Discovery Communications, LLC v. Adminstrator of the Day
Claim Number: FA2201001981674
Complainant is Discovery Communications, LLC (“Complainant”), represented by Amy McFarland of Arent Fox LLP, District of Columbia, USA. Respondent is Adminstrator of the Day (“Respondent”), United Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <discoveryespanol.com>, registered with CommuniGal Communication Ltd.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 24, 2022; the Forum received payment on January 24, 2022.
On January 28, 2022, CommuniGal Communication Ltd. confirmed by e-mail to the Forum that the <discoveryespanol.com> domain name is registered with CommuniGal Communication Ltd. and that Respondent is the current registrant of the name. CommuniGal Communication Ltd. has verified that Respondent is bound by the CommuniGal Communication Ltd. 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 31, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 2022, by which Respondent could file a Response to the Complaint, via e-mail message addressed to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to the attention of postmaster@discoveryespanol.com. Also on January 31, 2022, 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 February 28, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant holds a registration for the service mark DISCOVERY EN ESPANOL, on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 2,336,166, which was registered March 28, 2000, pursuant to an application filed June 17, 1999, and declaring a first use in commerce of June 15, 1998, and which registration was renewed most recently as of June 12, 2020.
Complainant has invested substantial sums in developing and marketing the mark DISCOVERY EN ESPANOL in relevant markets.
The domain name <discoveryespanol.com> was first registered by a party other than Respondent on January 31, 2000.
Ownership of the domain name has changed hands many times in the intervening years before coming to rest with Respondent on October 27, 2016.
The domain name is confusingly similar to Complainant’s DISCOVERY EN ESPANOL mark.
Respondent has not been commonly known by the domain name.
Respondent is not licensed or otherwise authorized to use Complainant’s DISCOVERY EN ESPANOL mark.
Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, the domain name resolves to a parked webpage which features pay-per-click advertising.
Respondent thus uses the domain name to acquire commercial gain.
Respondent also offers the domain name for sale on the resolving webpage, which displays the message “discoveryespanol.com is for sale!” and a button which recites: “make offer.”
Respondent does not have either rights to or legitimate interests in the domain name.
Respondent knew of Complainant and its rights in the mark DISCOVERY EN ESPANOL when it registered the domain name.
The domain name is an instance of typo-squatting.
Respondent was a party to a prior UDRP case in which it was found to have registered a domain name in bad faith.
Respondent has registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is now being used by Respondent 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the same domain name was registered and is being used by Respondent in bad faith.
Complainant has rights in the service mark DISCOVERY EN ESPANOL sufficient for purposes of the standing requirements of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum December 28, 2018) (finding that a UDRP Complainant’s registration of a mark with the USPTO sufficiently confirmed its rights in the mark under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here United Arab Emirates). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <discoveryespanol.com> domain name is confusingly similar to Complainant’s DISCOVERY EN ESPANOL service mark. The domain name incorporates the mark in its entirety, with only the deletion of the spaces between its terms and the preposition “en” (for the English “in”), but with the addition of the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003):
The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.
See also The Royal Bank of Scotland Group plc v. TRB, FA622345 (Forum February 22, 2006) and Saul Zaentz Co. v. Dodds, FA 233054 (Forum March 16, 2004) (each finding confusingly similarity between a UDRP complainant’s mark and a domain name incorporating the dominant portion of the mark, less an included preposition, because that deletion failed to distinguish the resulting domain name from the mark under the terms of Policy ¶ 4(a)(i)).
Finally, under this head of the Policy, see, for example, Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Forum February 19, 2003):
… [s]paces between words are not significant in determining the similarity of a domain name and a mark because … spaces are not reproducible in a domain name.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the domain name <discoveryespanol.com>, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the challenged domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the DISCOVERY EN ESPANOL mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Administrator of the Day,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the <discoveryespanol.com> domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant asserts, without objection from Respondent, that Respondent employs the contested domain name to resolve to a parked webpage which features pay-per-click advertising, and that, by this method, Respondent uses the domain name to acquire commercial gain. This use is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015):
Placing unrelated third[-]party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.
