National Geographic Society v. Domain Admin / Private Registrations Aktien Gesellschaft
Claim Number: FA1412001596598
Complainant is National Geographic Society (“Complainant”), represented by Steven M. Levy, Pennsylvania. Respondent is Domain Admin / Private Registrations Aktien Gesellschaft (“Respondent”), St. Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <natgeokids.com>, registered with Pdr Ltd. D/B/A Publicdomainregistry.Com.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 22, 2014; the National Arbitration Forum received payment on December 29, 2014.
On December 25, 2014, Pdr Ltd. D/B/A Publicdomainregistry.Com confirmed by e-mail to the National Arbitration Forum that the <natgeokids.com> domain name is registered with Pdr Ltd. D/B/A Publicdomainregistry.Com and that Respondent is the current registrant of the name. Pdr Ltd. D/B/A Publicdomainregistry.Com has verified that Respondent is bound by the Pdr Ltd. D/B/A Publicdomainregistry.Com 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 January 5, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 2015 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@natgeokids.com. Also on January 5, 2015, 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 February 3, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
The “Disputed Domain”
It must be noted that, although the <NatGeoKids.com> domain was first created on December 5, 2005, it is believed that the Respondent first acquired the domain at some later date – likely February 12, 2012. According to the whois history for this domain, it was under the ownership of a number of different privacy services using different servers and different registrars such as DomainDoorman, LLC, then Rebel.com, Fabulous.com, and finally (currently) PublicDomainRegistry. In December of 2006 the domain was owned by an entity called Marketing Total S.A. but, without further information from the current Registrar, it is not possible to know if this entity is still the actual owner hiding behind all of these privacy curtains. Nevertheless, it is a well-accepted standard in UDRP cases to consider the date on which the Respondent acquired the domain-at-issue rather than only the creation date. See, DIRECTV, Inc. v. Toshi Amori, NAF Claim No. FA1106001394254 (2011) (“The operative date is the date when Respondent acquired the disputed domain name (assuming the Respondent is not a successor in interest to the previous domain name owner).”); Celilo Group Media, Inc. v. Domain Administrator, WIPO Case No. D2010-1119 (“there has been a change of control amounting to a new registration for the purposes of this [bad faith] element of the Policy. What is significant is that the Domain Name was acquired on a date post-dating the coming into existence of the Complainant’s unregistered trade mark rights….”); Bayer HealthCare LLC v. Eighty Business Names, WIPO Case No. D2010-1024 (The disputed domain name was registered on August 6, 2004, although the Complainant indicates that historical WhoIs records obtained on the “www.domaintools.com” website show that the Respondent only acquired it on June 6, 2009.) A change in registrar and in servers can often signal a change in ownership and so Complainant asserts that the relevant date for purposes of this complaint is February 5, 2012, the date on which the <NatGeoKids.com> domain was transferred to its present Registrar .
In the absence of further information from the Registrar or the Respondent, and unless the evidence is clearly contradictory, the Panel is entitled to accept this assertion as it is for all reasonable allegations and inferences set forth in the Complaint. See Expedia, Inc. v. Alexandru Stamate, NAF Claim No. FA1588623 (2014) (“The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory”); Talk City, Inc. v. Robertson, WIPO Case No. D2000-0009 (2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”)
Factual and Legal Grounds
As set forth more fully below, the Complainant owns certain trademarks and makes extensive use of them such that they have become famous.
