ABS-CBN International v. Rewel Gungon
Claim Number: FA1408001575357
Complainant is ABS-CBN International (“Complainant”), represented by Charlene L. Minx of Steptoe & Johnson LLP, California, USA. Respondent is Rewel Gungon (“Respondent”), Philippines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <filipinochannelonline.com>, registered with Domain.com, LLC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 15, 2014; the National Arbitration Forum received payment on August 15, 2014.
On August 18, 2014, Domain.com, LLC confirmed by e-mail to the National Arbitration Forum that the <filipinochannelonline.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.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 August 20, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 9, 2014 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@filipinochannelonline.com. Also on August 20, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 15, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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" 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 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’s Contentions
1. Complainant uses THE FILIPINO CHANNEL mark in connection with a television broadcasting service. Complainant has registered the mark with both the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,884,383 registered Aug. 20, 1996) and with the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (e.g., Reg. No. 449,058 registered Sept. 6, 1998). The <filipinochannelonline.com> domain name is confusingly similar to THE FILIPINO CHANNEL mark in that the domain name sees the introduction of the term “online.”
2. Respondent has no rights or legitimate interests here. First, Respondent is not commonly known by the <filipinochannelonline.com> domain name. Second, the domain name is being used to host illegal streams of Complainant’s programming.
3. Respondent registered and uses the <filipinochannelonline.com> domain name in bad faith. First, Respondent’s use of the <filipinochannelonline.com> domain name disrupts Complainant’s business because Respondent is providing illegal streams of Complainant’s content. Second, Respondent is capitalizing on the likelihood Internet users will confuse the <filipinochannelonline.com> domain name with Complainant’s legitimate THE FILIPINO CHANNEL network.
Respondent’s Contentions
1. Respondent did not submit a response.
1. Respondent’s <filipinochannelonline.com> domain name is confusingly similar to Complainant’s THE FILIPINO CHANNEL mark.
2. Respondent does not have any rights or legitimate interests in the <filipinochannelonline.com> domain name.
3. Respondent registered or used the <filipinochannelonline.com> domain name in bad faith.
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(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.”).
Complainant uses THE FILIPINO CHANNEL mark in connection with a television broadcasting service. Complainant has registered the mark with both the USPTO (e.g., Reg. No. 1,884,383 registered Aug. 20, 1996) and with the OHIM (e.g., Reg. No. 449,058 registered Sept. 6, 1998). The Panel concludes that OHIM and USPTO registrations sufficiently evidence Policy ¶ 4(a)(i) rights in this trademark. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Complainant further claims the <filipinochannelonline.com> domain name is confusingly similar to THE FILIPINO CHANNEL mark in that the domain name sees the introduction of the term “online.” The Panel notes the domain name here is formed by dropping the term “the,” adding the generic term “online” (i.e., implying services found on the Internet), and adding the generic top-level domain “.com.” The Panel agrees that none of these alterations present in the domain name are sufficient to prevent a finding of Policy ¶ 4(a)(i) confusing similarity with respect to the <filipinochannelonline.com> domain name. See, e.g., Google Inc. v. Private Person / Andrey Skorodubov, FA 1506184 (Nat. Arb. Forum Jul. 28, 2013) (finding that the disputed domain name is confusingly similar to the complainants mark regardless of the omission of a letter and spaces in the mark and the addition of hyphens, a descriptive term, and a gTLD).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
First, Complainant suggests that Respondent is not commonly known by the <filipinochannelonline.com> domain name. The Panel notes “Rewel Gungon” is listed as the registrant of record for the disputed domain name. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel found that Policy ¶ 4(c)(ii) was not satisfied when nothing in the record showed the respondent to be known by the disputed domain name. Here the Panel finds Respondent has failed to provide any evidence suggesting that it is commonly known by the disputed domain name.
Second, Complainant suggests the domain name is being used to host illegal streams of Complainant’s programming. The Panel notes the <filipinochannelonline.com> domain name resolves to a website promoting streams under the “PinoyChannel.” See Compl., at Attached Ex. 6. The Panel concludes this use of the domain name is no Policy ¶ 4(c)(i) bona fide offering of goods because the videos promoted are illegally broadcasted, and as such there is no legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”).
First, Complainant claims Respondent’s use of the <filipinochannelonline.com> domain name disrupts Complainant’s business because Respondent is providing illegal streams of Complainant’s content. The Panel notes the domain name streams illegally obtained content. See Compl., at Attached Ex. 6. The Panel agrees that Respondent is disrupting Complainant’s business by streaming these unlawful content whilst Complainant seeks to lawfully show this same content on THE FILIPINO CHANNEL. See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products). As such, the Panel finds Policy ¶ 4(b)(iii) bad faith.
Second, Complainant claims Respondent is capitalizing on the likelihood Internet users will confuse the <filipinochannelonline.com> domain name with Complainant’s legitimate THE FILIPINO CHANNEL network. The Panel agrees that Respondent’s streaming of the illegal content, as show in Exhibit 6, is suggestive of a Policy ¶ 4(b)(iv) bad faith attempt to profit from a likelihood Internet users will confuse Respondent as being associated with Complainant’s business. See H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <filipinochannelonline.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 26, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page