CBS Corporation v. Joe Michaels / Rockstar Generation LLC / Go Time Studios LLC
Claim Number: FA1810001810234
Complainant is CBS Corporation (“Complainant”), represented by Dennis L. Wilson of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Joe Michaels / Rockstar Generation LLC / Go Time Studios LLC (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <carpoolkaraoke.com>, <carpoolkaraokeseries.com>, <carpoolkaraoketheseries.com>, <karaokecarpool.com>, registered with GoDaddy.com, LLC.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 3, 2018; the Forum received payment on October 3, 2018.
On October 3, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <carpoolkaraoke.com>, <carpoolkaraokeseries.com>, <carpoolkaraoketheseries.com>, <karaokecarpool.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 October 8, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 29, 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@carpoolkaraoke.com, postmaster@carpoolkaraokeseries.com, postmaster@carpoolkaraoketheseries.com, postmaster@karaokecarpool.com. Also on October 8, 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 November 2, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <carpoolkaraoke.com>, <carpoolkaraokeseries.com>, <carpoolkaraoketheseries.com>, <karaokecarpool.com> domain names are confusingly similar to Complainant’s CARPOOL KARAOKE mark.
2. Respondent does not have any rights or legitimate interests in the <carpoolkaraoke.com>, <carpoolkaraokeseries.com>, <carpoolkaraoketheseries.com>, <karaokecarpool.com> domain names.
3. Respondent registered and uses the <carpoolkaraoke.com>, <carpoolkaraokeseries.com>, <carpoolkaraoketheseries.com>, <karaokecarpool.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, CBS Corporation, uses the CARPOOL KARAOKE and CARPOOL KARAOKE: THE SERIES marks in connection with popular videos. Complainant holds a registration for the CARPOOL KARAOKE mark with the United States Patent and Trademark Office ("USPTO”) (Reg. No. 5,138,999 registered Feb. 7, 2017).
Respondent registered the <carpoolkaraoke.com> and <karaokecarpool.com> domain names on May 21, 2015, the <carpoolkaraokeseries.com> domain name on March 15, 2017, and the <carpoolkaraoketheseries.com> domain name on March 25, 2017. Respondent uses the <carpoolkaraokeseries.com>, <carpoolkaraoketheseries.com>, and <karaokecarpool.com> domain names to divert users to its own website, which features sponsored advertising links, and uses the <carpoolkaraoke.com> domain name to pass off as 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."
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 Panel finds that Complainant has rights in the CARPOOL KARAOKE mark under Policy ¶ 4(a)(i) based upon its registration of the mark with the USPTO. 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.”). Here, Complainant provides screenshots of its registrations with the USPTO (e.g., Reg. No. 5,138,999 registered Feb. 7, 2017).
Complainant claims common law rights in the CARPOOL KARAOKE mark dating back to March 20, 2015, when Complainant first aired a skit associated with the mark; and in the CARPOOL KARAOKE: THE SERIES mark dating back to February 13, 2017, when its licensee, Apple, first released a trailer associated with the mark. Common law rights in a mark may be established with evidence that the mark has acquired secondary meaning, such as advertising, media recognition, and use in commerce. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). For the CARPOOL KARAOKE mark, Complainant provides screenshots of its videos, including view counts and publishing dates, as well as evidence of media recognition. For the CARPOOL KARAOKE: THE SERIES mark, Complainant provides a news article and a screenshot of the trailer video, including the view count and publishing date. The Panel finds that the CARPOOL KARAOKE mark has acquired secondary meaning, and that therefore Complainant has common law rights in the mark dating back to March 20, 2015 and in the CARPOOL KARAOKE: THE SERIES mark, dating back to February 13, 2017,
The Panel finds that the <carpoolkaraoke.com> domain name is identical to Complainant’s CARPOOL KARAOKE mark under Policy ¶ 4(a)(i) because it only adds the gTLD “.com.” See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (“Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”).
Respondent’s <karaokecarpool.com> domain name includes the entire mark, transposes the words in the mark, and adds a gTLD. Transposing the words in a mark is insufficient to distinguish a domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Google LLC v. Hai Min Xu / Xu Hai Min / haimin xu, FA 1779597, (Forum May 3, 2018) (finding the <opensourcegoogle.com> domain name to be confusingly similar to the GOOGLE OPEN SOURCE mark, as the domain name consists of the mark with the terms transposed). The addition of a gTLD is irrelevant to Policy ¶ 4(a)(i) analysis. See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”). Accordingly, the Panel finds that the <karaokecarpool.com> domain name is confusingly similar to Complainant’s CARPOOL KARAOKE mark.
