondent’s offer to sell the domain name <broadcomnetlogic.com> to the general public and to complainant constitutes bad faith under Section 4(b)(i)); State Farm v. MIC c/o Syed Hussain (NAF FA1004001322235); (holding respondent’s offer to sell the domain name <statefarm2save.com> constitutes bad faith); Getronics Nederland v. MIC a/k/a Syed Hussain (NAF FA0207000114752) (holding respondent’s offer to sell the domain name constitutes bad faith); Venator Group Retail v. Syed Hussain dba MIC (NAF FA0110000100706) (holding respondent’s offer to sell the domain name <footlockerinc.com> constitutes bad faith); Technology Properties v. Syed Hussain et al. (NAF FA0008000095411) (holding respondent’s offer to sell the domain names <radioshackcorporation.com>, <radioshackcorporation.org>, <radioshackcorporation.net>, and <radioshackcorp.com> constitutes bad faith).
52. Fourth, Respondent’s registration and use of the Domain Name constitute bad faith under Section 4(b)(iv) of the UDRP because Respondent uses the Domain Name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant and Complainant’s Marks as to the source, sponsorship, affiliation, and/or endorsement of Respondent, the pay-per-click website associated with the Domain Name, and/or the services and products advertised on his website. See, e.g., Broadcom v. Domain Management / Syed Hussain (NAF FA1112001419370) (holding Respondent’s use of the domain name <broadcomnetlogic.com> for a pay-per-click website constitutes bad faith under Section 4(b)(iv)); Reed Elsevier v. Domain Management / Syed Hussain (NAF FA1111001416531) (holding respondent’s use of the domain names <lexisnexis-es.com> and <lexisnexises.com> constitutes bad faith because “Internet users accessing the resolving websites will likely become confused as to Complainant’s affiliation with the disputed domain names, resolving website, and featured hyperlinks. As Respondent attempts to profit from this confusion through click-through fees, the Panel holds that Respondent registered and uses the <lexisnexis-es.com> and <lexisnexises.com> domain names in bad faith pursuant to Policy ¶4(b)(iv).”); State Farm v. MIC c/o Syed Hussain (NAF FA1004001322235) (holding respondent’s use of the domain name <statefarm2save.com> for a pay-per-click website); Bloomberg v. MIC c/o Syed Hussain (NAF FA1001001304768) holding respondent’s use of the domain name <bloombergbw.com> for a pay-per-click website constitutes bad faith).
53. Fifth, Respondent’s registration and use of the Domain Name constitute bad faith under Section 4(b)(iii) of the UDRP because Respondent disrupts Complainant’s business by using the Domain Name for a pay-per-click website advertising directly competing services. See, e.g., Broadcom v. Domain Management / Syed Hussain (NAF FA1112001419370) (holding Respondent’s registration and use of the <broadcomnetlogic.com> domain name for a pay-per- click site with competing links constitutes bad faith under Section 4(b)(ii)); Reed Elsevier v. Domain Management / Syed Hussain (NAF FA1111001416531) (“Respondent registered and uses the <lexisnexis-es.com> and <lexisnexises.com> domain names for the purpose of hosting competing hyperlinks. Internet users interested in Complainant’s LEXISNEXIS services may purchase competing services from Complainant’s competitors based on Respondent’s registration and use of the confusingly similar disputed domain names. For this reason, the Panel finds that Complainant’s business is disrupted by Respondent’s registration and use of the <lexisnexis-es.com> and <lexisnexises.com> domain names, constituting Policy ¶4(b)(iii) bad faith registration and use.”); Boyd Gaming v. MIC / Syed Hussain (NAF FA1007001336260) (“Respondent’s use of its domain name to redirect Internet users to its website, where it displays links to third-party websites that compete with Complainant’s products and services, disrupts Complainant’s business. This behavior constitutes evidence of registration and use of the disputed domain name in bad faith under Policy ¶4(b)(iii).”).
54. Finally, there is no question that Respondent knew of Complainant’s Marks when he registered the Domain Name, given (1) Respondent’s extensive history of cybersquatting, (2) Respondent’s opportunistic registration of the Domain Name, (3) the fame of Complainant’s ANIMATION DOMINATION mark and federal registrations for that mark, and (4) Respondent’s use of the Domain Name to advertise directly competing services. By registering the Domain Name with knowledge of Complainant’s rights in its Marks, Respondent acted in bad faith. Registration of a domain name with knowledge of the trademark owner’s rights has been consistently found to constitute bad faith under the UDRP. See, e.g., Twentieth Century Fox Film Corporation v. Domains By Proxy (WIPO D2009-1121) (holding respondent registered the domain name <livefoxsports.info> in bad faith because it can be “concluded that Respondent knew of the existence of the Complainant’s trademark and its significance in the United States market.”); Twentieth Century Fox Film Corporation v. foxinteractivemedia-inc.com (WIPO D2009-1475) (holding respondent registered and used the domain name < foxinteractivemedia- inc.com> in bad faith because “Given the longstanding and widespread use of the FOX and FOX INTERATIVE marks, there can be little doubt that Respondent was aware of such marks” prior to its registration of the domain name); Toshiba v. Tusla (WIPO D2004-1066) (“Registration of a domain name with knowledge of the trademark owner’s rights has been consistently found to constitute bad faith under the Policy.”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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.”).