Complainant National Geographic Society, headquartered in Washington, D.C. in the United States, is one of the largest nonprofit scientific and educational institutions in the world and is the owner of the famous NAT GEO trademarks in their multiple versions (collectively, the “NAT GEO Marks”). Its interests include geography, archaeology and natural science, the promotion of environmental and historical conservation, and the study of world culture and history. Complainant sponsors and funds scientific research and exploration including the works of Jane Goodall (studied chimpanzees); Louis and Mary Leakey (discovered some of the most famous pre-human fossils), and Jacques-Yves Cousteau (famous for his undersea exploration) and Bob Ballard (found and filmed the wreck of the Titanic). The Society also publishes “National Geographic,” “Nat Geo Wild,” and “Nat Geo Kids” magazines, maintains the www.NationalGeographic.org and www.NatGeoTV.com websites, and produces television programs under the NAT GEO Marks (which are globally available in multiple languages on the National Geographic Channel and through other outlets). Complainant publishes books in multiple languages for children and adults, as well as maintains a museum for the public in its Washington, D.C., headquarters and sells educational and decorative items that support Complainant’s mission through its website, catalogs, and a number of physical retail stores. National Geographic magazine, one of Complainant’s most famous properties, has been published continuously since its first issue in 1888, nine months after the Society itself was founded. The magazine is known for its thick square-bound glossy format with a yellow rectangular border and its extensive use of dramatic photographs. Commencing in 2002 Complainant began using the NAT GEO Marks in relation to certain of its publications and video programs and also as a keyword for its content on the www.AOL.com website. Since their inception, the NAT GEO Marks have been used continually by Complainant and its licensees in interstate and international commerce.
Complainant extensively promotes the NAT GEO Marks through a variety of advertising and promotional mediums. It utilizes ads in other magazines, on a variety of television networks, on websites and social media pages, and even on billboards.
As a result of the long usage and promotion of the NAT GEO Marks, they have become overwhelmingly famous and widely recognized around the world.
Further, the NAT GEO Marks are aggressively protected through registration and enforcement. Complainant owns many trademark registrations around the world for the NAT GEO Marks, including European Community, International, and United States Trademark Registrations as follows:
Mark Goods and Services Reg. No. (Country) Reg. Date
NATGEO Classes 9, 16, 18, 25, 28, 38, and 41 (See below) 3503943 (CTM) 18-May-2005 (Filed 31-Oct-2003)
IC 9 Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; computer game programs; computer programs downloadable from a global computer network; electronic units that identify bird species and bird calls.
IC 16 Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks; books; magazines; calendars; maps; globes; posters; art prints; charge cards, credit cards, debit cards and pre-paid telephone calling cards, not magnetically encoded; accessory bags made of cellophane.
IC 18 Backpacks, luggage, travel trunks; duffel bags; athletic bags, messenger bags, hanging garment bags; cosmetic bags sold empty; utility cases sold empty; luggage tags; accessory bags, tote bags, fanny packs, purses, wallets, briefcases, attache cases; business card cases and umbrellas.
IC 25 Clothing, footwear, headgear.
IC 28 Toys; games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees; electronic game units; Christmas stockings; Christmas stocking holders; playing cards; children's craft kits.
IC 38 Television and radio broadcasting services, cable television broadcasting services; television narrowcasting services; audio and video broadcasting via the Internet; telecommunications; providing online discussion forums featuring a wide range of adventure, cultural, educational, entertainment, exploration, general interest, geography, natural history, scientific, technology and travel topics.
IC 41 Educational and entertainment services; providing of training; cultural activities; production of television programs; providing online audio records, information, lesson plans, photographs, videos, and webcasts featuring a wide range of adventure, cultural, educational, entertainment, exploration, general interest, geography, natural history, scientific, technology, and travel topics, providing online games and activities for children, providing online maps and schedules for live events and exhibitions.
NAT GEO WILD Logo Classes 38 and 41 (see below) 948720 (Int’l Reg) 25-Oct-2007
IC 38 Telecommunications; television and radio broadcasting services; cable television broadcasting services; television narrowcasting services; audio and video broadcasting via the Internet; providing access to online discussion forums featuring a wide range of adventure, cultural, educational, entertainment, exploration, general interest, geography, natural history, scientific, wildlife, nature, and environmental topics.
IC 41 Educational and entertainment services; providing of training; cultural activities; production of television programs; providing online audio records, information, lesson plans, photographs, videos and webcasts featuring a wide range of adventure, cultural, educational, entertainment, exploration, general interest, geography, natural history, wildlife, nature, and environmental topics; providing online games and activities for children, providing online maps and schedules for live events and exhibitions.
NAT GEO ADVENTURE Classes 38 and 41 (see below) 6058879 (CTM) 25-Jul-2008 (Filed 2-Jul-2007)
IC 38 Television and radio broadcasting services; cable television broadcasting services; television narrowcasting services; audio and video broadcasting via the Internet; telecommunications; providing online discussion forums featuring a wide range of adventure, cultural, educational, entertainment, exploration, general interest, geography, natural history, scientific, wildlife, nature, and environmental topics.
