NBC Universal Media, LLC v. Kelly Dinh
Claim Number: FA2103001935836
Complainant is NBC Universal Media, LLC (“Complainant”), represented by Steven M. Levy of FairWinds Partners LLC, Pennsylvania, USA. Respondent is Kelly Dinh (“Respondent”), New Mexico, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cnbc-us.com>, registered with NameCheap, Inc..
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 8, 2021; the Forum received payment on March 8, 2021.
On March 9, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <cnbc-us.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 March 9, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 2021 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@cnbc-us.com. Also on March 9, 2021, 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 5, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
Founded in 1969 and owned by NBC Universal News Group, a division of NBCUniversal Media, LLC, the Complainant is the recognized world leader in business news and provides real-time financial market coverage and business content consumed by more than 355 million people per month across all platforms. Complainant has rights in the CNBC trademark through registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,714,206, registered September 18, 1992). Respondent’s <cnbc-us.com> domain name is confusingly similar to Complainant’s trademarks as it incorporates Complainant’s CNBC trademark in its entirety and merely adds a hyphen, the geographic term “us”, and the gTLD “.com”.
Respondent lack rights or legitimate interests in the <cnbc-us.com> domain name. Respondent is not commonly known by the domain name nor has Respondent been authorized by Complainant to use the CNBC trademark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or legitimate non-commercial or fair use as Respondent has attempted to pass off as Complainant for commercial gain. Additionally, Respondent has passed off as Complainant in pursuance of a phishing scheme.
Respondent registered and used the disputed domain names in bad faith. Respondent has misrepresented themselves as Complainant for commercial gain. Additionally, Respondent used a privacy service to conceal their identity. Finally, Respondent registered the disputed domain names domain name with actual knowledge of Complainant’s rights in the CNBC trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner the United States Patent and Trademark Office (“USPTO”) Trademark Registration No. 1,714,206 CNBC (word), registered September 8, 1992 for services in classes 38 and 41.
The Complainant is further the owner of the European Union Trade Mark Registration No 000000448 CNBC (word), registered February 2, 1998 for services in classes 38 and 41.
The <cnbc-us.com> domain name was registered on December 5, 2020.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the CNBC trademark through Complainant’s registration of the trademark with the USPTO (e.g. Reg. No. 1,714,206, registered September 8, 1992). Registration of a trademark with the USPTO is sufficient to demonstrate rights in the trademark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Complainant further asserts rights in the CNBC trademark through Complainant’s registration of the trademark with the EUIPO (e.g. Reg. No. 000000448, registered February 2, 1998). Also registration of a trademark with the EUIPO sufficiently confers a complainant’s rights in a trademark for the purposes of Policy ¶ 4(a)(i). See NIKE, Inc., and Nike Innovate, C.V. v. Emile Boulanger, FA 1732458 (Forum July 3, 2017) (“Registration with the OHIM…” [now: EUIPO] “…is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i).”).
Accordingly, the Panel finds that Complainant has established rights in the CNBC trademark for the purposes of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s disputed domain name is confusingly similar to Complainant’s trademarks as it incorporates Complainant’s CNBC trademark in its entirety and merely adds a hyphen, the geographic term “us” and the gTLD “.com”. The addition of a hyphen, a geographic term and a gTLD fails to sufficiently distinguish a disputed domain name from a trademark per Policy ¶ 4(a)(i). 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 names 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 to Complainant’s trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (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.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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).
Complainant contends that Respondent lacks rights or legitimate interests in the domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in the CNBC trademark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). Additionally, lack of authorization to use Complainant’s trademark can prove that the Respondent is not commonly known by the disputed domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain names where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). In the present case, the WHOIS information for the disputed domain names provided by the registrar lists the registrant as “Kelly Dinh”. Additionally, there is no evidence to suggest that Respondent was authorized to use the CNBC trademark and Complainant contends that they never gave any permission or authorization to the Respondent regarding the use of their trademark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent passes off as Complainant for commercial gain. A respondent passing off as complainant for commercial gain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here, Complainant argues that the disputed domain name resolves to a nearly identical website to that of the Complainant and serves the user a number of advertisements unrelated to the Complainant’s business. Complainant continues that when a user clicks on one of the offered advertisements they are taken to a third party’s website. Complainant contends that the Respondent profits from this scheme by being paid through the aforementioned third parties on a “click-through” basis. Therefore, the Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant also argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent passes off as the Complainant in order to operate a phishing scheme. Phishing is not indicative of rights or legitimate interests under Policy ¶ 4(a)(ii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant here argues that when a user visits the Respondent’s website, they are first shown an offer for a “newsletter” in which they are asked to provide their email address to the Respondent. Therefore, the Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent registered the disputed domain name in bad faith as Respondent uses the <cnbc-us.com> domain name to misrepresent itself as Complainant for commercial gain. A respondent registering a confusingly similar domain name and using it to misrepresent themselves as a complainant for commercial gain may indeed be bad faith per Policy ¶ 4(b)(iii). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 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.”). Here, Complainant argues that the disputed domain name resolves to a website that uses Complainant’s logo and trademark and uses actual news taken from the Complainant’s website. Complainant continues that the Respondent also offers advertisements on this website for which it is presumably paid by third parties, allowing the Respondent to profit off of the ruse. Therefore, the Panel clearly finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii).
Complainant also argues that Respondent registered the disputed domain name in bad faith as Respondent hid their identity from the Complainant using a privacy service. A Respondent hiding their identity with a privacy service may be bad faith per Policy ¶ 4(b)(iii). See Robert Half International Inc. v. robert arran, FA 1764367 (Forum February 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). Here, Complainant argues that the Respondent used a privacy service to conceal their identity and that the true WHOIS information for the Respondent only became known after the Complainant filed the original complaint in this case. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii).
Finally, Complainant contends that Respondent registered and used the disputed domain name with actual knowledge of Complainant’s CNBC trademark due to the prominence of the trademark and that the Respondent could not have possibly registered the disputed domain name in good faith given that prominence. A respondent’s registration of a confusingly similar domain name to a well-known trademark as well as respondent’s complete incorporation of the complainant’s trademark into the disputed domain name may demonstrate a respondent’s actual knowledge of a complainant’s rights to the trademark per Policy ¶ 4(a)(iii). See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain names in bad faith). Here, Complainant argues that the similarity between the disputed domain name and Complainant’s own prominent trademarks indicates that Respondent had actual knowledge of the trademarks. The Panel agrees with Complainant’s conclusion, and finds that Respondent registered and uses the disputed domain name 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 <cnbc-us.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter RIndforth, Panelist
Dated: April 19, 2021
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