Discovery Communications, LLC v. Gjorgji Gjorgjiev
Claim Number: FA1804001780013
Complainant is Discovery Communications, LLC (“Complainant”), represented by Dan Jasnow of Arent Fox LLP, District of Columbia, USA. Respondent is Gjorgji Gjorgjiev (“Respondent”), Macedonia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <animalplanetstories.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 2, 2018; the Forum received payment on April 2, 2018.
On April 3, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <animalplanetstories.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 April 4, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 24, 2018 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@animalplanetstories.com. Also on April 4, 2018, 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 Forum transmitted to the parties a Notification of Respondent Default.
On April 30, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant states that it is one of the world’s leading media companies, reaching 3 billion cumulative subscribers in more than 220 countries and territories. Complainant’s television networks include Discovery Channel, TLC, Animal Planet, and The Science Channel. Complainant uses its ANIMAL PLANET mark to promote its products and services. It established rights in the mark through registration in the United States in 2004. The mark is also registered elsewhere around the world and it is famous.
Complaint alleges that the disputed domain name is confusingly similar to its ANIMAL PLANET mark because it merely adds the generic term “stories” and the generic top-level domain (“gTLD”) “.com” to the fully incorporated mark. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent does not have rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its ANIMAL PLANET mark in any fashion. Respondent is also not commonly known by the disputed domain name as the WHOIS information of record lists “Gjorgji Gjorgjiev” as the registrant. Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to resolve to a website that displays Complainant’s famous ANIMAL PLANET mark, articles and videos about animals, and advertisements that are unrelated to Complainant’s business. Complainant cites UDRP precedents to support its position.
Respondent registered and is using the disputed domain name in bad faith. Respondent uses domain name to create confusion with Complainant’s mark for Respondent’s commercial gain. Further, Respondent registered the disputed domain name with full knowledge of Complainant’s rights in the ANIMAL PLANET mark. Finally, Respondent uses the domain name to infringe on third parties’ intellectual property rights. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark ANIMAL PLANET and uses it to market media products and services, such as TV programs. The mark is well known.
Complainant’s rights in its mark dates back to at least September 2004.
The disputed domain name was registered in 2016.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website displays Complainant’s trademark, articles and videos about animals, and advertisements that are unrelated to Complainant’s business. Respondent had actual knowledge of Complainant’s mark.
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(f), 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 (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.”).
The disputed domain name is confusingly similar to Complainant’s mark because it merely adds the generic term “stories” and the gTLD “.com” to the fully incorporated mark. The addition of a generic term and a gTLD do not negate confusing similarity between a disputed domain name and a mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the Panel finds that the disputed domain name is confusingly similar, in the sense of the Policy, to Complainant’s mark.
Complainant has not licensed or otherwise authorized Respondent to use its ANIMAL PLANET mark in any fashion. Absent a response, WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record lists “Gjorgji Gjorgjiev” as the registrant. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name.
Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to resolve to a website that competes with Complainant’s <animalplanet.com> website: Complainant provides screenshots of the resolving website that display Complainant’s famous ANIMAL PLANET mark and articles and videos about animals. Use of a confusingly similar domain name to resolve to a website that directly competes with a complainant’s business may not be considered a bona fide offering or fair use pursuant to Policy ¶ 4(c)(i) and (iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site.). Therefore, the Panel finds that Respondent used the domain name to host a competing website and that it failed to use the domain name for a bona fide offering or fair use.
Further, Respondent uses the resolving website to feature advertisements that are unrelated to Complainant’s business. Use of a domain name to promote unrelated advertisements may not be considered a bona fide offering of goods or services. See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user). Therefore Panel finds that Respondent failed to use the domain name for a bona fide offering or fair use. The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for his use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent registered and is using the disputed domain name in bad faith by creating confusion with Complainant’s mark for Respondent’s commercial gain: the resolving website displays Complainant’s famous ANIMAL PLANET mark, articles and videos about animals, and click-through advertisements that are unrelated to Complainant’s business. Use of a domain name to cause confusion as to the source, sponsorship, affiliation, or endorsement therein may evidence bad faith. See OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)); see also Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”). Therefore, the Panel finds that Respondent used the disputed domain name to create confusion with Complainant’s ANIMAL PLANET mark for Respondent’s commercial gain and it finds that Respondent engaged in bad faith under Policy ¶ 4(b)(iv).
Further, Respondent registered the disputed domain name with full knowledge of Complainant’s rights in the ANIMAL PLANET mark, as shown by Respondent’s use of Complainant’s mark on its web pages. Actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Therefore, the Panel finds bad faith registration and use on this ground also.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <animalplanetstories.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: April 30, 2018
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