IC 41 Educational and entertainment services; providing of training; cultural activities; production of television programs; providing online audio records, lesson plans, photographs, videos and webcasts featuring a wide range of adventure, cultural, educational, entertainment, exploration, general interest, geography, natural history, wildlife, nature, and environmental topics; providing online information relating to entertainment and education featuring general interest and environmental topics in the field of science, technology, natural science, ecology, social studies, archaeology, astronomy, geology, anthropology, zoology, botany and the environment; providing online games and activities for children, providing online maps and schedules for live events and exhibitions.
NAT GEO MUSIC Logo Classes 9, 38, and 41 (See below) 6308472 (CTM) 15-Sep-2008 (Filed 25-Sep-2007)
IC 9 Pre-recorded motion picture films; pre-recorded data carriers, namely, records, discs, tapes, audio cassettes, DVDs, CD-ROMs, cartridges, digital audio and video compression software files, all featuring entertainment, education, cultural or music topics; pre-recorded motion picture soundtracks; downloadable ring tones, music, MP3s, graphics, games, images and videos for wireless communication devices.
IC 38 Audio broadcasting; cable television broadcasting; direct broadcast satellite television; television broadcasting; video broadcasting; radio broadcasting; radio programming; pod casting; electronic transmission of information, text, sound and images; satellite transmission services; cable radio transmission and broadcasting; broadcasting and transmission of radio and television programs via computer or communications networks; video-on-demand transmission services; electronic transmission of sound, images and data, including streaming audio and video material across broad band networks and a global computer network; electronic transmission via computer of sound, images, data and radio and television programs; wireless communication services, namely transmission of ring tones, logo graphics, games, sound, music, information and data to mobile telephones, wireless devices and personal communications devices.
IC 41 Motion picture films, television and radio programs; on-line content in the fields of music, culture, entertainment and education; music production; motion picture soundtracks; providing a wide range of entertainment, educational, cultural and music topics via the Internet.
NAT GEO IC 038. US 100 101 104. G & S: direct broadcast satellite television and satellite transmission services. FIRST USE: 20021001. FIRST USE IN COMMERCE: 20021001 4298455 (US) 5-Mar-2013 (Filed 20-Nov-2009)
NAT GEO IC 038. US 100 101 104. G & S: Electronic and digital transmission of data, images, signals, and messages OR text and numeric wireless digital messaging services OR wireless communications services, namely, transmission of graphics to mobile telephones and mobile wireless electronic devices OR mobile media services in the nature of electronic transmission of entertainment media content OR video broadcasting OR electronic transmission of information, text, sound and images OR broadcasting and transmission of television programs via computer or communications networks OR video-on-demand transmission services OR electronic transmission of sound, images and data, including streaming audio and video material across broad band networks and a global computer network OR electronic transmission via computer of sound, images, data and radio and television programs OR wireless communication services, namely, transmission of ring tones, logo graphics, games, sound, information and data to mobile telephones, wireless devices and personal communications devices. FIRST USE: 20071000. FIRST USE IN COMMERCE: 20071000 4109420 (US) 6-Mar-2012 (Filed 20-Nov-2009)
Respondent’s registration of the <NatGeoKids.com> violates the Policy.
The <NatGeoKids.com> domain is identical or confusingly similar to the Marks under Policy ¶4(a)(i). Respondent’s <NatGeoKids.com> domain is confusingly similar, on its face, to Complainant’s registered NAT GEO Marks. Since the terms NAT GEO is a world-famous and arbitrary term that is only used as a brand name and is not in common parlance, searchers will almost certainly be confused into believing that there is a connection of source, sponsorship, affiliation or endorsement between Complainant and Respondent by Respondent’s use of the <NatGeoKids.com> domain.
