Jefferson-Pilot Communications/WBTV, Inc. v. Domain Administrator
Claim Number: FA0604000679457
Complainant is Jefferson-Pilot Communications/WBTV, Inc. (“Complainant”), represented by Maury M. Tepper, of Womble Carlyle Sandridge & Rice, PLLC, 2100 Wachovia Center, 150 Fayetteville Street, Raleigh, NC 27602. Respondent is Domain Administrator (“Respondent”), 19744 Beach Blvd #428, Huntington Beach, CA 92648.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wbtvnews.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 April 13, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 14, 2006.
On April 13, 2006, Bulkregister, LLC confirmed by e-mail to the National Arbitration Forum that the <wbtvnews.com> domain name 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 April 26, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 16, 2006 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@wbtvnews.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 23, 2006, 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 <wbtvnews.com> domain name is confusingly similar to Complainant’s WBTV mark.
2. Respondent does not have any rights or legitimate interests in the <wbtvnews.com> domain name.
3. Respondent registered and used the <wbtvnews.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Jefferson-Pilot Communications/WBTV, Inc., has continuously used the WBTV mark in connection with broadcasting and entertainment services since 1949. Complainant owns and operates several local television stations, including a Charlotte, North Carolina station known by the WBTV call letters.
Complainant has registered the WBTV mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,942,994 issued December 19, 1995). Complainant also maintains a website at the <wbtv.com> domain name, where it offers local news programming for the Charlotte, North Carolina metropolitan area.
Respondent registered the <wbtvnews.com> domain name on May 16, 2002. Respondent’s website at the disputed domain name contains links such as “Local News” and “Breaking News” that resolve to third-party websites unrelated to Complainant.
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.
Because Complainant has registered the WBTV mark with the USPTO, the Panel finds that Complainant has established rights in the mark pursuant to Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); 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.”).
Furthermore, Respondent’s <wbtvnews.com> domain
name is confusingly similar to Complainant’s WBTV mark because it contains the
entire registered mark and merely adds a term describing Complainant’s
broadcasting business. In McClatchy
Mgmt. Serv., Inc. v. Purdy, FA 165944 (Nat. Arb. Forum Aug. 12, 2003), the
panel found the respondent’s <startribunenews.com> domain name to be
confusingly similar to the complainant’s STAR TRIBUNE mark because “the mere
addition of the term ‘news’ to the end of the domain name is a meaningless
distinction, intended to avoid a direct copy of the actual name.” Therefore, the mere addition of the common
term “news” to Complainant’s mark does not negate a finding of confusing
similarity under Policy ¶ 4(a)(i). See
Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000)
(finding confusing similarity where the respondent’s domain name combines the
complainant’s mark with a generic term that has an obvious relationship to the
complainant’s business).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent has no rights or
legitimate interests in the <wbtvnews.com> domain name. Complainant must first make a prima facie
case in support of its assertions, and then the burden shifts to Respondent to
prove that it does have rights or legitimate interests in the <wbtvnews.com>
domain name pursuant to Policy ¶ 4(a)(ii).
See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct.
1, 2002) (“Because Complainant’s Submission constitutes a prima facie case
under the Policy, the burden effectively shifts to Respondent. Respondent’s
failure to respond means that Respondent has not presented any circumstances
that would promote its rights or legitimate interests in the subject domain
name under Policy ¶ 4(a)(ii).”); 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”).
Respondent’s failure to respond to the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the
disputed domain name. See Am.
Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no
rights or legitimate interests where the respondent fails to respond); 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”).
However, the Panel will now examine the record to determine if Respondent
has rights or legitimate interests under Policy ¶ 4(c).
Respondent has registered the domain name under the name “Domain
Administrator,” and there is no other evidence in the record suggesting that
Respondent is commonly known by the <wbtvnews.com> domain
name. Thus, Respondent has not
established rights or legitimate interests in the <wbtvnews.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 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.”).
In addition, Respondent operates a website at the <wbtvnews.com>
domain name featuring links such as “Local News” and “Breaking News” that
resolve to various third-party websites unrelated to Complainant. In Golden Bear
Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003), the
respondent registered the <nicklausgolf.com> domain name, which included
the complainant’s NICKLAUS mark, and used it to operate a website displaying
links to third-party websites. The
panel held that the respondent’s diversion of Internet users to websites
unrelated to the complainant’s mark did 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). Because Respondent is also diverting Internet users
seeking Complainant’s broadcasting and entertainment services to a website
containing links to third-party websites, presumably to earn click-through
fees, its use of the disputed domain name for commercial gain provides evidence
that it lacks rights and legitimate interests in the <wbtvnews.com>
domain name under Policy ¶ 4(c)(i) and ¶ 4(c)(iii). See Seiko Kabushiki Kaisha v. CS
into Tech, FA 198795 (Nat. Arb. Forum Dec.
6, 2003) (“Diverting customers, who are looking for products relating to the
famous SEIKO mark, to a website unrelated to the mark is not a bona fide
offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a
noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has registered and is using the <wbtvnews.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by maintaining a website
at the disputed domain name featuring links to various websites unrelated to
Complainant. In Kmart v. Khan,
FA 127708 (Nat. Arb. Forum Nov. 22, 2002), the respondent registered the
<bigkmart.com> domain name and was using it to operate a website
featuring links to various content unrelated to the complainant. The Panel inferred that Respondent made a
profit from the amount of Internet traffic it diverted to other websites, and
that therefore, Respondent was “commercially benefiting from the likelihood of
confusion it has created through the use of Complainant’s mark” in violation of
Policy ¶ 4(b)(iv). Id. Likewise, Respondent is also misdirecting
Internet users looking for Complainant’s broadcasting and entertainment
services to unrelated websites. The
Panel infers that Respondent receives click-through fees for diverting Internet
users to these third-party websites.
Therefore, Respondent is taking advantage of the confusing similarity
between the <wbtvnews.com> domain name and Complainant’s WBTV
mark, and profiting from the goodwill associated with the mark in violation of
Policy ¶ 4(b)(iv). See 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).
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 <wbtvnews.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 7, 2006
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