In the circumstances here presented, it is also germane that Respondent does not refute the allegation of the Complaint that it offers the domain name for sale on the domain name’s resolving webpage, which displays the message “discoveryespanol.com is for sale!” and a button which recites: “make offer.” Such a manipulation of the domain name suggests that, rather than making a bona fide offering of goods or services by means of it or a legitimate noncommercial or fair use of it, Respondent merely employs the domain name to produce revenue from pay-per-click advertising while awaiting the opportunity to profit further via the sale of the domain name. Such behavior has been condemned by UDRP panels. See, for example, Twentieth Century Fox Film Corporation v. Diego Ossa, FA1602016 (Forum February 26, 2015):
The Resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’ The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights [to] or legitimate interests in the … domain name.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
As to whether Respondent registered and uses the <discoveryespanol.com> domain name in bad faith, we first address the point of time. The facts before us show that Respondent is not the first registrant of the domain name but is instead the last in a long train of owner-registrants stretching back to the early days of the year 2000. The question arising from this is whether Respondent can fairly be said to have registered the domain name in bad faith. The answer is yes. This is because, while it is possible that the initial registrant of the domain name did so in good faith, it is also possible that a subsequent registrant has done so in bad faith. What determines the question for the present Respondent is the situation as it existed at the time Respondent acquired and registered the domain name in 2016. See paragraph 3.8.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, which recites as follows:
Merely because a domain name is initially created by a registrant other than the respondent before a complainant’s trademark rights accrue does not … mean that a UDRP respondent cannot be found to have registered the domain name in bad faith. Irrespective of the original creation date, if a respondent acquires a domain name after the complainant’s trademark rights accrue, the panel will look to the circumstances at the date the UDRP respondent itself acquired the domain name.
See also DHL Operations B.V. v. Karel Salovsky, D2006-0520 (WIPO June 22, 2006):
It is reasonable to infer from these circumstances that both Respondent’s predecessor in title and Respondent himself, prior to the registration of the domain names, which wholly incorporate Complainant’s registered … mark, were individually aware of the fact that Complainant was the owner of the … mark because of the widespread and long-standing advertising and marketing of goods and services under the … mark.
We therefore look to Complainant’s unchallenged contentions that, from its beginnings in 1985, Complainant has built one of the world’s leading media and entertainment companies, producing content reaching billions of subscribers in 220 countries and territories in fifty languages via television, social media and mobile services and delivered on such vehicles as Discovery Channel, HGTV, Food Network, Travel Channel, Animal Planet, Science Channel and Eurosport, and that it has invested substantial sums in developing and marketing the mark DISCOVERY EN ESPANOL. In this connection, we note that the record here demonstrates that, approximately a year after Complainant commenced use of the mark DISCOVERY EN ESPANOL, the first owner of the <discoveryespanol.com> domain name registered it on January 31, 2000, only a matter of months after Complainant had filed with the USPTO its application for registration of the mark on June 17, 1999, and only a matter of weeks before the mark registration became effective on March 28, 2000. On these facts it would be difficult to avoid the conclusion that the first of the domain name’s many registrants did so in bad faith anticipation of registration of the mark. But we need not settle that question here. It is enough for us to conclude, as we do, that whatever may have been the circumstances of the first domain name registration in the year 2000, Complainant’s since-gained and undenied prominence in the marketplace makes clear that this Respondent must have known of Complainant and its rights in its mark when Respondent registered the confusingly similar domain name on October 27, 2016.
We therefore conclude that Respondent registered the domain name in bad faith.
As to whether Respondent now uses the <discoveryespanol.com> domain name in bad faith, we are persuaded by the evidence that Respondent uses the domain name to resolve to a parked webpage which features pay-per-click advertising, thus to acquire commercial gain. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in using the domain name. See, for example, T-Mobile USA, Inc. v. utahhealth, FA 697821 (Forum June 7, 2006) (finding that a respondent’s use of a domain name that was confusingly similar to a UDRP complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees constituted bad faith use under Policy ¶ 4(b)(iv)). See also Ass’n of Junior Leagues Int’l Inc. v. This Domain Name May Be For Sale, FA 857581 (Forum January 4, 2007) (finding that a respondent’s use of a disputed domain name to resolve to a pay-per-click site in order to generate revenue demonstrated bad faith use under Policy ¶ 4(b)(iv)).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <discoveryespanol.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 4, 2022
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