CBS Broadcasting, Inc. v. Super Privacy Service LTD c/o Dynadot
Claim Number: FA1903001834601
Complainant is CBS Broadcasting, Inc. (“Complainant”), represented by Peter Kidd of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Nowel Whitehouse, Arkansas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cbssports.tv>, registered with Dynadot, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Eleni Lappa as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 18, 2019; the Forum received payment on March 18, 2019.
On March 21, 2019, Dynadot, LLC confirmed by e-mail to the Forum that the <cbssports.tv> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC 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 March 21, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 15, 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@cbssports.tv. Also on March 21, 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.
A timely Response was received and determined to be complete on April 15, 2019.
An Additional Submission was submitted by Complainant on April 19, 2019.
On April 19, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eleni Lappa 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a global leader in news, sports, and entertainment programming, and is one of the leading television and radio broadcasting companies in the United States. Complainant has rights in the CBS SPORTS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,644,257, registered Jun. 23, 2009). See Compl. Annex D. Respondent’s <cbssports.tv> domain name is identical or confusingly similar to Complainant’s mark as it wholly incorporates Complainant’s mark and merely adds the country code top-level domain (“ccTLD”) “.tv” to the mark.
Respondent has no rights or legitimate interests in the <cbssports.tv> domain name. Respondent is not commonly known by the disputed domain name and there is no relationship between Complainant and Respondent that give Respondent rights to own or use any domain name containing the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent displays Complainant’s logo and graphics associated with Complainant to impersonate Complainant.
Respondent registered and uses the <cbssports.tv> domain name in bad faith. Respondent uses the disputed domain name to impersonate Complainant in an attempt to divert Internet traffic to the disputed domain name. Respondent had actual knowledge of Complainant’s rights in the mark at the time of registration based on the worldwide recognition of the mark and Respondent’s use of Complainant’s logo on the resolving webpage, which is evidence of bad faith.
B. Respondent
Complainant has failed to show the <cbssports.tv> domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Complainant has shown registration and use in the <cbssports.com> domain name, but this is insufficient to show trademark rights in the <cbssports.tv> domain name.
Respondent has removed references to Complainant’s live Super Bowl coverage from the <cbssports.tv> domain name.
Complainant has failed to establish that the <cbssports.tv> domain name was both registered and is being used in bad faith. No reasonable Internet user would associate the content previously displayed by on the resolving webpage as being associated with Complainant. Complainant has not provided evidence that the content displayed mimics <cbssports.com>. The disputed domain name was not used for commercial gain as it did not solicit any commercial activity from Internet users. Finally, Complainant registered the CBS SPORTS mark just one year prior to Respondent’s registration of the disputed domain name. The Panel may note that the <cbssports.tv> domain name was registered on October 11, 2010. See Compl. Annex A.
C. Additional Submissions
Complainant filed additional arguments in reply to Respondent’s filed Response.
Complainant’s basis for its Complaint regarding the domain name under review, is its use, registration, and ownership of, 1) the CBS, CBS SPORTS, CBS SPORTS NETWORK, and CBSSPORTS.COM marks (the “CBS Marks”), and 2) its CBSSPORTS.COM, CBSSPORTS.ORG, CBSSPORTSCAST.COM, CBSSPORTSNETWORK.COM domain names (collectively, “CBS Domain Names”).
Respondent’s filed Response added no factual elements in terms of prior registered or unregistered rights or legitimate interests of the Respondent, related to the domain name under review,
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.
Complainant asserts rights in the CBS SPORTS mark based, inter alia, on its list of relevant trademark registrations with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of the Policy. Accordingly, the Panel finds that Complainant has established rights in the CBS SPORTS mark for the purposes of the Policy.
Complainant next argues that Respondent’s CBS SPORTS domain name is identical or confusingly similar to Complainant’s mark as wholly incorporates Complainant’s mark and merely adds the ccTLD “.tv” to the mark. It is clear to this Panel that a ccTLD is, for the purposes of Policy analysis, clearly not a factor sufficiently able to distinguish a domain name for the purposes of averting any ensuing risk of confusion. Moreover, the dominant and distinctive part of the domain name under examination is the term “cbs”, that serves as a clear reference to the Complainant’s company name and distinguishing feature of origin, since the word “sports” is more descripive and generic. In light of the foregoing, this Panel determines that the <cbssports.tv> domain name is identical or confusingly similar to preceding rights of the Complainant.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under the Policy and then the burden shifts to Respondent to show it does have rights or legitimate interests.
On the one hand, this Panel finds that Claimant convincingly argues that Respondent lacks rights or legitimate interest in the <cbssports.tv> domain name as Respondent is not commonly known by the disputed domain name nor is there any relationship between Complainant and Respondent that give Respondent rights to own or use any domain name containing the CBS SPORTS mark.
On the other hand, Respondent offered no substantive evidence to establish that it is commonly known by the domain name under examination or that its registration and use of the latter derives from a relationship between Complainant and Respondent that give Respondent rights to own or use any domain name containing the CBS SPORTS mark.
Therefore, the Panel determines that Respondent lacks rights and/or legitimate interests in the domain name under examination.
Complainant argues Respondent had actual knowledge of Complainant’s rights in the CBS SPORTS mark at the time of registration and that, based on the worldwide recognition of the CBS SPORTS mark, and thus registered it in bad faith. Additionally, Complainant argues that Respondent’s use of Complainant’s logo and affiliated graphics, indicates that Respondent had actual knowledge of the Complainant’s preceding rights, even at the time of registration. The Panel finds that Respondent had actual knowledge of the CBS SPORTS mark at the time of registration of the disputed domain name, thus constituting bad faith registration and use under the Policy.
Complainant contends that Respondent registered and uses the <cbssports.tv> domain name in bad faith as Respondent attempts to divert Internet users to the disputed domain name by impersonating Complainant and submits screenshots indicating such use or attempted use, that Respondent claims has since been removed. Use of a disputed domain name to mimic a complainant’s website in order to confuse Internet users into believing an association or affiliation exists between the complainant and respondent can demonstrate bad faith under the Policy. In light of the above, this Panel finds that Respondent registered and uses the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cbssports.tv> domain name be TRANSFERRED from Respondent to Complainant.
Eleni Lappa, Panelist
Dated: May 2, 2019
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