Public Broadcasting Service v. HOSSEIN FARROKH HAYATI / AGNET
Claim Number: FA1405001558522
Complainant is Public Broadcasting Service (“Complainant”), represented by Marc Mangum of PBS, Office of the General Counsel, Virginia, USA. Respondent is HOSSEIN FARROKH HAYATI / AGNET (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pbskidsplay.net>, registered with eNom, Inc.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 9, 2014; the National Arbitration Forum received payment on May 12, 2014.
On May 9, 2014, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <pbskidsplay.net> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 May 13, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 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@pbskidsplay.net. Also on May 13, 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 June 4, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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
1. Complainant owns the PBS family of marks and has used them continuously for more than thirty years.
2. Complainant owns registrations with the United States Patent and Trademark Office (“USPTO”) for the PBS KIDS PLAY! (Reg. No. 3,767,983 registered March 30, 2010) and PBS KIDS Marks (Reg. No. 2,433,830 registered March 6, 2001).
3. Complainant also owns various registrations for the PBS KIDS mark in countries around the world.
i. Brazil’s National Institute of Industrial Property (“INPI”) (Reg. No. 821,926,268 registered August 27, 1999)
ii. Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA635,637 registered March 18, 2005).
4. Complainant’s PBS KIDS website was established in 1997 and is a noncommercial, safe and educational online space designed to provide children with online games that both entertain and educate. Complainant’s website also suggests offline activities to enhance learning.
5. Respondent’s <pbskidsplay.net> domain name is confusingly similar to Complainant’s PBS KIDS PLAY! mark.
i. Respondent adds the generic top-level domain (“gTLD”) “.net” to Complainant’s mark. Respondent additionally removes the exclamation mark and the spaces between the words in Complainant’s mark.
6. Respondent has no rights or legitimate interests in the <pbskidsplay.net> domain name.
7. There is no correlation in the WHOIS information or otherwise between the disputed domain name and Respondent. Complainant has never authorized Respondent to use its PBS KIDS PLAY! mark or PBS KIDS marks in any way.
8. Respondent uses the disputed domain name to attract Internet users to its website that includes various games, some featuring popular children’s media characters, none of which are featured on Complainant’s programming or websites. Many of the “games” on Respondent’s resolving website are actually links to alternative game websites.
9. Respondent registered and is using the <pbskidsplay.net> domain name in bad faith.
10. Respondent attempts to capitalize on Complainant’s recognized brand by misleading Internet users intending to visit Complainant’s websites, to commercial ventures that presumably compensate Respondent for attracting hits to their websites.
11. Respondent’s use of the disputed domain name tarnishes Complainant’s reputation and dilutes Complainant’s mark by confusing Internet users.
12. Respondent had knowledge of Complainant and its mark as evidenced by the visual format similarity between Respondent’s resolving website and Complainant’s legitimate website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Public Broadcasting Service of Arlington, VA, USA, is the owner of the mark PBS which it claims to have used continuously for more than thirty years. Complainant owns domestic and international registrations for its PBS mark and other related marks in its PBS family of marks. Complainant is also the owner of a domestic registration for the mark PBS KIDS PLAY!, which it has used continuously since at least it’s registration in 2010, in connection with the provision of internet streaming of learning games and materials for children along with a variety of other educational services.
Respondent is HOSSEIN FARROKH HAYATI / AGNET of Melbourne, Victoria, Australia. Respondent’s registrar’s address is listed as Kirkland, WA, USA. The Panel notes that the WHOIS information for the disputed domain name lists “HOSSEIN FARROKH HAYATI” as registrant of the <pbskidsplay.net> domain name. Respondent registered the domain name on or about December 30, 2011.
