National Arbitration Forum

 

DECISION

 

American Broadcasting Companies, Inc. v. Rosa Edwards

Claim Number: FA0501000399593

 

PARTIES

Complainant is American Broadcasting Companies, Inc. (“Complainant”), represented by J. Andrew Coombs, 450 North Brand Boulevard, Suite 600, Glendale, CA 91203-2349.  Respondent is Rosa Edwards (“Respondent”), represented by Preston J. Edwards, Sr., 7231 Arbor Drive, New Orleans, LA 70126.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <goodmorningamerica.com>, registered with Enom, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

David S. Safran as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 11, 2005; the National Arbitration Forum received a hard copy of the Complaint on January 11, 2005.

 

On January 11, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <goodmorningamerica.com> is registered with Enom, Inc. and that the Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On January 14, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 3, 2005 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@goodmorningamerica.com by e-mail.

 

A belated Response was received and determined to be complete on February 10, 2005.  However, in view of the fact that the brief delay in filing of the Response was not prejudicial to Complainant and Complainant has not objected to the belated filing nor has Complainant moved to have the Response stricken, the Response has been considered in formulating of this decision. See Gaiam, Inc. v. Nielsen, FA 112469 (Nat. Arb. Forum July 2, 2002) (“In the interest of having claims decided on the merits and not by default and because Complainant has not been prejudiced in the presentation of its case by the late submission, Respondent’s opposition documents are accepted as timely.”).

 

On February 17, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David S. Safran as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

 

A. Complainant

 

Complainant owns U.S. Trademark Registration No. 1,172,617 for the mark GOOD MORNING AMERICA and contends that Respondent’s domain <goodmorningamerica.com> is confusingly similar to its registered trademark due to incorporation of the registered trademark in its entirety without modification.  Furthermore, Complainant contends that Respondent could obtain no legitimate interest in the domain <goodmorningamerica.com> since Respondent did not obtain permission or a license from Complainant to use its registered trademark, and because the domain was being used by Respondent in direct competition with Complainant so as to divert persons to its competitors, having only been converted to a parking site with unrelated links after receiving a cease and desist notice from Complainant.  Furthermore, Complainant asserts that the domain was registered with knowledge of Complainant’s mark, both due to the widespread use of Complainant’s trademark and as evidenced by the reference to Complainant’s Good Morning America television show on its website.

 

B. Respondent

 

Respondent contends that Complainant’s registration of the mark, GOOD MORNING AMERICA, for a television news and entertainment program does not give it exclusive rights to all uses of words “good morning America,” which are also a greeting, and that Respondent’s use of these words in a domain name neither infringe Complainant’s rights nor is likely to result in confusion.  In this regard, Respondent notes that the mark is not used as a trademark or source indicator, Complainant having acknowledged that “Respondent does not use the trademark to identify itself on its website or for any other legitimate purpose.” Additionally, Respondent contends that Complainant abandoned the right to use its trademark as a domain name by failing to take action or raise any objection to Respondent’s use of <goodmorningamerica.com> for eight years.

 

FINDINGS

The panel finds that Respondent had knowledge of Complainant’s famous trademark at the time that Respondent registered the domain <goodmorningamerica.com>, and that this domain is substantially identical to Complainant’s trademark, differing only by the addition of the “.com” TLD and the absence of spaces between the words. The Panel also finds that Respondent could reasonable have expected that members of the public looking for information about Complainant’s television show would use the URL www.goodmorningamerica.com expecting to find information about Complainant’s television show on a website having that URL, and that, until receiving a cease and desist notice from the Complainant, the domain was being used by Respondent in direct competition with Complainant by referring visitors to competing websites, and afterwards to unrelated websites. Still further, the Panel finds that Respondent is neither commonly known by the <goodmorningamerica.com> domain name nor is authorized to register domain names that feature Complainant’s GOOD MORNING AMERICA trademark.  Additionally, the Panel finds no evidence that Respondent relied upon the delay by Complainant in instituting these proceedings, nor does the Panel find any evidence that the delay has resulted in any detriment to Respondent.

