DECISION

 

Television Food Network, G.P. v. Carolina Rodrigues / Fundacion Comercio Electronico

Claim Number: FA2001001881075

 

PARTIES

Complainant is Television Food Network, G.P. (“Complainant”), represented by Thorne Maginnis of Arent Fox LLP, District of Columbia, USA.  Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <foodnetworkgo.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

Petter Rindforth as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on January 29, 2020; the Forum received payment on January 29, 2020.

 

On January 30, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <foodnetworkgo.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 February 4, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 2020 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@foodnetworkgo.com.  Also on February 4, 2020, 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 February 26, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

The Complainant broadcasts a famous television cooking show. Complainant has rights in the FOOD NETWORK trademark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,771,532, registered Oct. 7, 2003). Respondent’s <foodnetworkgo.com> domain name is confusingly similar to Complainant’s trademark as Respondent merely adds the generic term “go” and the “.com” generic top-level domain (“gTLD”) to Complainant’s trademark.

 

Respondent does not have rights or legitimate interests in the <foodnetworkgo.com> domain name. Respondent is not permitted or licensed to use Complainant’s FOOD NETWORK trademark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the <foodnetworkgo.com> domain name to install malware on Internet users’ computers. In addition, Respondent attempts to sell the disputed domain name.

 

Respondent registered and uses the <foodnetworkgo.com> domain name in bad faith. First, Respondent attempts to sell the disputed domain name. Next, Respondent engages in a pattern of bad faith registration and use. Furthermore, Respondent uses the disputed domain name in attempt to download malware on Internet users’ computers. Additionally, Respondent used a privacy service to conceal its identity. Finally, Respondent had actual knowledge of the FOOD NETWORK mark prior to the registration of the <foodnetworkgo.com> domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant is the owner of the following U.S. trademark registrations:

 

No. 2,771,532 FOOD NETWORK (word), registered October 7, 2003 for services in class 41;

No. 2,791,044 FOOD NETWORK (word), registered December 9, 2003 for services in class 38;

No. 2,924,168 FOOD NETWORK (logo), registered February 1, 2005 for services in class 38;

No. 2,924,169 FOOD NETWORK (logo), registered February 1, 2005 for services in class 41;

No. 3,607,725 FOOD NETWORK (logo), registered April 14, 2009 for goods in class 9;

No. 3,613,969 FOOD NETWORK (word), registered April 28, 2009 for goods in class 9;

No. 4,790,973 FOOD NETWORK (logo), registered August 11, 2015 for services in classes 41 and 43;

No. 4,946,427 FOOD NETWORK (word), registered April 26, 2016 for goods in class 9;

No. 4,946,428 FOOD NETWORK (logo), registered April 26, 2016 for goods in class 9;

No. 5,041,361 FOOD NETWORK (logo), registered September 13, 2016 for goods in class 9;

No. 5,563,808 FOOD NETWORK (logo), registered September 18, 2018 for services in class 38; and

No. 5,457,764 FOOD NETWORK (logo), registered May 1, 2018 for services in class 41.

 

The disputed domain name was registered on August 12, 2019

 

DISCUSSION

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”).

 

Identical and/or Confusingly Similar

The Complainant claims rights to the FOOD NETWORK trademark based upon registration with the USPTO. Registration with USPTO sufficiently establishes rights in a trademark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides copies of its USPTO registrations for the FOOD NETWORK trademark (e.g., Reg. No. 2,771,532, registered Oct. 7, 2003). Therefore, the Panel finds that Complainant has rights in the FOOD NETWORK trademark per Policy ¶ 4(a)(i).

 

Complainant next claims that Respondent’s <foodnetworkgo.com> domain name is confusingly similar to Complainant’s FOOD NETWORK trademark as Respondent merely adds a modifier and a gTLD to the mark. Additions of a generic and/or descriptive term and a gTLD to a complainant’s trademark does not negate any confusing similarity between a disputed domain name and trademark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel notes, as described by the Complainant, that the disputed domain name includes the Complainant’s trademark FOOD NETWORK (written in one word), followed by the term “go” (often used to describe a quick and/or movable service), followed by the gTLD .com. That is indeed not enough, and the Panel find that the <foodnetworkgo.com> does not contain changes that would sufficiently distinguish it from the FOOD NETWORK mark per Policy ¶ 4(a)(i)

 

Rights or Legitimate Interests

Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 Complainant argues that Respondent has no rights or legitimate interests in the <foodnetworkgo.com> domain name as Respondent is not authorized to use Complainant’s FOOD NETWORK trademark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged, under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s trademark supports a finding that respondent does not have rights or legitimate interests in 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 a privacy service was used by Respondent, but was lifted as a result of this proceeding. As a result, the Panel see that the WHOIS information of record identifies registrant as “Carolina Rodrigues / Fundacion Comercio Electronico” Furthermore, there is no evidence in the record to suggest that Respondent was authorized to use Complainant’s FOOD NETWORK trademark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.

