TV EARS, INC. v. Thomas Orlando
Claim Number: FA1312001534094
Complainant is TV EARS, INC. (“Complainant”), California, USA. Respondent is Thomas Orlando (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tv-ears.net> and <tv-ears.org>, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 11, 2013; the National Arbitration Forum received payment on December 11, 2013.
On December 11, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <tv-ears.net> and <tv-ears.org> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 December 12, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2014 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@tv-ears.net, postmaster@tv-ears.org. Also on December 12, 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 January 6, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <tv-ears.net> and <tv-ears.org> domain names, the domain names at issue, are confusingly similar to Complainant’s TV EARS mark.
2. Respondent does not have any rights or legitimate interests in the domain names at issue.
3. Respondent registered and used the domain names at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, TV EARS, INC., is the #1 selling brand for wireless TV listening devices and is the owner of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the TV EARS mark (Reg. No. 3,387,270, registered February 26, 2008). The disputed domain names contain the entirety of Complainant’s TV EARS mark and differ from Complainant’s mark only by the addition of a hyphen.
Respondent has no rights or legitimate interests in respect of the disputed domain names. Respondent has not been commonly known by the disputed domain names. Respondent has been or is currently using the disputed domain names to redirect Internet users to a website featuring generic links to third-party websites. Respondent was using the disputed domain names to redirect unsuspecting Internet users to a website featuring advertising links to third-party websites, and presumably receiving pay-per-click fees in the process. At the time of registration, Respondent knew or should have known of the existence of Complainant’s trademarks. Respondent registered the <tv-ears.net> and <tv-ears.org> domain names on August 19, 2013.
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.”).
Complainant is the #1 selling brand for wireless TV listening devices and is the owner of a trademark registration with the USPTO for the TV EARS mark (Reg. No. 3,387,270, registered February 26, 2008). Respondent appears to reside within the United States. Therefore, Complainant has sufficiently established its rights in the TV EARS mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Respondent’s <tv-ears.net> and <tv-ears.org> domain names contain the entirety of Complainant’s TV EARS mark and differ from Complainant’s mark only by the addition of a hyphen. Respondent’s substitution of the space in Complainant’s TV EARS mark for a hyphen does not differentiate the disputed domain names from Complainant’s mark under Policy ¶ 4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of 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).”). Further, Respondent adds the generic top-level domains (“gTLD”) “.net” or “.org” to Complainant’s mark in its disputed domain names. This addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) confusingly similar analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Consequently, the Panel concludes that Respondent’s <tv-ears.net> and <tv-ears.org> domain names are confusingly similar to Complainant’s TV EARS mark according to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent has not been commonly known by the <tv-ears.net> and <tv-ears.org> domain names. The WHOIS information suggests that Respondent is known as an entity other than the trademark associated with Complainant and Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s mark. The registrant of the disputed domain names is identified as “Thomas Orlando” in the WHOIS record. Accordingly, Respondent is not commonly known by the <tv-ears.net> and <tv-ears.org> domain names under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Respondent has been or is currently using the <tv-ears.net> and <tv-ears.org> domain names to redirect Internet users to websites featuring generic links to third-party websites. Respondent’s disputed domain names resolve to a website that contains competing links such as “Plantronics CS540 $184.95,” “TVEars Hearing,” “Best Hearing Devices?” Respondent presumably receives pay-per-click fees from these linked websites. Consequently, Respondent is not using the <tv-ears.net> and <tv-ears.org> domain names 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 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).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent was using the <tv-ears.net> and <tv-ears.org> domain names to redirect unsuspecting Internet users to a website featuring advertising links to third-party websites, and presumably receiving pay-per-click fees in the process. The Panel notes that Respondent’s disputed domain names link to a webpage that contains links that directly compete with Complainant’s goods and services and was using the fame of Complainant’s marks improperly to increase traffic to its website listed at the domain name for commercial gain. Previous panels have held that a respondent’s use of a disputed domain name to provide competing hyperlinks evidences bad faith use and registration, as it misleads and diverts Internet users from Complainant’s website to Respondent’s website for which Respondent commercially benefits. 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).”). Therefore, the Panel finds that Respondent has registered and is using the <tv-ears.net> and <tv-ears.org> domain names in bad faith under Policy ¶ 4(b)(iv).
At the time of registration, Respondent knew or should have known of the existence of Complainant’s TV EARS trademarks. Complainant’s TV EARS brands are known internationally because Complainant has marketed and sold services using Complainant’s mark since 1997. Respondent’s registration of the <tv-ears.net> and <tv-ears.org> domain names and the content of the associated resolving websites demonstrates a thorough knowledge of the TV EARS brand and business. Thus, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See 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").
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tv-ears.net> and <tv-ears.org> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 8, 2014
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