ABS-CBN International v. Ryan G Foo / PPA Media Services
Claim Number: FA1408001575355
Complainant is ABS-CBN International (“Complainant”), represented by Charlene L. Minx of Steptoe & Johnson LLP, California, USA. Respondent is Ryan G Foo / PPA Media Services (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thefilipinochannel.com>, registered with Internet.bs Corp..
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 15, 2014; the National Arbitration Forum received payment on August 15, 2014.
On August 22, 2014, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <thefilipinochannel.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 August 26, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 15, 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@thefilipinochannel.com. Also on August 26, 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 September 18, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
i. Complainant, ABS-CBN International, has been using THE FILIPINO CHANNEL in commerce since mark in commerce since 1994 in connection with its global television network.
ii. Complainant has a valid registration with the United States Patent and Trademark Office (“USPTO”) for THE FILIPINO CHANNEL mark (Reg. No. 1,994,383, registered on August 20, 1996).
iii. The disputed domain name is identical to the mark in which Complainant has rights.
iv. Respondent is not commonly known by the disputed domain name.
v. Respondent is using the disputed domain name to redirect Internet users to third party websites that compete directly with Complainant’s business.
vi. Respondent’s use of the disputed domain name is disrupting the business of Complainant.
vii. Respondent is using the disputed domain name for commercial gain through reliance on confusion or mistake by linking potential Complainant customers to products sold by competitors and by collecting click-through revenue from the site.
viii. Respondent registered the disputed domain name <thefilipinochannel.com> on March 17, 2002.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the THE FILIPINO CHANNEL mark. Respondent’s domain name is confusingly similar to Complainant’s THE FILIPINO CHANNEL mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <thefilipinochannel.com> domain name, and that Respondent registered and uses the domain name 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 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 has shown that it has been using THE FILIPINO CHANNEL in commerce since mark in commerce since 1994 in connection with its global television network. Complainant has a valid registration with the USPTO for THE FILIPINO CHANNEL mark (Reg. No. 1,994,383, registered on August 20, 1996). Although Respondent resides in Panama, it is irrelevant under Policy ¶ 4(a)(i) as Complainant need not register its mark in the country where Respondent operates. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Accordingly, Complainant’s registration of THE FILIPINO CHANNEL mark with the USPTO demonstrates that it has rights in the mark pursuant to Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant alleges that the disputed domain name <thefilipinochannel.com> is identical to the mark in which Complainant has rights. The domain name encompasses the entirety of Complainant’s mark with the mere deletion of spaces between words and the addition of the generic top-level domain (“gTLD”) “.com”. The deletion of spaces and the addition of a gTLD does not adequately distinguish the disputed domain name from Complainant’s mark. See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ . . . [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”). Accordingly, the Panel determines that the disputed domain name is identical to the mark in which Complainant has rights.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant urges that Respondent is not commonly known by the disputed domain name. The registrant of the disputed domain name is listed as “Domain Administrator”. In Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006), the panel found 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. This case is comparable because the only information available to the Panel is the WHOIS information due to Respondent’s default. As such, the Panel holds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent is using the disputed domain name to redirect Internet users to third-party websites that compete directly with Complainant’s business. The landing page of the disputed domain name features links to third party websites that compete with Complainant’s television business. The links include, “Filipino Channel TV,” “HuluPlus,” and “Watch Satellite TV on Computer.” The Panel finds that Respondent is not using the disputed domain name for 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) as the disputed domain name links Internet users to competitors of Complainant. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant submits that Respondent’s use of the disputed domain name is disrupting the business of Complainant. The disputed domain name leads Internet users to links that connect to the sale of products that compete directly with Complainant. Because Respondent is using the disputed domain name to link Internet users to competitors of Complainant, the Panel concludes Respondent has registered and is using the disputed domain name in bad faith pursuant to ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant contends that Respondent is using the disputed domain name for commercial gain through reliance on confusion or mistake by linking potential Complainant customers to products sold by competitors and by collecting click-through revenue from the site. Further, Respondent presumably receives compensation for featuring those third-party links. Accordingly, the Panel holds that Respondent is attempting to mislead consumers as to Complainant’s affiliation with the disputed domain name, and that Respondent likely profits from the resulting confusion. Therefore, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thefilipinochannel.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 23, 2014
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