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 contends that its PBS KIDS website was established in 1997 and is a noncommercial, safe and educational online space designed to provide children with online games that both entertain and educate. Complainant states that its website also suggests offline activities to enhance learning. Complainant argues that it owns the PBS family of marks and has used the PBS mark continuously for more than thirty years. Complainant provides evidence that it owns registrations with the USPTO for the PBS KIDS PLAY! (Reg. No. 3,767,983 registered March 30, 2010) and PBS KIDS marks (Reg. No. 2,433,830 registered March 6, 2001). Complainant states that it also owns various registrations for the PBS KIDS mark in countries around the world including Brazil’s INPI (Reg. No. 821,926,268 registered August 27, 1999) and the CIPO (Reg. No. TMA635,637 registered March 18, 2005). The Panel notes that prior panels have determined that a complainant’s registration with a trademark agency is sufficient to establish the complainant’s rights in the registered trademark regardless of whether the respondent resides in the jurisdiction of the registration agency. In W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010), the panel wrote that, “[the Respondent’s] USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). The Panel here finds that Complainant’s USPTO registrations establish Complainant’s rights in the PBS marks pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <pbskidsplay.net> domain name is confusingly similar to Complainant’s PBS KIDS PLAY! mark. Complainant notes that Respondent adds the gTLD “.net” to Complainant’s mark. Complainant further states that Respondent additionally removes the exclamation mark and the spaces between the words in Complainant’s mark. Previous panels have determined that such variations are insufficient to differentiate the resulting domain name from the incorporated mark under Policy ¶ 4(a)(i). See Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) where the panel found that the addition of the gTLD “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark; see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) that held that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel here finds that Respondent’s <pbskidsplay.net> domain name is confusingly similar to Complainant’s PBS KIDS PLAY! mark.
The Complainant has proven this element.
The Panel recognizes 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). The Complainant has met this burden.
Complainant asserts that Respondent has no rights or legitimate interests in the <pbskidsplay.net> domain name. Complainant argues that there is no correlation in the WHOIS information or anywhere else between the disputed domain name and Respondent. Complainant states that it has never authorized Respondent to use its PBS KIDS PLAY! mark or PBS KIDS marks in any way. In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel concluded that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark. The Panel here finds that since nothing in the record connects the Respondent and the disputed domain name, Respondent is not commonly known by the <pbskidsplay.net> domain name under Policy ¶ 4(c)(ii).
Complainant further claims that Respondent uses the disputed domain name to attract Internet users to its website that features various games, some featuring popular children’s media characters, none of which are featured on Complainant’s programming or websites. Complainant notes that many of the “games” on Respondent’s resolving website are actually links to alternative game websites. The Panel notes that Respondent’s website features images of various cartoons. Prior panels have found that using a confusingly similar domain name to resolve to a competing website displaying links to various third-parties is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding no rights or legitimate interests where “Respondent initially used the domain name at issue to resolve to a website where educational services were offered to the same market as that served by Complainant and only altered that use following a complaint by Complainant”). The Panel here finds that Respondent is not using the <pbskidsplay.net> domain name to establish a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent’s bad faith is demonstrated by Respondent’s use of the <pbskidsplay.net> domain name in connection with a website that promotes cartoon games that compete with Complainant. Complainant states that Respondent’s use results in disruption of Complainant’s legitimate business and is thus bad faith. The Panel notes that Complainant provides examples of images and links on Respondent’s website to cartoons and games not associated with Complainant’s legitimate business. Prior panels, such as the panel in Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) have concluded that a respondent registers and uses a disputed domain name in bad faith when it is used to disrupt the complainant’s business by maintaining a website in direct competition with the complainant. The Panel here finds evidence of bad faith registration and use of the <pbskidsplay.net> domain name under ¶ 4(b)(iii) because Complainant has provided the Panel with evidence showing Respondent runs a competing website and provides links to Complainant’s competitors.
Complainant additionally claims that Respondent registered and is using the <pbskidsplay.net> domain name in bad faith under Policy ¶ 4(b)(iv). Complainant explains that Respondent attempts to capitalize on Complainant’s recognized brand by misleading Internet users intending to visit Complainant’s websites, to commercial ventures that presumably compensates Respondent for attracting hits to their websites. Complainant further alleges that Respondent’s use of the disputed domain name tarnishes Complainant’s reputation and dilutes Complainant’s mark by confusing Internet users. 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 the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant. The Panel here finds that Respondent’s use of the disputed domain name to compete with Complainant in the manner noted above indicates bad faith use and registration under Policy ¶ 4(b)(iv).
Complainant asserts that Respondent’s resolving website displays a visual format similar to Complainant’s official website. Respondent’s website has a similar format to Complainant’s as well as a similar color scheme. The Panel again notes that Respondent displays cartoon games on its resolving website, as does Complainant. The Panel further notes that Respondent’s website also features the heading “PBS Kids Play! New PBS Kids Games.” Prior panels such as, DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) have concluded that a respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website. Similarly, here Respondent uses Complainant’s mark in the heading of the website. The Panel here finds that Respondent is attempting to pass itself off as Complainant and further confuse Internet users in bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <pbskidsplay.net> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: June 18, 2014
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