Red Lion Television, Inc., Red Lion Broadcasting Company, Inc., and Anna L. Plourde-Norris v. Yvonne Gurzell
Claim Number: FA1402001542292
Complainants are Red Lion Television, Inc., Red Lion Broadcasting Company, Inc., and Anna L. Plourde-Norris (“Complainants”), represented by Christopher D. Imlay of Booth, Freret, Imlay & Tepper, P.C., Maryland, USA. Respondent is Yvonne Gurzell (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wgcbtv.com> and <wgcbtv49.com>, registered with Register.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Robert A. Fashler, as Panelist.
Complainants submitted a Complaint to the National Arbitration Forum electronically on February 5, 2014; the National Arbitration Forum received payment on February 5, 2014.
On February 5, 2014, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <wgcbtv.com> and <wgcbtv49.com> domain names are registered with Register.com, Inc. and that Respondent is the current registrant of the names. Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. 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 6, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 26, 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@wgcbtv.com, postmaster@wgcbtv49.com. Also on February 6, 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.
A timely Response was received and determined to be complete on February 24, 2014.
On March 7, 2014, pursuant to Complainants' request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Robert A. Fashler 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.
Complainants requests that the domain name be transferred from Respondent to Complainants or their assigns.
A. Complainants
Between 1977 and 2012:
(a) Complainant, Red Lion Broadcasting (“Broadcasting”), held a broadcast license from the U.S. Federal Communications Commission permitting operation the television station WGCB-TV, Channel 49, at Red Lion, Pennsylvania (the “TV Station”);
(b)
Complainant, Red Lion Television, Inc. (“Television”), operated the TV Station
and held all assets of the TV Station except for the broadcast license, but
including the trademarks WGCB-TV and WGCB-TV 49 (the “Trademarks”);
(c) Television has used the Trademarks extensively in association with the TV
Station.
Until his death in September, 2008, John H. Norris, was the majority shareholder and the President of Broadcasting and Television. Mr. Norris was the second husband of Ms. Plourde-Norris.
At this time, Complainant, Anna L. Plourde-Norris, owns 40% of the stock of Broadcasting and Television. The remaining 60% is owned by the Estate of Mr. Norris. Ms. Plourde-Norris is the Executrix of that estate.
Ms. Plourde-Norris is the mother of Respondent.
In or about March of 2000, Respondent offered to register the domain names <wgcbtv.com> and <wgcbtv49.com> (the “Domain Names”), for the benefit of Television, to facilitate development of a website related exclusively to the TV Station. Television reimbursed Respondent for the cost of those registrations. Respondent inexplicably registered the Domain Names in her own name and Myakka River Riders.
The content accessed via the Domain Names pertains to the TV Station. Respondent has never had any interest in Broadcast, Television. Respondent, or the TV Station, has never used the Domain Names in any other manner, and has not made any demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services.
At some time in 2012, Broadcasting and Television transferred all the assets of the TV Station to NRJ TV RL License Company, LLC (“Current Owner”). That transfer included rights in WGCB, WGCB-TV, WGCB-TV 49, and the interest of Broadcasting and Television in the Domain Names. In connection with that transaction, Complainants are contractually obligated to convey all intangible assets of the TV Station, including the Domain Names, to Current Owner free and clear of all encumbrances and adverse claims.
Complainants and the Current Owner have requested Respondent to “reregister” the Domain Names in the name of Television, so that Television can assign them to the Current Owner as it is obligated by contract to do. The Current Owner has also requested Respondent to “reregister” the Domain Names. Respondent has refused those requests.
There may be some personal, family, issues at play.
B. Respondent
In 1998, Ms. Lourde-Norris met and married Mr. Norris. Soon after that, Respondent advised Ms. Lourde-Norris and Mr. Norris that they needed to register WGBC as a domain name so that no one could “highjack” them. That advice was not followed. Respondent then independently registered the Domain Names in 2000.
Respondent paid for the Domain Names and for their renewal over 15 years. Respondent was never reimbursed for those costs.
In 2005, the TV Station produced a “real website”. Respondent then redirected the Domain Names to that website. The Domain Names “have remained pointed at the stations [sic] IP address all these years.”
The Trademarks are not registered.
The focus of the TV Station is “family”. For that reason, the only domain name ever used by Complainants for the TV Station’s website is <family49.com>. Respondent points the Domain Names to that website.
Until recently, neither Complainants nor Mr. Norris requested that Respondent transfer the Domain Names.
Having regard to several pieces of circumstantial evidence, Respondent infers that Complainants have, until recently, completely lacked interest in using or acquiring the Domain Names.
There are some personal, family issues at play, but not the same issues referenced by Complainants.
Complainants have transferred their rights in the Trademarks to the Current Owner. Therefore Complainants have no rights in the Trademarks and cannot establish the proof required by Paragraph 4 (a) (i) of the Policy.
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 Complainants 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 Complainants 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.
The analysis begins and ends with the requirement set out in paragraph 4(a)(i) of the Policy. Complainants allege that the Domain Names are identical or confusingly similar to the Trademarks, but they freely admit that they have transferred all their rights in the Trademarks (and the Domain Names) to the Current Owner. Accordingly, it is impossible for Complainants to prove this element. In fact, they have proven the opposite. Only the Current Owner would have a basis for alleging this element The Current Owner is not a party to this proceeding.
The Panel finds that Complainants have failed to satisfy paragraph 4 (a) (i) of the Policy. The Panel further finds that there is no need to consider any of the other elements of the Policy.
As Complainants have failed to establish the first element that they must prove under paragraph 4 (a) (i) of the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <wgcbtv.com> and <wgcbtv49.com> domain names REMAIN WITH Respondent.
Robert A. Fashler, Panelist
Dated: March 13, 2014
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