Numerous Panel decisions have held that the addition of generic or other words to a complainant’s trademark, creates a confusingly similar domain name. See, e.g., Comerica Bank v. Private Registration, WhoisGuardService.com, WIPO Case No. D2014-0529 (In ordering the domain <comericaonline.com> transferred, the Panelist held that, “[i]n accordance with the consensus of past UDRP panels, the addition of descriptive suffixes and prefixes to a trademark does not normally serve to distinguish the resulting combination as a domain name from the trademark.”); Expedia, Inc. v. Expedia India Tours, NAF Claim No. FA 1459323 (2012) (In relation to the domain expediaindiatours.com, the Panel stated “[t]hese alterations of the mark, made in forming the domain name, fail to distinguish the domain name from Complainant’s mark under the standards of the Policy.”); Expedia, Inc. v. Inertia 3D, NAF Claim No. 1118154 (2008) (Panel ordered a transfer of the domain expediahosting.com noting that “the disputed domain name includes the entire mark and merely adds the generic term “hosting” and the generic top-level domain ‘.com.’ These additions are insufficient to distinguish the domain name from the mark under Policy ¶4(a)(i).”)
Further, it has been held, in decisions too numerous to mention, that a generic top-level domain is typically not considered when examining whether a domain is confusingly similar to a complainant’s trademark. See, e.g., Higher Education Loan Authority of the State of Missouri (MOHELA) v. To Thi Thanh Tam / Vietnam Domain Privacy Services, WIPO Case No. D2014-1602 (“the generic Top-Level Domain suffix ‘.com’ is not taken into account for these purposes ”); Alstom and ABB Asea Brown Boveri Ltd v. Claudette Drakes, Name Equities, WIPO Case No. D2014-1489 (“The addition of generic Top-Level Domains (i.e. the ‘.com’ suffix) may be disregarded when comparing the similarities between a domain name and a trade mark.”)
Similar to the above-cited decisions, the Respondent in the present dispute merely adds the word “kids” and the “.com” gTLD to Complainant’s NAT GEO Mark and merely adds to its NAT GEO Mark thereby making visitors to its website think that they are being linked to one of the Complainant’s legitimate sites. See, Focus Do It All Group v. Athanasios Sermbizis, WIPO Case No. D2000-0923 (Complainant’s trademark rights and use of its mark “make it likely beyond real doubt that consumers who know that mark will think that ‘focus-do-it-all.com’ is their address. As reasoned in Athanasios, even if searchers eventually discover they are not at Complainant’s site, searchers may be led to believe that the Complainant endorsed, sponsored or affiliated itself with the goods and services offered at the <NatGeoKids.com> website. As in Athanasios, Respondent here uses the Marks in its sites’ domain names as well as in the title and body of its websites. It only makes sense that if searchers see the Marks listed in the body of the <NatGeoKids.com> web page they will be confused and led to believe that Respondent’s website originates with Complainant or is at least affiliated with, endorsed or sponsored by Complainant.
(b) Respondent has no rights or legitimate interest in the <NatGeoKids.com> domain under Policy ¶4(a)(ii). Section 4(c) of the Policy sets out certain circumstances which, if proven by the evidence presented, may demonstrate Respondent’s rights or legitimate interests to the <NatGeoKids.com> domain. None of these circumstances apply to Respondent in the present dispute.
Respondent’s actions are not a bona fide offering of goods or services under Policy ¶4(c)(i). Respondent’s website under the <NatGeoKids.com> domain is a classic pay-per-click site displaying links which divert visitors - likely Complainant’s customers and potential customers - to other websites which are not associated with Complainant and, in some cases, may be associated with Complainant’s competitors. ICANN panels have found that leading consumers who are searching for a particular business, to a site where the same or similar services provided by others are listed, is not a bona fide use. Homer, TLC Inc. v. Kang, NAF Case No. FA573872 (“Respondent’s use of domain name that is identical to Complainant’s mark to divert Internet users to third-party websites for Respondent’s own commercial gain does not constitute a bona fide offering ... or a legitimate noncommercial or fair use ....”).
