ABS-CBN International v. Methosalem Haincadto
Claim Number: FA1401001540153
Complainant is ABS-CBN International (“Complainant”), represented by Nicole B. Emmons of Baker & McKenzie LLP, Texas, USA. Respondent is Methosalem Haincadto (“Respondent”), Philippines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <abscbn-gma7tv.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on January 21, 2014; the National Arbitration Forum received payment on January 21, 2014.
On January 22, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <abscbn-gma7tv.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 registration agreement of GODADDY.COM, LLC 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 January 22, 2014, the Forum served the Complaint and all Annexes, includ-ing a Written Notice of the Complaint, setting a deadline of February 11, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all en-tities and persons listed on Respondent’s registration as technical, administrat-ive, and billing contacts, and to postmaster@abscbn-gma7tv.com. Also on Jan-uary 22, 2014, 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 February 12, 2014, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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 uses the ABS-CBN service mark in connection with the marketing of its Philippines-based television, radio broadcasting and motion picture production and distribution business.
Complainant holds registrations for the ABS-CBN mark, on file with the United States Patent and Trademark Office (“USPTO”), (including Reg. No. 2,334,131, registered March 28, 2000).
Respondent registered the <abscbn-gma7tv.com> domain name on February 2, 2013.
The domain name is confusingly similar to Complainant’s ABS-CBN mark.
Respondent has not been commonly known by the <abscbn-gma7tv.com> do-main name, and Complainant has not authorized Respondent to use its ABS-CBN mark in a domain name.
The disputed domain name is not being used for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The domain name resolves to website promoting third-party advertisements and links, as well as what appear to be embedded videos from the GMA Network, which directly competes with the services provided by Complainant under the ABS-CBN mark.
Respondent seeks to profit from this use of the domain name.
Respondent has no rights to or legitimate interests in the domain name.
Respondent knew of Complainant and its rights in the ABS-CBN mark when it registered the <abscbn-gma7tv.com> domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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) (finding that a respondent’s failure to respond allows all reasonable in-ferences of fact in the allegations of a UDRP complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the ab-sence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the ABS-CBN service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Hewlett-Packard Dev. Co., L.P. v. Wu Wenbing, FA 1294944 (Nat. Arb. Forum Dec. 31, 2009):
The Panel finds Complainant has sufficiently established rights in the … mark . . . through its registration[ ] with … the United States Patent and Trademark Office . . . .
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here the Philippines). See, for ex-ample, Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a UDRP complainant can demonstrate rights in its mark in some jurisdiction).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a re-view of the record that the <abscbn-gma7tv.com> domain name is confusingly similar to Complainant’s ABS-CBN service mark. The domain name contains the entire mark while changing the position of hyphen and adding the generic terms “tv,” “7” and “gma” and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (finding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark").
See also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding a respondent’s <amextravel.com> domain name confusingly similar to a UDRP complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).
Further see Lorillard Licensing Company, LLC v. safd / sdfdf; sdf / sdf d; sd / d df, FA 1530394 (Nat. Arb. Forum Dec. 30, 2013):
The Panel also agrees that merely tagging a third party’s trademark
into the <marlboroandnewportcigarettes.com> domain name does not distinguish the domain name in a meaningful manner.
Finally 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).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a UDRP complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent does not have rights or legitimate interest in the subject do-main 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 has made a sufficient prima facie showing under this branch of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been commonly known as <abscbn-gma7tv.com> and that Complainant has not authorized Respondent to use its ABS-CBN mark in a domain name. Moreover, the pertinent WHOIS information identifies the regis-trant of the domain name only as “Methosalem Haincadto,” which does not re-semble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have demon-strated that it has rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name, and so failed to show that it had rights to or legitimate interests in the domain name as provided in Policy ¶ 4(c)(ii), based on the relevant WHOIS information and other evidence in the record).
We next observe that Complainant assets that the disputed domain name re-solves to a website promoting third-party advertisements and links, as well as what appear to be embedded videos from the GMA Network, which directly competes with the services provided by Complainant under the ABS-CBN mark. This employment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See, for example, 24 Hour Fitness USA, Inc. v. 24Hour-Names.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (finding that a respondent’s use of the domain names <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> to redirect Internet users to a website featuring advertisements and links to a UDRP Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use). See also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003):
Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.
Therefore, the Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent uses the disputed <abscbn-gma7tv.com> domain name to promote links to the websites of Complainant’s competitors. Under Policy ¶ 4(b)(iii), this employment of the domain name dem-onstrates bad faith in its registration and use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007):
Respondent currently utilizes the disputed domain name … to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
See also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (finding that a respondent’s registration of a domain name substantially similar to a UDRP complainant’s mark in order to operate a competing online dating website supported the conclusion that that respondent registered and used the domain name in bad faith to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
We are likewise convinced by the evidence that Respondent’s registration and use of the <abscbn-gma7tv.com> domain name, which is confusingly similar to Complainant’s ABS-CBN service mark, is an attempt to profit from confusion thus caused among Internet users as to the possibility of Complainant’s affiliation with the domain name and its resolving website. This stands as proof of bad faith registration and use of the domain name. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a disputed domain name was obviously connected with a UDRP complain-ant’s marks, thus creating a likelihood of confusion among Internet users for a respondent’s commercial gain).
See also 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).
Finally, it is evident that Respondent knew of Complainant and its rights in the ABS-CBN mark when it registered the <abscbn-gma7tv.com> domain name. This too shows bad faith in the registration of the domain name under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith registration of a domain name where a respondent was “well-aware” of a UDRP complainant’s YAHOO! mark at the time of domain name registration).
See also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding bad faith registration of a disputed domain name where the link between a UDRP complainant’s mark and the content advertised on a respondent’s resolving web-site was obvious, so that respondent “must have known about the Complainant’s mark when it registered the subject domain name”).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <abscbn-gma7tv.com> domain name be forth-with TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 18, 2014
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