Cable News Network, Inc. v. Elio Ferrara / Comunicazione Italia srl
Claim Number: FA1808001800044
Complainant is Cable News Network, Inc. (“Complainant”), represented by Brian J. Winterfeldt of Winterfeldt IP Group PLLC, District of Columbia, USA. Respondent is Elio Ferrara / Comunicazione Italia srl (“Respondent”), represented by Matteo Pavanetto, Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cnnbusiness.com>, registered with Tucows Domains Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Vali Sakellarides as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 3, 2018; the Forum received payment on August 9, 2018.
On August 7, 2018, Tucows Domains Inc. confirmed by e-mail to the Forum that the <cnnbusiness.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 14, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 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@cnnbusiness.com. Also on August 14, 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.
A timely Response was received and determined to be complete on September 3, 2018.
On September 7, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Vali Sakellarides as Panelist.
On September 7, 2018 a Complainant’s timely Additional Submission was received and considered by the Panel.
On September 14, 2018 a Respondent’s timely Additional Submission was received and considered by the Panel.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Cable News Network, Inc., was founded in 1980 and owns and operates a well-known cable television network in the United States, known as “CNN.” Complainant has rights in the CNN mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,597,839, registered May. 22, 1990). See Compl. Annex 4. Respondent’s <cnnbusiness.com> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s CNN mark, and is only differentiated by the generic term “business” and the incorporation of the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <cnnbusiness.com> domain name. Respondent is not authorized to use Complainant’s CNN mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use as, instead, the disputed domain name currently resolves to a blank webpage, and formerly resolved to a monetized parked page. See Compl. Annex 7.
Respondent registered and uses the <cnnbusiness.com> domain name in bad faith. Respondent registered the domain name to create a likelihood of confusion among internet users for commercial gain. Furthermore, Respondent engages in a pattern of bad faith registration. Finally, Respondent had actual and constructive knowledge of Complainant’s rights in the CNN mark prior to registering the disputed domain name.
B. Respondent
Respondent is in the business of advertising statistic games in Italy such as the lottery. Respondent’s <cnnbusiness.com> domain name is not intended to create confusion in internet users.
The Panel notes the <cnnbusiness.com> domain name was created on Apr. 8, 2000. See WHOIS of record. The Panel notes the <cnnbusiness.com> domain name was created 20 years after the cable television network of Complainant was founded and 10 years after registration of the CNN mark with the USPTO.
C. Additional Submissions
In its Additional Submission Complainant refers to the arguments of Respondent in respect of the acronym CNN as “Centro Nazionali Numeri” relating to Respondent’s services. However, as Complainant explains the screenshot of Respondent’s website does not justify Respondent’s arguments.
In its additional submission Respondent repeats its arguments and adds that it is a very little company with no means to develop many projects every year. However, Respondent’s Additional Submission and additional annex (which is a copy of a printed paper) do not prove that the disputed domain name resolved in an active website of lottery or statistic games.
Complainant provides copies of its numerous trademarks, evidence of its wide reputation with millions of viewers all over the world, evidence of its launching of its website, <CNN.com> on August 30, 1995 and its numerous domain names.
Respondent in its Response argues, among other, that the domain name was purchased and used in good faith, without, however, submitting any relevant evidence. Its screenshot in the Response Annex is a map of Italy with ads around the same, as described by Complainant in its Additional Submission.
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.
Complainant claims to have rights in the CNN mark based upon its registration of the marks with the USPTO. Registration of a mark with the USPTO is sufficient to establish Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides a copy of its USPTO registration for the CNN mark (e.g., Reg. No. 1,597,839, registered May. 22, 1990). See Compl. Annex 4. Therefore, the Panel finds that Complainant has sufficiently demonstrated its rights in the CNN mark per Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <cnnbusiness.com> domain name is confusingly similar to Complainant’s mark because it wholly incorporates the CNN mark while adding a generic term and a gTLD. The addition of a generic term and a gTLD may not distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Here, Respondent wholly incorporates Complainant’s CNN mark, adds the descriptive term “business,” and incorporates the “.com” gTLD. Accordingly, the Panel concludes that Respondent’s <cnnbusiness.com> domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant first makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), therefore the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the CNN mark. Lack of authorization from a complainant to use its mark may support a finding that the respondent is not commonly known by the disputed domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Further, a lack of evidence in the record to substantiate a respondent’s assertion that they have been commonly known by a disputed domain name indicates said respondent lacks rights and legitimate interests in said disputed domain name per Policy ¶ 4(c)(ii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information of record identifies Respondent as “Elio Ferrara.” Furthermore, no information of the record indicates that Respondent was authorized to use Complainant’s CNN mark. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further alleges the Respondent fails to use <cnnbusiness.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Specifically, Complainant argues that Respondent has used the disputed domain name to hold inactive web pages for many years, and that the page was previously used in connection with various monetized parked pages. Use of a disputed domain name to resolve to a parked page does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Guess? IP Holder L.P. and Guess?, Inc. v. xi long chen, FA 1786533 (Forum June 15, 2018) (“The disputed domain name resolves to a parked page with the message, “website coming soon!” The Panel finds that this use does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii) and Respondent does not have rights or legitimate interests with respect of the domain name.”); see also Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”). Complainant provides screenshots of current and historical resolving websites for Respondent’s <cnnbusiness.com> domain name. See Compl. Annex 7. The screenshot shows the domain name does not resolve to an active website as, instead, an error pops up that says “This site can’t be reached.” Id. The Panel notes that Complainant’s screenshots do not show the historical resolution to monetized pages. Accordingly, the Panel concludes that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
First, Respondent registered and uses the <cnnbusiness.com> domain name in bad faith. Specifically, Complainant alleges Respondent registered the domain name to create a likelihood of confusion among internet users for commercial gain by initially resolving to a monetized page. Resolving to a page containing advertisements may evince a finding that a respondent registered and used said domain name in bad faith per Policy ¶ 4(b)(iv). See 3M Company v. Nguyen Hoang Son / Bussiness and Marketing, FA1408001575815 (Forum Sept. 18, 2014) (finding that the respondent’s use of the disputed domain name to host sponsored advertisements for Amazon, through which the respondent presumably profited, indicated that the respondent had used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv)). The Panel notes that Complainant fails to submit evidence of disputed domain name’s resolution to a monetized page. As such, the Panel finds Complainant failed to satisfy the elements of Policy ¶ 4(b)(iv).
Next, Complainant asserts Respondent acts in bad faith per Policy ¶ 4(a)(iii) as Respondent inactively holds the disputed domain name. Inactive holding of a disputed domain name may evince bad faith per Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Complainant provides screenshot evidence of the disputed domain name’s failure to resolve to an active page. See Compl. Annex 7. The Panel agrees with Complainant and finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Finally, Respondent had actual and constructive knowledge of Complainant’s rights in the CNN mark prior to registering the <cnnbusiness.com> domain name. Constructive knowledge is insufficient for a finding of bad faith per Policy ¶ 4(a)(iii); however, actual knowledge of a complainant’s rights in a mark prior to registration of a disputed domain name constitutes bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Complainant asserts that due to level of recognition and fame achieved by Complainant’s CNN brand of marks Respondent must have known of Complainant’s rights in the CNN marks prior to registration of the disputed domain name. The Panel agrees and finds Respondent acted in bad faith per 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 <cnnbusiness.com> domain name be TRANSFERRED from Respondent to Complainant.
Vali Sakellarides, Panelist
Dated: September 17, 2018
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