With respect to Policy ¶4(c)(ii), upon information and belief, Respondent is not commonly known by the <NatGeoKids.com> domain or the names “NAT GEO” or “NAT GEO KIDS” nor does Respondent operate a business or other organization under these Marks or names and does not own any trademark or service mark rights in the “NAT GEO” or “NAT GEO KIDS” name. See, Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512 (Regarding the domain <dellnetsolutions.com> “there is no evidence that the Respondents’ business has been commonly known by that name. Further, the Respondents added terms to the surname to create the disputed domain name.”). Similarly, by using a one or more whois privacy services Respondent has refrained from associating itself with the <NatGeoKids.com> and it cannot obtain any legitimate interests therein as a result. Nike, Inc. v. Elah Blake / N/A, NAF Claim No. FA 1580701 (2014) (“Respondent registered the disputed domain name using a WHOIS privacy service. This means Respondent has not publicly associated itself with the domain name, which means it cannot acquire any rights from owing the domain name.”)
Respondent is not making a legitimate noncommercial or fair use of the <NatGeoKids.com> domain without intent for commercial gain, and so its actions do not fall within Policy ¶4(c)(iii). Instead, Respondent is using the domain name to confuse and misleadingly divert consumers, or to tarnish the Marks. In Dr. Ing. h.c. F. Porsche AG v. Limex, LLC, WIPO Case No. D2003-0649 the Panel noted that “The 3 domain names in issue use the PORSCHE trademark to attract potential customers to the generic [auto] loan business.” The Panel held that such use, in a domain name, of one manufacturer’s trademark to offer products or services relating to goods sold under that trademark and also other manufacturer’s trademarks did not constitute a legitimate or fair use of the domain. Id.
Further, in Athanasios, supra, the Panel found that respondent’s use “could in no way be characterized as fair, because consumers would think that they were visiting a site of the Complainant until they found that instead they were in a directory which would do the Complainant potential harm”. Here, searchers for Complainant’s NAT GEO goods and services, who used the <NatGeoKids.com> domain would be confused and think they were visiting a site of the Complainant’s until they discovered that they were forwarded to other websites offering related or competing goods and services. Such use cannot be considered fair.
Finally, Respondent’s use has tarnished and diluted the Marks. Respondent has diminished consumers’ capacity to associate the NAT GEO Marks with the quality goods and services offered under the Marks by Complainant by using the Marks in association with unrelated sites which provide goods and services not associated with or related to Complainant’s quality branded products and services. Respondent’s use creates the very real risk that Complainant’s trademarks are not only being associated with numerous products and services not related to Complainant’s branded products, but also to products and services over which Complainant has no quality control.
(c) Respondent registered the <NatGeoKids.com> domain in bad faith under Policy ¶4(a)(iii). The Policy clearly explains that bad faith can be found where a Respondent, by using a domain name, intentionally attempts to attract, for commercial gain, Internet searchers to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. See Policy ¶4(b)(iv).
Respondent intentionally used the Marks without consent from Complainant. Respondent was on actual notice of Complainant’s rights in the world-famous NAT GEO Marks through Complainant’s Trademark Registrations/Applications, its common-law trademark rights, and its extensive, global use of the Marks which predate the creation dates of each of the <NatGeoKids.com>. See, National Geographic Society v Stonybrook Investments, LTD., NAF Claim No. FA 96263 (2001) (“Complainant holds certificates of registration for numerous marks including NATIONAL GEOGRAPHIC and NATIONALGEOGRAPHIC.COM”). In fact, the text of the <NatGeoKids.com> domain makes no sense on its own and so it could only have been copied from Complainant’s NAT GEO Marks. Therefore, Respondent knowingly and intentionally used the Marks with knowledge of, and in violation of Complainant’s rights in the Marks.
Respondent is obtaining commercial gain from its use of the <NatGeoKids.com> website. When a visitor to the <NatGeoKids.com> website clicks on one of the links which appear there, Respondent receives compensation from the various website owners who are forwarded from the <NatGeoKids.com> site. Most likely, Respondent receives compensation based upon the number of hits the website owners get from being linked to the <NatGeoKids.com> site. See AllianceBernstein LP v. Texas International Property Associates - NA NA, WIPO Case No. D2008-1230, and Brownells, supra, (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain).
In, AllianceBernstein, the respondent registered the domain name <allaincebernstein.com>, which was almost identical to complainant’s ALLIANCEBERNSTEIN mark. The domain name led to a search directory website with links to third party vendors, including competitors of Complainant. Id. The Panel inferred that the respondent received click-thru fees by directing users to various commercial websites through these links and found that the respondent’s use was for commercial gain and was a bad faith use of the domain name under Policy ¶4(b)(iv). Id.
