Scripps Networks, LLC v. PPA Media Services / Ryan G Foo
Claim Number: FA1302001485347
Complainant is Scripps Networks, LLC (“Complainant”), represented by Ryan C. Compton of DLA Piper LLP (US), District of Columbia, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <scrippsnetwork.com>, registered with INTERNET.BS CORP.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 14, 2013; the National Arbitration Forum received payment on February 14, 2013.
On February 14, 2013, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <scrippsnetwork.com> domain name is registered with INTERNET.BS CORP. and that Respondent is the current registrant of the names. INTERNET.BS CORP. has verified that Respondent is bound by the INTERNET.BS CORP. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 2013 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@scrippsnetwork.com. Also on February 19, 2013, 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 25, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i. Respondent has not been commonly known by or associated with the SCRIPPS NETWORKS mark.
i. Complainant notes several previous cases in which the current Respondent was involved.
ii. Respondent is using the domain name to disrupt Complainant’s business.
iii. Respondent has used the domain name to attract Internet users for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Scripps Networks, LLC, is engaged in cable television broadcasting services. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the SCRIPPS NETWORKS mark (Reg. No. 2,344,722, registered April 25, 2000).
Respondent, PPA Media Services / Ryan G Foo, registered the disputed domain name on April 24, 2004.
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.”).
The Panel finds that Complainant’s registration of the SCRIPPS NETWORKS mark with the USPTO demonstrates its rights in the mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Although Respondent appears to reside in Chile, Complainant does not need to register its mark in the country that Respondent operates in. See 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 <scrippsnetwork.com> domain name is confusingly similar to Complainant’s mark and wholly incorporates Complainant’s well-known mark. Respondent removes the “s” from Complainant’s SCRIPPS NETWORKS mark. The removal of the letter “s” in Respondent’s domain name does not avoid a finding of confusing similarity under Policy ¶ 4(a)(i). See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it). Respondent removes the space in Complainant’s SCRIPPS NETWORKS mark. Respondent adds the “.com” suffix to the disputed domain name. In U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007), the panel found that the elimination of punctuation and the space between the words of the complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i). Thus, the Panel finds that Respondent’s <scrippsnetwork.com> domain name is confusingly similar to Complainant’s SCRIPPS NETWORKS mark under Policy ¶ 4(a)(i).
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).
Complainant claims that Respondent has not been commonly known by or associated with the SCRIPPS NETWORKS mark. The WHOIS information lists “PPA Media Services / Ryan G Foo” as the registrant of the disputed domain name. Complainant asserts that it has no business relationship whatsoever with Respondent. Complainant contends that it has not licensed or otherwise permitted Respondent to use the SCRIPPS NETWORKS mark or to apply for any domain name incorporating the SCRIPPS NETWORKS mark. The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to 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).
Complainant argues that Respondent has no rights or legitimate interests with respect to the domain name. Respondent uses the <scrippsnetwork.com> domain name to provide competing and unrelated hyperlinks. The Panel finds that Respondent’s use of the disputed domain name to provide a web directory with competing and unrelated hyperlinks is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also 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).
Complainant notes several previous cases in which the current Respondent was involved. See Complainant’s Annex L: Kohl’s Illinois, Inc. v. PPA Media Services / Ryan G Foo, FA 1470418 (Nat. Arb. Forum January 2, 2013); Orbitz Worldwide, LLC v. PPA Media Services / Ryan G Foo, FA 1470415 (Nat. Arb. Forum December 27, 2012); Ashley Furniture Industries, Inc. v. PPA Media Services / Ryan G Foo, FA 1470078 (Nat. Arb. Forum December 31, 2012). Complainant contends that in each of the above-mentioned dispute hearings, it was found that Respondent engaged in the same pattern of conduct as the case herein – the use of a privacy shield, the registration of a domain name including a third party’s trademark, and the use of a “pay per click” advertising as web content associated with the name. The Panel finds that Respondent’s prior UDRP proceedings resulting in findings of bad faith and transfer of the disputed domain names evidence bad faith use and registration under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Complainant contends that Respondent is using the domain name to disrupt Complainant’s business. Respondent uses the <scrippsnetwork.com> domain name to provide competing hyperlinks. The Panel determines that Respondent’s use of the disputed domain name to list competing hyperlinks disrupts Complainant’s business, showing bad faith use and registration under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant asserts that Respondent has used the domain name to attract Internet users for commercial gain. Respondent is using the disputed domain name to provide a web directory featuring competing and unrelated hyperlinks. Respondent may be receiving revenue for providing the web directory website located at <scrippsnetwork.com> domain name. Complainant claims that Respondent registered and is using the domain name to misdirect consumers looking for Complainant’s website for commercial gain by creating a likelihood of confusion. The Panel concludes that Respondent’s use of the disputed domain name to provide competing and unrelated hyperlinks, for which Complainant may be receiving revenue, constitutes attraction for commercial gain, showing bad faith use and registration 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 having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <scrippsnetwork.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 8, 2013
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