American Broadcasting Companies, Inc. v.
Daniel Kaufman
Claim
Number: FA0508000535518
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,
USA. Respondent is Daniel Kaufman (“Respondent”), 123 W. 94 St. #1, New York, NY
10025, US.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <myabc.com>, registered with Innerwise,
Inc. d/b/a Itsyourdomain.com.
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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
8, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 9, 2005.
On
August 11, 2005, Innerwise, Inc. d/b/a Itsyourdomain.com confirmed by e-mail to
the National Arbitration Forum that the <myabc.com> domain name is
registered with Innerwise, Inc. d/b/a Itsyourdomain.com and that Respondent is
the current registrant of the name. Innerwise,
Inc. d/b/a Itsyourdomain.com has verified that Respondent is bound by the Innerwise,
Inc. d/b/a Itsyourdomain.com 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
August 12, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 1, 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@myabc.com by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
September 7, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed Hon.
Ralph Yachnin 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 <myabc.com>
domain name is confusingly similar to Complainant’s ABC mark.
2. Respondent does not have any rights or
legitimate interests in the <myabc.com> domain name.
3. Respondent registered and used the <myabc.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 television networks. Complainant has operated this network for
more than fifty years under the ABC mark.
Complainant’s television network is comprised of numerous affiliate
stations and a small number of “owned and operated” stations. The stations owned and operated by
Complainant are some of the most widely viewed stations on the ABC network and
are located in major metropolitan areas, including Los Angeles and New
York.
Complainant owns registrations with the United States Patent and
Trademark Office (“USPTO”) for the ABC mark (Reg. No. 2,066,519 issued June 3,
1997; Reg. No. 755,703 issued August 27, 1963; and Reg. No. 2,023,417 issued
December 17, 1996).
Respondent registered the <myabc.com> domain name on September 26, 1998. The domain name is being used for a website
that features a generic search engine and displays links to third-party
websites, some of which are associated with broadcasting and other
television-related businesses. The
Panel infers that Respondent receives commissions for linking Internet users to
third-party websites via the domain name.
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
asserts rights in the ABC mark based on its registration of the mark with the
USPTO. It is well-established under the
Policy that a complainant’s registration of a mark with a federal authority
establishes a prima facie case of the complainant’s rights. See 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.”); see
also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
The <myabc.com> domain name includes Complainant’s ABC
mark in its entirety in addition to the common term “my.” Adding a common or descriptive term, such as
the term “my,” to Complainant’s registered mark is not enough to overcome a
finding of confusing similarity under Policy ¶ 4(a)(i). See NIIT Ltd. v. Parthasarathy
Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name
‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is
confusingly similar to the Complainant’s trade name and trademark NIIT”); see
also ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept.
5, 2000) (finding that the “domain name MYSPORTSCENTER.COM registered by
Respondent is confusingly similar to Complainant’s SportsCenter mark”). Thus, the Panel finds that the disputed
domain name is confusingly similar to Complainant’s mark.
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(i).
Panels have
consistently held under the Policy that the complainant has the initial burden
of proving that the respondent lacks rights and legitimate interests in the
disputed domain name. In Compagnie
Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May
14, 2001), the panel held:
Proving
that the Respondent has no rights or legitimate interests in respect of the
Domain Name requires the Complainant to prove a negative. For the purposes of
this sub paragraph, however, it is sufficient for the Complainant to show a
prima facie case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.
Id.; see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that where the
complainant has asserted that the respondent has no rights or legitimate
interests with respect to the domain name it is incumbent on the respondent to
come forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the
respondent”). Having found that
Complainant has met its initial burden by establishing a prima facie
case, the Panel will now analyze whether Respondent has met its burden to
establish rights or legitimate interests in the disputed domain name under
Policy ¶ 4(c).
