American Broadcasting Companies, Inc. v.
Domain Administrator
Claim
Number: FA0506000492946
Complainant is American Broadcasting Companies, Inc. (“Complainant”),
represented by J. Andrew Coombs, of J. Andrew Coombs, A Professional Corporation, 450 North Brand Boulevard, Suite 600, Glendale, CA 91203-2349. Respondent is Domain Administrator (“Respondent”), 19744 Beach Blvd # 428,
Huntington Beach, CA 92648.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <6abc.com>, registered with Bulkregister,
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
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
7, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 9, 2005.
On
June 8, 2005, Bulkregister, Llc. confirmed by e-mail to the National
Arbitration Forum that the domain name <6abc.com> is registered
with Bulkregister, Llc. and that Respondent is the current registrant of the
name. Bulkregister, Llc. has verified
that Respondent is bound by the Bulkregister, Llc. 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
June 10, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 30, 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@6abc.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
July 6, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed the Honorable
Charles K. McCotter, Jr. (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <6abc.com>
domain name is confusingly similar to Complainant’s ABC mark.
2. Respondent does not have any rights or
legitimate interests in the <6abc.com> domain name.
3. Respondent registered and used the <6abc.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
American Broadcasting Companies, Inc., operates one of four national broadcast
networks under the name ABC, and has done so continuously for more than fifty
years. The ABC network consists of
numerous “affiliate” stations and a small number of “owned and operated”
stations each identified by a unique set of local “call” letters as well as by
the “channel” on which the station is found.
One particular
station located in Philadelphia, PA operates under the call letters WPVI, but
is more commonly known as and referred to by the local channel on which it is
found, along with the mark associated with the national network, or
“6ABC.” Complainant has put forth
evidence showing long time use and promotion of the moniker 6ABC, including
significant expenditure on marketing in association with WPVI and their
programming broadcast.
Complainant has
registered the ABC mark with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 755703 issued August 27, 1963) for use in the broadcasting
of television programs as well as for use in various promotional goods for sale
and distribution by the network.
Respondent
registered the <6abc.com> domain name on December 23, 2000. Respondent’s domain name resolves to a
website featuring hyperlinks to additional unrelated commercial websites.
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."
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(e), 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 (Nat. Arb. 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.").
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 has
established rights in the ABC mark through registration of the mark with the
USPTO. See Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the . . . mark with the USPTO
establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (“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.”).
Respondent’s
<6abc.com> domain name is confusingly similar to Complainant’s ABC
mark as the domain name simply adds the number 6 to the beginning of the mark
while also adding the generic top-level domain “.com” to the end. Such minor additions are insufficient to significantly
distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy
¶ 4(a)(i). See Am. Online
Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that
the addition of the numeral 4 in the domain name <4icq.com> does nothing
to deflect the impact on the viewer of the mark ICQ and is therefore
confusingly similar); see also Hitachi, Ltd. v. Fortune Int’l Dev.
Ent. Co., D2000-0412 (WIPO July 2, 2000) (finding that the domain name
<hitachi2000.net> is confusingly similar to the complainant’s mark); see
Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding that “the addition of the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts Respondent has no rights or legitimate interests in the domain name <6abc.com>. By failing to submit a response, Respondent
has not demonstrated any rights or legitimate interests in the domain name and
the Panel construes this as evidence of a lack of rights and legitimate
interests. See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also BIC Deutschland GmbH & Co. KG v. Tweed,
D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has
failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c)
of the Policy, any rights or legitimate interests in the domain name.”).
Respondent is
using the confusingly similar <6abc.com> domain name to operate a
website that features links to various commercial websites from which
Respondent presumably receives referral fees.
Such diversion of Internet users to Respondent’s website in which it is
the sole beneficiary is neither a use that comports with a bona fide offering
of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or
fair use pursuant to Policy ¶ 4(c)(iii).
See Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat. Arb. Forum
Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i)
and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”);
see also WeddingChannel.com Inc. v. Vasiliev, FA 156716
(Nat. Arb. Forum June 12, 2003) (finding that the respondent’s “use of the disputed domain name to redirect Internet users
to websites unrelated to the complainant’s mark, websites where the 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 Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum
Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to
Complainant’s mark to divert Internet users to websites unrelated to
Complainant's business does not represent a bona fide offering of goods or
services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii).”).
Furthermore,
nothing in the record indicates that Respondent is either commonly known by the
disputed domain name or authorized to register domain names featuring
Complainant’s ABC mark. In light of
these failings, the Panel finds that Respondent has not established rights or
legitimate interests in the <6abc.com> domain name pursuant to Policy ¶
4(c)(ii). See Gallup,
Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark); see
also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of
Complainant’s mark there must be strong evidence that Respondent is commonly
known by the disputed domain name in order to find that Respondent has rights
or legitimate interests in the disputed domain name . . . .”).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <6abc.com> domain name along with the goodwill
associated with the ABC mark to divert Internet users to various non-competing
websites for Respondent’s commercial gain.
Because of the likelihood of confusion with Complainant’s mark, consumers
accessing Respondent’s domain name may presume sponsorship or affiliation with
the corresponding hyperlinks and websites.
Therefore, such diversionary use for profit coupled with the failure to
contest the allegations set forth by Complainant has led the Panel to conclude
the domain name was registered and used in bad faith pursuant to Policy ¶
4(b)(iv). See Kmart v. Khan,
FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent
profits from its diversionary use of the complainant's mark when the domain
name resolves to commercial websites and the respondent fails to contest the
complaint, it may be concluded that the respondent is using the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv)); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb.
Forum Oct. 11, 2000) (finding that the respondent registered the domain name
<statefarmnews.com> in bad faith because the respondent intended to use
the complainant’s marks to attract the public to the web site without permission
from the complainant); see also Drs.
Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where the respondent directed Internet users seeking the
complainant’s site to its own website for commercial gain).
Furthermore,
evidence of long-established and widespread use of the Complainant’s trademarks
along with registration with the USPTO confers actual or constructive notice on
those seeking to register or use the mark in a confusingly similar way. See Victoria’s
Cyber Secret Ltd. v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal
Register registration [of a trademark or service mark] is constructive notice
of a claim of ownership so as to eliminate any defense of good faith adoption”
pursuant to 15 U.S.C. § 1072); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000)
(finding that the respondent had actual and constructive knowledge of the
complainant’s EXXON mark given the worldwide prominence of the mark and thus
the respondent registered the domain name in bad faith); see also Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <6abc.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
July 15, 2005
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