In Brownells, the respondent registered the domain name <brwonells.com>, which the panel found to be nearly identical to the complainant’s mark, with two of the letters in the mark reversed. Brownells, supra. The respondent’s website offered links to hunting equipment and related items. Id. The panel found that such listing of links were provided purely for respondent’s commercial gain. Id.
Here, Respondent’s generation of forwarding fees from its <NatGeoKids.com> domain results from pay-per-click links and alone constitutes commercial gain. See AllianceBernstein, supra. Moreover, similar to the facts in Brownells and AllianceBernstein, Respondent’s use of the <NatGeoKids.com> domain and its website results in a commercial gain for others by forwarding visitors to third parties, some of whom are potential competitors of Complainant. Just as commercial gain was sought for the respondents in the abovementioned cases, commercial gain was sought by Respondent here for itself and the various website owners who were forwarded from the website of the <NatGeoKids.com> domain. There is no other rational explanation for Respondent having registered and maintained the <NatGeoKids.com> domain and resolved it to a pay-per-click site or having it redirect to other commercial sites. Respondent’s use of the domain name is commercial because the various companies forwarded from the <NatGeoKids.com> benefit from the subsequent interest and purchases of those searches. ICANN Panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. See, Focus Do It All Group v. Athanasios Sermbizis, supra (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Of course, as the owner of the <NatGeoKids.com> domain, Respondent is entirely and solely responsible for the content of its website and the functioning of its domain. See, Disney Enterprises, Inc. v. ll, NAF Claim No. FA1007001336979 (2010) (Respondent acted in bad faith, despite its claimed lack of control over the content on its parked, pay-per-click website); MasterCard International Incorporated v. Banu Asum Kilich, WIPO Case No. D2009-1525 (Panel agreed with complainant’s assertion that “as the owner of the disputed domain name, [respondent] is responsible for the contents of the website, regardless of whether a third party profits from the links placed on the website.
Apart from the above, Respondent’s true identity may only be discovered if its Registrar removes the layers of privacy protection for the whois information relating to the <NatGeoKids.com> domain. Such use of a privacy service (in this case multiple players of privacy services) is further evidence of Respondent’s bad faith registration and use as was held in Beijing Qunar Information Technology Co., Ltd. v. Premium Registration Service / Zheng ZhongXing, WIPO Case No. D2013-0281 (“the fact that the disputed domain name was registered anonymously and protected by Premium Registration Service is consistent with bad faith in this Panel’s view”)
Even after Complainant sent a demand letter to Respondent on August 29, 2014 and a follow-up letter on and October 3, 2014 and October 7, 2014 at the email address listed in the then-available whois records for the <NatGeoKids.com> domain, Respondent has remained silent. Failure to respond to a cease and desist letter indicates bad faith registration and use of a domain name. See, Encyclopedia Britannica v. Zuccarini, WIPO Case No. D2000-0330 (failure to positively respond provides “strong support for a determination of ‘bad faith’ registration and use.”); RRI Financial, Inc., v. Chen, WIPO Case No. D2001-1242 (finding bad faith where “The Complainant alleges that it sent numerous cease and desist letters to [r]espondent without receiving a response”).
Finally, as more fully set forth above, by infringing upon Complainant’s internationally famous NAT GEO Marks, Respondent intentionally uses the Marks in its domain name to attract Internet searchers by creating a strong likelihood of confusion. This conclusively shows its bad faith intent.
Thus, all of the factors under Policy ¶4(b)(iv) strongly demonstrate that Respondent has registered and used the <NatGeoKids.com> domain in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 owns the NAT GEO trademark through multiple registrations with various trademark authorities, including the Office for Harmonization in the Internal Market (“OHIM”) and the United States Patent and Trademark Office (“USPTO”). See Reg. No. 3,503,943, registered May 18, 2005. Complainant uses the NAT GEO mark to market its educational services through its magazines, websites, catalogs, and a number of physical retail stores. Complainant’s valid registration of NAT GEO with the OHIM and USPTO sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶4(a)(i). See Direct Mktg. Co. S.p.A. v. Morelli, D2010-1335 (WIPO Sept. 6, 2010) (finding Complainant’s European Union Office for the Harmonization of the Internal Market (“OHIM”) trademark registration sufficient to establish complainant’s rights in its GIORNO NOTTE mark under Policy ¶4(a)(i)). There is no requirement Complainant prove it has superior rights to Respondent’s right at this point. All Complainant need do is prove it has some rights.