Complainant
argues that Respondent is not commonly known by the <myabc.com>
domain name and that Complainant has not licensed or otherwise authorized
Respondent to use any version of Complainant’s ABC mark for any purpose. The WHOIS information for the disputed
domain name lists Respondent as “Daniel Kaufman” and identifies no other
connection between Respondent and the disputed domain name. Because Respondent has failed to respond to
any of Complainant’s contentions, the Panel is left with no evidence to rebut
Complainant’s assertions that Respondent is not commonly known by the disputed
domain name. Thus, the Panel finds that
Respondent has not established rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
See Wells Fargo & Co. v. Onlyne
Corp. Services11, Inc., FA 198969 (Nat.
Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the
disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”);
see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum
May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that
one has been commonly known by the domain name prior to registration of the
domain name to prevail"); see also Vanguard Group, Inc. v.
Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because
Respondent failed to submit a Response, “Complainant’s submission has gone
unopposed and its arguments undisputed.
In the absence of a Response, the Panel accepts as true all reasonable
allegations . . . unless clearly contradicted by the evidence.”).
Respondent is
using the <myabc.com> domain name to divert Internet users
searching for information regarding Complainant’s ABC mark to a website that
features a generic search engine and links to various products and services,
some of which are television-related.
Furthermore, the Panel presumes that Respondent derives commercial
benefit from these diversions due to click-through fees from the links on the
website. The Panel finds that such use
of a confusingly similar version of Complainant’s ABC mark to attract Internet
users to Respondent’s commercial website for Respondent’s benefit does not
qualify as a bona fide offering of goods or services under Policy ¶
4(c)(i) or a legitimate noncommercial or fair use of the domain name under
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). Additionally, in failing to submit a response to Complainant’s contentions, Respondent
has neglected to provide any evidence that would challenge Complainant’s prima
facie case. The Panel, therefore,
finds that Respondent has not established rights or legitimate interests in the
disputed domain name under Policy ¶ 4(c)(i) or (iii). See Euromarket Designs, Inc. v. Domain For Sale
VMI, D2000-1195 (WIPO Oct. 26, 2000) (“In the absence of direct evidence,
the complainant and the panel must resort to reasonable inferences from
whatever evidence is in the record. In
addition . . . Paragraph 14(b) of the Rules [authorizes] a panel to draw such
inferences from respondent’s failure to respond ‘as it considers
appropriate.’”).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(ii).
The <myabc.com>
domain name resolves to a website that features a generic search engine and a
directory of links to various third-party businesses. The Panel presumes that Respondent receives commissions for
diverting Internet users to third-party websites via the search engine and
links located at Respondent’s website.
Additionally, Respondent’s use of a confusingly similar version of
Complainant’s distinctive ABC mark in the domain name creates a likelihood of
confusion and suggests an attempt to attract Internet users to Respondent’s
website for Respondent’s commercial gain.
The Panel finds that this is evidence of Respondent’s bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration
and use of a domain name that incorporates another's mark with the intent to
deceive Internet users in regard to the source or affiliation of the domain
name is evidence of bad faith.”); see also G.D. Searle &
Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that the respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly
similar domain name to attract Internet users to its commercial website); see
also 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)).
Furthermore,
Respondent’s registration of the <myabc.com> domain name, which contains a
confusingly similar version of Complainant’s distinctive ABC mark, and
Complainant’s registration of its mark with the USPTO suggest that Respondent
knew of Complainant’s rights in the mark when Respondent registered the domain
name. Complainant has acquired
substantial goodwill in its marks, causing the public to associate the ABC mark
with Complainant’s goods and services.
In light of these circumstances, the Panel finds that Respondent chose
the disputed domain name due to the fame of Complainant’s mark. Respondent’s registration of a domain name
that contains Complainant’s mark despite Respondent’s knowledge of
Complainant’s rights in the mark is evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002)
(“[T]here is a legal presumption of bad faith, when Respondent reasonably
should have been aware of Complainant’s trademarks, actually or constructively.”);
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); 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 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).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <myabc.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated:
September 21, 2005
National Arbitration Forum
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