 

Additionally, Complainant argues that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Complainant claims that Respondent uses the disputed domain name to a webpage that attempts to download malware on Internet users’ computers. Use of a disputed domain name to distribute malicious software to users’ computers does indeed not constitute a bona fide offering or a legitimate use per Policy ¶¶ 4(c)(i) or (iii). See Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy 4(c)(i) & (iii).”). Here, Complainant contends the disputed domain name redirects unsuspecting Internet users to a different, unrelated commercial website, which attempts to install software on the visitor’s computer. Therefore, the Panel clearly find that the Respondent lacks rights or legitimate interests with respect to the disputed domain name pursuant to Policy ¶¶ 4(c)(i) or (iii).

 

Finally, Complainant contends that Respondent is currently offering the disputed domain name for sale. Offering to sell a domain name for an amount exceeding the registration costs of the domain name does not constitute a bona fide offering or a legitimate use per Policy ¶¶ 4(c)(i) or (iii). See Wal-Mart Stores, Inc. v. Lars Stork, Case No. D2000-0628 (WIPO, Aug. 11, 2000) (finding the respondent’s attempt to sell the domain name was not a legitimate noncommercial or fair use of the domain name). Here, Complainant contends that Respondent is offering the disputed domain name for sale for a price of $999.00. Therefore, the Panel find that the Respondent lacks rights or legitimate interests with respect to the disputed domain name pursuant to Policy ¶¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

The Complainant argues that Respondent registered and uses the disputed domain name in bad faith. Specifically, Complainant alleges that Respondent attempts to sell the <foodnetworkgo.com> domain name. Offering a domain name for sale for far more than its estimated out-of-pocket costs incurred in initially registering the disputed domain name is evidence of bad faith per Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). As noted above, Complainant contends that Respondent offered to sell the <foodnetworkgo.com> domain name for a sale price of $999.99. Therefore, the Panel find that Respondent registered and uses the <foodnetworkgo.com> domain name in bad faith under Policy ¶ 4(b)(i).

 

Next, Complainant argues that Respondent has engaged in a pattern of bad faith registration and use. A respondent’s adverse UDRP decision history may reflect a pattern of bad faith registration under Policy ¶ 4(b)(ii). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Here, Complainant contends that in the extensive list of Forum decisions listed in Annex H – 74 decisions in total – the panels have uniformly ordered transfers of the subject domain names, which were held to be used and registered in bad faith by the Respondent. Therefore, the Panel find that the Respondent registered and uses the <foodnetworkgo.com> domain name in bad faith under Policy ¶ 4(b)(ii).

 

In addition, Complainant contends that Respondent links users visiting the disputed domain name to a webpage which attempts to download malware on Internet users’ computers. Use of malicious software constitutes bad faith per Policy 4(a)(iii). See Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA1502001603444 (Forum Mar. 19, 2015) (“Using the disputed domain name to download malicious software into unsuspecting viewers’ computers evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). As previously mentioned, Complainant contends the disputed domain name redirects unsuspecting Internet users to a different, unrelated commercial website, which attempts to install software on the visitor’s computer. Therefore, the Panel find that the Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).

 

Finally, Complainant argues that Respondent registered the <foodnetworkgo.com> domain name with actual knowledge of Complainant’s rights in the FOOD NETWORK trademark. Registering a domain name with knowledge of another’s rights therein may be indicative of bad faith under Policy ¶4(a)(iii). See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation). Here, Complainant argues that Respondent’s knowledge of Complainant’s trademark prior to registering <foodnetworkgo.com> is apparent from the notoriety of Complainant’s trademark and from Respondent’s use of the domain name which wholly incorporates the trademark, and Respondent registered the disputed domain name many years after Complainant first began using the FOOD NETWORK trademark. Therefore, the Panel find that Respondent registered the <foodnetworkgo.com> domain name with actual knowledge of Complainant’s FOOD NETWORK mark, thus demonstrating bad faith per Policy ¶4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <foodnetworkgo.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Petter Rindforth, Panelist

Dated:  March 10, 2020

 

 

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