Complainant claims it has rights in the ANIMATION DOMINATION mark through its trademark holdings with the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 3,973,586 registered June 7, 2011). Prior panels have determined a trademark registration with the USPTO is sufficient for a complainant to establish rights in its 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).”). This Panel agrees and finds Complainant has adequately established its rights in the ANIMATION DOMINATION mark under Policy ¶4(a)(i).
Complainant also claims rights in the ANIMATION DOMINATION HD mark under the common law. A national trademark registration is not needed for a complainant to establish rights in a mark under the UDRP. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant announced its ANIMATION DOMINATION HD mark would be used for Saturday night programming on April 24, 2012. Respondent registered the domain name April 26, 2012. By that time, the ANIMATION DOMINATION HD mark announcement was aired through “many media outlets reaching significant numbers of people . . . .” While Complainant’s announcement received widespread attention, this Panel is not prepared to find the announcement alone (without actually having the programming) was sufficient for the phrase ANIMATION DOMINATION HD to instantly acquire a secondary meaning.
Complainant argues Respondent’s <animationdominationhd.com> domain name is confusingly similar to the ANIMATION DOMINATION mark. First, the disputed domain name contains the entire ANIMATION DOMINATION mark while adding the letters “h” and “d” and the generic top-level domain (“gTLD”) “.com” and removing the space from between the terms of the mark. Such changes do not render the domain name distinct from the mark and that the domain name at issue is confusingly similar to the mark under Policy ¶4(a)(i). See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i)). The letters HD are merely descriptive of the service Complainant offers (and is short for the related descriptive phrase “high definition”).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then then the burden shifts to Respondent to show it has 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 contends Respondent “is not and has not been commonly known by the Domain Name.” Further, Complainant submits Respondent was never authorized to use Complainant’s marks. The WHOIS information identifies “Domain Management / Syed Hussain” as the domain name registrant. Based upon this registration, it is obvious Respondent is not commonly known by the disputed domain name under 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 that it is commonly known by the disputed domain name).
Respondent does not normally acquire any rights to a parked domain name which contains “click through” links which compete with Complainant.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant contends Respondent’s attempt to auction or sell the domain name in question, “for valuable consideration in excess of his documented out-of-pocket expenses,” is evidence of bad faith. Complainant notes Respondent is attempting to sell the disputed domain name at <sedo.com> through a link on the disputed domain name’s website and through the WHOIS information. Complainant argues Respondent’s attempts to sell the domain name evidence both registration and use in bad faith. The Panel agrees and finds Respondent has registered and is using the disputed domain name in bad faith under Policy ¶4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶4(b)(i).”).
Complainant also argues Respondent has been the respondent in several prior UDRP proceedings in which it was ordered to transfer the disputed domain names to the respective complainants. See Broadcom v. Domain Management / Syed Hussain, FA 1419370 (Nat. Arb. Forum Jan. 17, 2012); see also Bloomberg v. MIC c/o Syed Hussain, FA 1304768 (Nat. Arb. Forum Mar. 11, 2010); see also Getronics Nederland v. MIC a/k/a Syed Hussain, FA 114752 (Nat. Arb. Forum Aug. 20, 2002). This Panel does not find the fact Respondent has been involved in multiple UDRP proceedings (without more) to be adequate evidence of bad faith registration and use.
Complainant claims Respondent’s use of the disputed domain name disrupts Complainant’s business. Respondent is advertising and providing hyperlinks to directly competing websites and businesses on the resolving website. This Panel finds Respondent’s use of the disputed domain name as described by Complainant is adequate evidence of bad faith registration and use under Policy ¶4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).”).
Complainant also argues Respondent’s use of the disputed domain name to intentionally attract Internet users to Respondent’s website for commercial gain is further evidence of bad faith. Complainant asserts the links posted on Respondent’s website are placed there for Respondent’s financial benefit and are pay-per-click links. Respondent attracts more Internet users to its website by using Complainant’s ANIMATION DOMINATION marks in the domain name. This Panel finds this evidence sufficient to conclude Respondent registered and is using the disputed domain name in bad faith under Policy ¶4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
Further, Complainant claims Respondent’s registration of the <animationdominationhd.com> domain name two days after Complainant’s publicized announcement of its new Saturday night programming under the ANIMATION DOMINATION HD mark is evidence of opportunistic bad faith. Complainant announced its new programming lineup on Saturday nights on April 24, 2012 that would be under the ANIMATION DOMINATION HD mark and Respondent registered the disputed domain name on April 26, 2012. Respondent’s opportunistic registration of the disputed domain name indicates bad faith registration and use pursuant to Policy ¶4(a)(iii). See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”).
Lastly, Complainant argues “there is no question that Respondent knew of Complainant’s Marks when he registered the Domain Name . . . .” Complainant claims Respondent’s history of registering trademark-infringing domain names and Respondent’s opportunistic registration of the domain name currently in dispute, coupled with the fame of Complainant’s ANIMATION DOMINATION mark, show Respondent knew of Complainant’s rights in its mark prior to Respondent registering the domain name. While Respondent’s past UDRP history isn’t really relevant for this purpose, there is no doubt in the Panel’s mind Respondent actually know of Complainant’s new mark before Respondent registered the domain name. This evidence adequately demonstrates Respondent registered and is using the domain name in bad faith under Policy ¶4(a)(iii). See 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 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 the <animationdominationhd.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, September 17, 2012
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