 

DISCUSSION

 

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)    the 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.

 

 

Identical and/or Confusingly Similar

 

Complainant asserts that it has established rights in the GOOD MORNING AMERICA mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,172,617 issued Oct. 6, 1981) as well as through continuous use of the mark in commerce since 1975.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”).

 

Complainant argues that Respondent’s <goodmorningamerica.com> domain name is identical to Complainant’s GOOD MORNING AMERICA mark.  The Panel finds that the addition of the generic top-level domain “.com” and the omission of the spaces between the terms in Complainant’s mark are not enough to distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Kioti Tractor Div. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).

 

Rights or Legitimate Interests

 

Complainant asserts that Respondent initially used the <goodmorningamerica.com> domain name, which is identical to Complainant’s GOOD MORNING AMERICA mark, to operate a website that featured links to competing television programs.  The Panel finds that such use is not a use in connection with 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)(iii).  See Winmark Corp. v. In The Zone, FA 128652 (Nat. Arb. Forum Dec. 6, 2002) (finding that Respondent had no rights or legitimate interests in a domain name that used Complainant’s mark to redirect Internet users to a competitor’s website); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no rights or legitimate interests in a domain name that diverted Internet users to Respondent’s competing website through the use of Complainant’s mark).

 

Complainant further asserts that after receiving a demand letter from Complainant, Respondent modified its website so that it currently features links to various unrelated commercial websites.  The Panel finds that such use is not a use in connection with 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)(iii).  See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that Respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to Complainant’s mark, websites where Respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that Respondent’s diversionary use of Complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).

 

Moreover, Complainant contends that nothing in the record indicates that Respondent is either commonly known by the <goodmorningamerica.com> domain name or is authorized to register domain names that feature Complainant’s GOOD MORNING AMERICA mark.  Thus, the Panel concludes that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the notion that a respondent is commonly known by a domain name, the notion must be rejected); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent initially used the <goodmorningamerica.com> domain name, which is identical to Complainant’s GOOD MORNING AMERICA mark, to operate a website featuring links to competing television programs.  The Panel finds that such use constitutes disruption and is evidence that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iii).  See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that Respondent registered and used the domain name <eebay.com> in bad faith where Respondent has used the domain name to promote competing auction sites); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business).

 

Furthermore, Complainant argues that Respondent is using the domain  <goodmorningamerica.com>, which is identical to Complainant’s mark, to operate a website featuring links and advertisements to various third parties.  The Panel finds that consumers searching for Complainant online would become confused as to Complainant’s affiliation with the resulting website, and that Respondent takes advantage of such confusion.  Thus, the Panel concludes that Respondent’s opportunistic use of the domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website).

 

Moreover, the Panel finds that Respondent registered the disputed domain name with either actual or constructive knowledge of Complainant’s rights in the mark, due to Complainant’s incontestable registration of the mark with the USPTO as well as to the immense fame the mark has acquired through its use as the name of a popular television program in the United States.  Thus, the Panel concludes that Respondent registered and used the <goodmorningamerica.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name).

 

Laches

 

The panel also rejects Respondent’s argument of laches.  Laches requires not only a delay in asserting rights but, among other things, also reliance on the mark owner’s inaction and a prejudice to the other party resulting from such inaction[1].  Assuming that laches is even a proper argument in this context[2], the Panel finds no evidence of reliance by Respondent on Complainant’s inaction nor any prejudice to Respondent, no evidence having been presented which would indicated that the loss of the domain <goodmorningamerica.com> would prejudice Respondents efforts to develop and market a “good news” website of the type described in its Response, or which indicates how loss of this domain would adversely affect Respondent’s current parking website directory that contains only links that are unrelated to the term “good morning America.”

 

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 <goodmorningamerica.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

David S. Safran, Panelist
Dated:  March 3, 2005

 

 

 

 

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