Complainant claims the <natgeokids.com> domain name is confusingly similar to Complainant’s NAT GEO mark. The domain name incorporates Complainant’s mark in full, omits a space, adds the generic term “kids”, and adds the gTLD “.com.” Alterations such as adding merely a gTLD or removing spacing are insufficient to distinguish the domain name from the otherwise incorporated mark in a variety of cases. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i)). This Panel would agree. There is confusing similarity where the domain name in dispute contains Complainant’s entire mark combined with a generic word or term. See Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark). The addition of the generic term does virtually nothing to distinguish the disputed domain name from the incorporated mark. The domain name and the mark are confusingly similarity under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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.”).
Complainant claims Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name as demonstrated by the WHOIS record. The WHOIS record pertaining to the disputed domain name lists “Domain Admin” as the domain’s registrant. This registrant has no legitimate interest in claiming to be “commonly known as” the <natgeokids.com> domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶4(c)(ii) does not apply). Complainant has not authorized Respondent’s use of the mark. Respondent has failed to provide any evidence to the contrary. It seems evident there is no basis on the record to find Respondent is commonly known by the disputed <natgeokids.com> domain name.
Complainant claims Respondent is not using the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent’s disputed domain name resolves to a website featuring a series of advertising links to various third-parties (essentially a pay per click dynamic parking page), some of whom offer related or competing goods and services. Complainant has provided a screenshot of the home page, which demonstrates the competing hyperlinks. Merely posting competing hyperlinks is not a Policy ¶4(c)(i) bona fide offering in the absence of some greater use or purpose behind the domain name. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)). Such facts indicate Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶4(a)(ii).
Furthermore, Respondent registered the disputed domain name using a WHOIS privacy service. This means Respondent has not publicly associated itself with the domain name, which means it cannot acquire any rights simply from owing the domain name. Such a use does not give Respondent any rights simply because of its use of the disputed domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Internet users will be easily confused by the Respondent’s use the NAT GEO mark when visiting the website <natgeokids.com>. Although the website does not appear to be operated by a direct competitor, there does not need to be direct competition to establish bad faith under ¶4(b)(iii). Bad faith can be established through confusion and/or diversion of consumers in a disruptive manner. See Schering Corp. v. NGS Enters., Ltd, FA 198013 (Nat. Arb. Forum Nov. 7, 2003) (“The Panel declines to adopt a narrow interpretation of the term ‘competing,’ as urged by Respondent . . . The Panel agrees with Complainant that at least some confusion and/or diversion of consumers is likely here, even though Complainant's and Respondent's tablets address different medical issues.”). Competing links are present on the domain name’s dynamic parking page website. Such links are sufficient evidence of Policy ¶4(b)(iii) bad faith registration and use. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶4(b)(iii)).
Complainant claims Respondent has commercial gain from the use of the <natgeokids.com> domain name. Respondent likely receives compensation based upon the number of hits the website owners get from being linked to the <natgeokids.com> site. The disputed website diverts visitors—likely Complainant’s customers and potential customers—to other websites which, in some cases, are associated with Complainant’s competitors. Such a use means Respondent gets a benefit, even if it is only free parking of the web site. Respondent may actually get cash for its efforts. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Finally, Respondent registered the disputed domain name using a WHOIS privacy service. This Panel has repeatedly held this raises the rebuttable presumption of bad faith in the commercial context. Respondent has done nothing to rebut this presumption. Given Respondent’s obligation to provide correct WHOIS information and its unexplained failure to do so, this raises the rebuttable presumption of bad faith. Nothing has been done to rebut the presumption. Therefore, the Panel finds the disputed domain name was registered and used in bad faith under the penumbra of Policy ¶4(b).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <natgeokids.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, February 6, 2015
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