AMI Entertainment Network, Inc. v. Quentin Ware / Hipgadgets LLC and TapTV
Claim Number: FA1311001531114
Complainant is AMI Entertainment Network, Inc. (“Complainant”), represented by Laura A. Genovese of Panitch Schwarze Belisario & Nadel LLP, Pennsylvania, USA. Respondent is Quentin Ware / Hipgadgets LLC and TapTV (“Respondent”), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <taptv.net>, registered with GoDaddy.com, LLC.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 21, 2013; the National Arbitration Forum received payment on November 22, 2013.
On November 22, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <taptv.net> 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 November 25, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 16, 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@taptv.net. Also on November 25, 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 December 23, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions
i. Respondent has no trademark rights or any other legitimate rights in the mark TAP TV, nor has it been authorized or licensed by Complainant to use this trademark.
ii. Respondent no longer offers a product or service on <taptv.net>. Rather, the domain resolves to a parking page.
i. Respondent no longer offers a product or service on <taptv.net>. Rather, the domain resolves to a parking page.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the provision of computer and game software, entertainment services, broad and narrow-casting services, and advertising services.
2. Complainant is the owner of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the TAP TV mark (Reg. No. 4,429,891, filed on October 22, 2012, registered November 5, 2013). Complainant also holds USPTO registration to TAP.TV (Reg. No. 3,791,876 registered on May 25, 2010).
3. Respondent registered the <taptv.net> domain name on November 12, 2012. As at October 11, 2013, the domain name resolved to a webpage for “Hip Gadget’s Tap TV,” a competing use of Complainant’s mark. More recently, the domain name ceased to offer a product or service and now resolves to a parking page.
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 first question that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant claims that it is the owner of the marks TAP TV and TAP.TV, for computer and game software, entertainment services, broad and narrow-casting services, and advertising services. Complainant contends that it is the owner of a trademark registration with the USPTO for the TAP TV mark (Reg. No. 4,429,891, registered November 5, 2013) and TAP.TV (Reg. No. 3,791,876 registered on May 25, 2010). See Complainant’s Annex A. Accordingly, the Panel concludes that Complainant has established rights in its marks under Policy ¶ 4(a)(i) through its registration with the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s TAP TV and TAP.TV marks. Complainant asserts that Respondent’s <taptv.net> domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. The Panel notes that Respondent includes Complainant’s TAP TV mark in its entirety and merely removes the space and adds the generic top-level domain (“gTLD”) “.net.” In Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001), the panel found <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.” Thus, the Panel holds that Respondent’s <taptv.net> domain name is identical to Complainant’s TAP TV mark pursuant to Policy ¶ 4(a)(i). Additionally, the Panel holds that the domain name is identical to the TAP.TV mark as the removal of the mark’s period and inclusion of a gTLD are not considered as serious modifications. See, e.g., Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a)Respondent has chosen to take Complainant’s TAP TV and TAP.TV trademarks and used them in its domain name, thus giving the false impression that the domain name is an official domain name of Complainant and that it will lead to an official website of Complainant;
(b)Respondent then used the domain name to resolve to a webpage for “Hip Gadget’s Tap TV,” a competing use of Complainant’s mark. More recently, the domain name ceased to offer a product or service and now resolves to a parking page;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d)Complainant alleges that Respondent has no trademark rights or any other legitimate rights in the mark TAP TV, nor has it been authorized or licensed by Complainant to use this trademark. The Panel notes that the WHOIS information identifies “Quentin Ware / Hipgadgets LLC and TapTV” as the registrant of the <taptv.net> domain name. See Complainant’s Annex B. The Panel observes that Respondent does not provide any evidence that it is known by the disputed domain name. Thus, the Panel determines that Respondent is not commonly known under the <taptv.net> domain name according to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”);
(e)Complainant argues that Respondent no longer offers a product or service on <taptv.net>. The Panel observes that on October 11, 2013, Respondent’s disputed domain name resolved to a webpage for “Hip Gadget’s Tap TV,” which could be considered a competing use of Complainant’s mark. See Complainant’s Exhibit D. As the Panel finds that Respondent is using the disputed domain name in connection with a competing use, the Panel finds that Respondent is not using the <taptv.net> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services);
(f)Complainant asserts that the <taptv.net> domain name now resolves to a parking page. The Panel notes that on November 19, 2013, Respondent’s disputed domain name resolved to a GoDaddy website stating “Welcome to <taptv.net>. This Web page is parked FREE, courtesy of GoDaddy.com.” See Complainant’s Exhibit E. Thus, Panel concludes that Respondent’s use of the disputed domain name to host a parking page 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 Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, the Panel notes that on October 11, 2013, Respondent’s disputed domain name resolved to a website for “Hip Gadget’s Tap TV,” a mobile app which could be considered as competing with Complainant. See Complainant’s Exhibit D. In Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000), the panel found that respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to complainant’s mark to redirect users to a website that offered services similar to those offered by complainant. Thus, the Pane concludes that Respondent has registered and is using the <taptv.net> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent no longer offers a product or service on <taptv.net>. Complainant contends that Respondent’s <taptv.net> domain name now resolves to a parking page. The Panel observes that on November 19, 2013, Respondent’s disputed domain name resolved to a GoDaddy website stating “Welcome to <taptv.net>. This Web page is parked FREE, courtesy of GoDaddy.com.” See Complainant’s Exhibit E. The Panel observes that Respondent’s use of the disputed domain name diverts Internet users from Complainant’s website to Respondent, for which it may commercially benefit. Thus, the Panel concludes that Respondent has registered and is using the <taptv.net> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Express Scripts, Inc. v. Windgather Invs. Ltd., D2007-0267 (WIPO Apr. 26, 2007) (finding that it makes no difference that a respondent contends that the advertisements in this case were “generated by the parking company,” the respondent still registered and used the disputed domain name in bad faith).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using Complainant’s TAP TV and TAP.TV trademarks and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <taptv.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 30, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page