CBS Broadcasting, Inc. v. Markus Tamm
Claim Number: FA1903001834721
Complainant is CBS Broadcasting, Inc. (“Complainant”), represented by Peter Kidd of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Markus Tamm (“Respondent”), Latvia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cbssportsnet.com>, registered with NameSilo, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 19, 2019; the Forum received payment on March 19, 2019.
On March 19, 2019, NameSilo, LLC confirmed by e-mail to the Forum that the <cbssportsnet.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 20, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 9, 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@cbssportsnet.com. Also on March 20, 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.
April 11, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
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 (e.g. Reg. No. 2,758,242, registered Sep. 2, 2003), CBS SPORTS (e.g. Reg. No. 3,644,257, registered June 23, 2009), and CBS SPORTS NETWORK (e.g. Reg. No. 4,116,145, registered Mar. 20, 2012) marks through its registration of the marks with the United States Patent and Trademark Office (“USPTO”). See Compl. Annex D. Complainant also has common law rights in the CBS mark dating back to 1927. See Compl. Annexes F-I. Respondent’s <cbssportsnet.com> domain name is identical or confusingly similar to Complainant’s CBS mark as it adds the generic words “sports” and “net” along with the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <cbssportsnet.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use 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 uses the domain name to offer click-through advertisements that link to Complainant’s competitors. See Compl. Annex J.
Respondent registered and/or acquired and uses the <cbssportsnet.com> domain name in bad faith to disrupt Complainant’s business and benefit from the goodwill associated with Complainant’s marks in order to offer links advertising Complainant’s competitors. See Compl. Annex J. Further, Respondent had actual knowledge of Complainant’s marks as the marks are famous worldwide and as Respondent displays links referencing Complainant on the resolving webpage. See Compl. Annexes D-J.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a global leader in news, sports, and entertainment programming, and one of the leading television and radio broadcasting companies in the United States.
2. Complainant has established its trademark rights in the CBS mark (e.g. Reg. No. 2,758,242, registered Sep. 2, 2003), CBS SPORTS (e.g. Reg. No. 3,644,257, registered June 23, 2009), and CBS SPORTS NETWORK (e.g. Reg. No. 4,116,145, registered Mar. 20, 2012) marks through its registration of the marks with the United States Patent and Trademark Office (“USPTO”).
3. Complainant has also established its common law trademark rights in the CBS mark dating back to 1927.
4. The <cbssportsnet.com> domain name was first registered on December 5, 2000.
5. Respondent uses the disputed domain name to offer click-through advertisements that link to Complainant’s competitors.
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 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 (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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims rights in the CBS (e.g. Reg. No. 2,758,242, registered Sep. 2, 2003), CBS SPORTS (e.g. Reg. No. 3,644,257, registered June 23, 2009), and CBS SPORTS NETWORK (e.g. Reg. No. 4,116,145, registered Mar. 20, 2012) marks through its registration of the marks with the USPTO. See Compl. Annex D. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the CBS, CBS SPORTS, and CBS SPORTS NETWORK marks for the purposes of Policy ¶ 4(a)(i).
Complainant also submits that it holds common law trademark rights in the CBS mark dating back to 1927. To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). To support its common law rights argument, Complainant provides evidence from Wikipedia, information from its own website located at <cbs.com>, and screenshots of Complainant’s <cbssports.com> and <cbssportsnetwork.com> websites. See Compl. Annexes F-I. Complainant also lists the first use date as Oct. 15, 1933 on its USPTO registration. See Compl. Annex D. As such, the Panel finds that Complainant does hold common law rights in the CBS mark for the purposes of Policy ¶ 4(a)(i) dating back to 1927.
The next question that arises is whether the disputed domain name is identical or confusingly similar to any of Complainant’s registered and/or common law CBS marks. Complainant argues that Respondent’s <cbssportsnet.com> domain name is identical or confusingly similar to Complainant’s CBS mark as it adds the generic words “sports” and “net” along with the “.com” gTLD. Similar changes in a registered mark have failed to distinguish a domain name sufficiently for the purposes of Policy ¶ 4(a)(i). See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). The Panel therefore finds that the <cbssportsnet.com> domain name is confusingly similar to the CBS mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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), 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CBS mark and to use it in its domain name, adding the generic words “sports” and “net” that do not negate the confusing similarity with Complainant’s trademark;
(b) The <cbssportsnet.com> domain name was first registered on December 5, 2000;
(c) Respondent uses the disputed domain name to offer click-through advertisements that link to Complainant’s competitors;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent has no rights or legitimate interests in the <cbssportsnet.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Relevant information includes the WHOIS, assertions by a complainant regarding the nature of its relationship with a respondent, and other evidence in the record to support these assertions. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS identifies “Markus Tamm” as the registrant, and nothing in the record indicates that Complainant authorized Respondent to use the mark for any purpose. Accordingly, the Panel agrees that Respondent is not commonly known by the <cbssportsnet.com> domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent uses the domain name to offer click-through advertisements that link to Complainant’s competitors. Using a domain name to display hyperlinks to services relating to a complainant generally does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Barclays PLC v. Antwan Barnes, FA 1806411 (Forum Oct. 20, 2018) (“Using a domain name to offer links to services in direct competition with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).”). Complainant provides a screenshot of the resolving webpage, which displays links such as “ANTENA TV” and “SPORT ON TV.” See Compl. Annex J. Accordingly, the Panel agrees and finds that Respondent’s use of the domain name to offer competing hyperlinks fails to confer rights and legitimate interests in the domain name for the purposes of Policy ¶¶ 4(c)(i) or (iii).
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 has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent registered and uses the <cbssportsnet.com> domain name in bad faith to disrupt Complainant’s business and benefit from the goodwill associated with Complainant’s marks in order to offer links advertising Complainant’s competitors. Using a confusingly similar domain name to offer competing hyperlinks can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”). The Panel notes that Complainant provides a screenshot of the resolving webpage, which displays links such as “ANTENA TV” and “SPORT ON TV.” See Compl. Annex J. Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempted to benefit commercially off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Secondly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the CBS, CBS SPORTS, and CBS SPORTS NETWORK marks at the time of registering the <cbssportsnet.com> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince 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 Respondent’s knowledge can be inferred given the worldwide fame of the marks and as Respondent displays links referencing Complainant on the resolving webpage. See Compl. Annexes D-J. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration under Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the CBS mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cbssportsnet.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 11, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page