CBS Interactive, Inc. v. Hilmi Firdaus
Claim Number: FA1903001834600
Complainant is CBS Interactive, Inc. (“Complainant”), represented by Peter Kidd of Kilpatrick Townsend & Stockton LLP, California, United States. Respondent is Hilmi Firdaus (“Respondent”), Indonesia
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cnet.tech>, registered with DOTSERVE 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 18, 2019; the Forum received payment on March 18, 2019.
On April 2, 2019, DOTSERVE INC. confirmed by e-mail to the Forum that the <cnet.tech> domain name is registered with DOTSERVE INC. and that Respondent is the current registrant of the name. DOTSERVE INC. has verified that Respondent is bound by the DOTSERVE 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 April 4, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 24, 2019 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@cnet.tech. Also on April 4, 2019, 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 Forum transmitted to the parties a Notification of Respondent Default.
On April 26, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 and its predecessor CNET Networks, Inc. have used the CNET mark in commerce to identify its technology news, technology, and consumer electronics information services since 1986. Complainant has rights in the CNET mark through its trademark registrations with the United States Patent and Trademark office (“USPTO”) (e.g. Reg. No. 2,764,690, registered Sep. 16, 2003). See Compl. Ex. D. The disputed domain name is identical to Complainant’s CNET mark because Respondent only added the “.tech” generic top-level domain (“gTLD”) to the mark.
ii) Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, the domain name resolves to a website that displays an identical copy of Complainant’s legitimate website.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent mimics Complainant’s legitimate website at the disputed domain name in an attempt to confuse users seeking Complainant’s services. Furthermore, Respondent was well aware and knowledgeable of Complainant’s rights in the CNET mark due to notoriety of Complainant’s mark.
B. Respondent
Respondent did not submit a response.
1. Respondent registered the disputed domain name on April 24, 2018.
2. Complainant has established rights in the CNET mark through its registrations with the USPTO (e.g. Reg. 2,764,690, registered Sep. 16, 2003).
3. Respondent’s webpage of the disputed domain name revolves to a website which displays an unauthorized copy of Complainant’s <cnet.com> website.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims to have rights in the CNET mark through its registrations with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in a mark per Policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Here, Complainant has provided this Panel with a copy of its USPTO registration for the CNET mark. (e.g. Reg. 2,764,690, registered Sep. 16, 2003). See Compl. Ex. D. Therefore, the Panel finds Complainant has rights in the CNET mark per Policy ¶ 4(a)(i).
Next, Complainant claims Respondent’s disputed domain name is identical to Complainant’s CNET mark because Respondent merely added a gTLD to the mark. Adding only a gTLD to a fully incorporated mark is insufficient change to make the disputed domain name distinct from a complainant’s mark per Policy ¶ 4(a)(i). See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). As Complainant contends, Respondent’s sole change to Complainant’s CNET mark was adding a “.tech” gTLD to the mark. Therefore, the Panel finds that Respondent’s disputed domain name is identical to Complainant’s CNET mark per Policy ¶ 4(a)(i).
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant asserts Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name, nor was Respondent authorized to use Complainant’s CNET mark. Where there is no response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ (c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Further, lack of authorization to use a complainant’s mark may support a finding that the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel notes that the WHOIS information identifies Respondent as “Hilmi Firdaus” and there is nothing in the record to suggest that Respondent is authorized to use the CNET mark. Thus, the Panel finds Respondent is not commonly known by the <cnet.tech> domain name per Policy ¶ (c)(ii).
Complainant further argues that Respondent does not use the disputed domain name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant states that Respondent uses the infringing domain name to impersonate Complainant by displaying an identical and unauthorized copy of Complainant’s legitimate domain name. Attempts to mimic or pass off as a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and (iii) when the respondent used the disputed domain name to present users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content.”). Complainant argues that Respondent’s webpage revolves to a website which displays an unauthorized copy of Complainant’s <cnet.com> website. See Compl. Ex. H. Therefore, the Panel finds Respondent’s attempts to pass off as Complainant in order to increase Internet traffic does not constitute a bona fide offering of goods or services or a legitimate noncommercial fair use per Policy ¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent uses the disputed domain name to impersonate Complainant demonstrates bad faith. Panels have previously held that passing off or impersonating a complainant at a disputed domain name may indicate bad faith registration and use per Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv) because the respondent used the disputed domain name to present users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content” and used the website to gain access to users’ cryptocurrency accounts). As Complainant contends, Respondent attempts to impersonate Complainant’s legitimate <cnet.com> website by using Complainant’s mark and offering similar services. See Compl. Ex. H. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Furthermore, Complainant argues Respondent was well aware of Complainant’s rights in the CNET mark at the time Respondent registered and subsequently used the disputed domain name and indicates bad faith registration and use. Panel have not generally regarded constructive notice to be sufficient for finding of bad faith, actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name is adequate to find bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant contends that its extensive, global use and fame of the CNET mark indicates Respondent had actual knowledge of Complainant’s rights in the mark. Therefore, the Panel infers, due to the fame of Complainant's mark and the manner of use of the disputed domain name by Respondent that Respondent had actual notice of Complainant’s rights in the CNET mark per 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 <cnet.tech> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: April 29, 2019
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