Respondent’s <carpoolkaraokeseries.com> and <carpoolkaraoketheseries.com> domain names use Complainant’s CARPOOL KARAOKE: THE SERIES mark, removes spaces and punctuation, removes a word from the <carpoolkaraokeseries.com> domain, and adds a gTLD. The removal of spaces, punctuation, and the word “the” does not distinguish a mark from a disputed domain under Policy ¶ 4(a)(i). See Twentieth Century Fox Film Corporation v. Hugh Hysell / HHC Marketing, FA 1724018 (Forum Apr. 21, 2017) (finding the omission of a period and spacing from the MRS. DOUBTFIRE mark in creating domain names does not distinguish the names from the mark because “punctuation and spacing have also been deemed irrelevant alterations to marks.”); see also The Men’s Wearhouse, Inc. v. BLADMIR BOYIKO, fa 1654753 (Forum Feb. 3, 2016) (holding that removing “the” from a complainant’s mark does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)). Therefore, the Panel finds that the <carpoolkaraokeseries.com> and <carpoolkaraoketheseries.com> domain names are confusingly similar to Complainant’s CARPOOL KARAOKE: THE SERIES mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 lacks rights and legitimate interests in the <carpoolkaraoke.com>, <carpoolkaraokeseries.com>, <carpoolkaraoketheseries.com>, and <karaokecarpool.com> domain names and is not commonly known by the domain names. Respondent is not authorized to use Complainant’s CARPOOL KARAOKE or CARPOOL KARAOKE: THE SERIES marks. The WHOIS of record identifies Respondent as “Joe Michaels / Rockstar Generation LLC / Go Time Studios LLC.” Therefore, the Panel finds that the Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii). 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)); see also Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Complainant contends that Respondent fails to use the <carpoolkaraokeseries.com>, <carpoolkaraoketheseries.com>, and <karaokecarpool.com> domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the domains to divert users to a website hosting sponsored links. Use of a disputed domain to divert Internet traffic to a website hosting sponsored links is not a bona fide offering or a legitimate use under Policy ¶ 4(c)(i) or (iii). See 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 the resolving webpages for the <carpoolkaraokeseries.com>, <carpoolkaraoketheseries.com>, and <karaokecarpool.com> domain names, each of which features a series of advertisements and links. Therefore, the Panel finds that this use is 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).
Complainant also contends that Respondent fails to use the <carpoolkaraoke.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the domain to pass off as Complainant. Complainant provides screenshots of the <carpoolkaraoke.com> domain name’s resolving webpage, which features videos allegedly produced and owned by Complainant. Therefore, the Panel finds that Respondent uses the <carpoolkaraoke.com> domain to attempt to pass off as Complainant, and therefore fails to use the disputed domain for 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). See Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) (“The usage of Complainant’s NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name.”).
Complainant alleges that Respondent fails to use the <carpoolkaraoke.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent has historically inactively held the disputed domain name. Complainant provides screenshots from the Wayback Machine Internet Archive showing the <carpoolkaraoke.com> domain name featuring only the statement, “The domain carpoolkaraoke.com is no longer parked by GoDaddy.” The Panel finds that Respondent has inactively held the <carpoolkaraoke.com>, further evidence that Respondent fails to use the disputed domain for 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). See Nutri/System IPHC, Inc. v. Usama Ayub, FA1725806 (Forum June 5, 2017) (“Respondent does not use the <nutrisystemturbo.us> domain for a bona fide offering of goods or services because the domain name resolves to a website that currently is designated as ‘under construction.’”).
Complainant alleges that Respondent lacks rights and legitimate interests in the <carpoolkaraoke.com> domain name because Respondent offers the domain for sale. Offering a domain name for sale may evince a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See AOL Inc. v. YourJungle Privacy Protection Service aka Whois Agent, FA1312001533324 (Forum Jan. 17, 2014) (“Respondent has offered the <aoljobsweek.com> domain name for sale to the general public, which demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Here, Complainant provides a screenshot from the registrar’s website showing that the domain is for sale for $40,000. The Panel finds that this use further demonstrates Respondent’s lack of rights and legitimate interests in the disputed domain under Policy ¶ 4(a)(ii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <carpoolkaraoke.com> domain name in bad faith because Respondent offers the domain for sale. The Panel agrees and finds that Respondent registered and uses the <carpoolkaraoke.com> domain name in bad faith under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”).
Complainant asserts that Respondent uses the <carpoolkaraokeseries.com>, <carpoolkaraoketheseries.com>, and <karaokecarpool.com> domain names in bad faith because Complainant uses the disputed domains to attract users for commercial gain by hosting advertisements and links. Use of a disputed domain to host advertisements and links may evince bad faith under Policy ¶ 4(b)(iv). See Vivint, Inc. v. Online Management, FA1403001549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links). Accordingly, the Panel finds that Respondent uses the <carpoolkaraokeseries.com>, <carpoolkaraoketheseries.com>, and <karaokecarpool.com> domain names in bad faith under Policy ¶ 4(b)(iv).
Complainant also shows that Respondent uses the <carpoolkaraoke.com> domain name to pass off as Complainant. The Panel finds that this constitutes bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the CARPOOL KARAOKE and CARPOOL KARAOKE: THE SERIES marks prior to registering the disputed domain names. Actual knowledge of a complainant’s rights in a mark may support a finding of bad faith under Policy ¶ 4(a)(iii), and can be shown through evidence of the fame of the mark and the respondent’s use of it. See Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous); see also Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA1412001596020 (Forum Jan. 27, 2015) (finding that the respondent must have had actual knowledge of the complainant and its rights in the FOX LIFE mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos on its website, indicating that the respondent had acted in bad faith under Policy ¶ 4(a)(iii)). Complainant provides screenshots of its videos showing view counts and evidence of media recognition, and a screenshot of the <carpoolkaraoke.com> domain name’s resolving webpage, which features videos allegedly produced and owned by Complainant. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the marks prior to registering the <carpoolkaraoke.com>, <carpoolkaraokeseries.com>, <carpoolkaraoketheseries.com>, and <karaokecarpool.com> domain names, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied 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 <carpoolkaraoke.com>, <carpoolkaraokeseries.com>, <carpoolkaraoketheseries.com>, <karaokecarpool.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 5, 2018
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