American Broadcasting Companies, Inc. v.
Mohamad Hindawi
Claim
Number: FA0508000535497
Complainant is American Broadcasting Companies, Inc. (“Complainant”),
represented by J. Andrew Coombs, of J. Andrew Coombs, A Professional Corporation, 450 North Brand Boulevard, Suite
600, Glendale, CA 91203-2349.
Respondent is Mohamad Hindawi (“Respondent”),
PO Box 4073, 11790-0903, Stony Brook, NY.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <myabcnews.com>, registered with Computer
Services Langenbach Gmbh d/b/a Joker.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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
8, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 9, 2005.
On
August 16, 2005, Computer Services Langenbach Gmbh d/b/a Joker.com confirmed by
e-mail to the National Arbitration Forum that the <myabcnews.com>
domain name is registered with Computer Services Langenbach Gmbh d/b/a
Joker.com and that Respondent is the current registrant of the name. Computer Services Langenbach Gmbh d/b/a
Joker.com has verified that Respondent is bound by the Computer Services
Langenbach Gmbh d/b/a Joker.com registration agreement and has thereby agreed
to resolve domain-name disputes brought by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
August 17, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 6, 2005 by which Respondent could file a response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent's registration as technical, administrative and
billing contacts, and to postmaster@myabcnews.com by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
September 13, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed the
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <myabcnews.com>
domain name is confusingly similar to Complainant’s ABC mark.
2. Respondent does not have any rights or
legitimate interests in the <myabcnews.com> domain name.
3. Respondent registered and used the <myabcnews.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
American Broadcasting Companies, Inc., operates four national broadcast
networks under the name ABC, and has done so for more than fifty years.
Complainant’s network consists of
numerous affiliate stations and a small number of owned and operated
stations. The stations owned and
operated by Complainant are among the most widely viewed stations on the ABC
network.
Complainant owns
numerous trademark registrations with the United States Patent and Trademark
Office (“USPTO”) for the ABC mark (e.g. Reg. No. 755,703 issued August
27, 1963; Reg. No. 2,023,417 issued December 17, 1996).
Respondent
registered the <myabcnews.com> domain name on July 23, 2003. Respondent’s domain name does not resolve to
an active website.
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."
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(e), 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 (Nat. Arb. 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.”).
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
asserts that it has established rights in the ABC mark through registration
with the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat.
Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations
establish Complainant's rights in the BLIZZARD mark.”);
see also Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the
NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).
Additionally, Respondent’s <myabcnews.com> domain
name is confusingly similar to Complainant’s mark, as the domain name fully
incorporates Complainant’s ABC mark in its entirety and merely adds the
descriptive term “news” and the common word “my.” Such changes are not enough to overcome a finding of confusing
similarity pursuant to Policy 4(a)(i). See
Am. Int’l
Group, Inc. v. Ling Shun Shing,
FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the
term “assurance,” to the complainant’s AIG mark failed to sufficiently
differentiate the name from the mark under Policy ¶ 4(a)(i) because the
appended term related directly to the complainant’s business); see also Am.
Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum
Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark
and merely added the descriptive terms “traffic school,” “defensive driving,”
and “driver improvement” did not add any distinctive features capable of
overcoming a claim of confusing similarity); see also ESPN,
Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000)
(finding that the “domain name MYSPORTSCENTER.COM registered by Respondent is
confusingly similar to Complainant’s SportsCenter mark”).
Furthermore, the
addition of the top-level domain “.com” is irrelevant in determining whether
the <myabcnews.com> domain name is confusingly similar to
Complainant’s mark. See Blue Sky Software Corp. v. Digital
Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name
<robohelp.com> is identical to the complainant’s registered ROBOHELP
trademark, and that the "addition of .com is not a distinguishing
difference"); see also Busy Body,
Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that
"the addition of the generic top-level domain (gTLD) name ‘.com’
is . . . without legal significance since use of a gTLD is
required of domain name registrants").
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent does
not have rights or legitimate interests in the <myabcnews.com> domain
name. When a complainant establishes a prima facie case pursuant to Policy ¶
4(a)(ii), the burden shifts to the respondent to prove that it has rights or
legitimate interests. Due to
Respondent’s failure to respond to the Complaint, the Panel infers that Respondent
does not have rights or legitimate interests in the disputed domain name. See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that once the complainant asserts that the respondent does not have rights or
legitimate interests with respect to the domain, the burden shifts to the
respondent to provide credible evidence that substantiates its claim of rights
or legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com,
D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the
mere assertion by the complainant that the respondent does not have rights or
legitimate interests is sufficient to shift the burden of proof to the
respondent to demonstrate that such rights or legitimate interests do exist); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name).
Moreover,
Respondent is not commonly known by the <myabcnews.com> domain
name. Thus, the Panel concludes that
Respondent has not established rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
See Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where respondent was not commonly known by the mark and
never applied for a license or permission from complainant to use the
trademarked name); see also Broadcom
Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001)
(finding no rights or legitimate interests because respondent is not commonly
known by the disputed domain name or using the domain name in connection with a
legitimate or fair use); see also
Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug.
29, 2000) (finding that the respondent has no rights or legitimate interests in
domain names because it is not commonly known by the complainant’s marks and
the respondent has not used the domain names in connection with a bona fide offering of goods and services
or for a legitimate noncommercial or fair use).
Furthermore,
Complainant contends that Respondent is not making any use of the <myabcnews.com>
domain name, as it does not resolve to an active website. Such nonuse cannot be considered a use in
connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where the respondent failed to submit a response to the complaint and had made
no use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000)
(finding no rights or legitimate interests in the domain name where there is no
proof that the respondent made preparations to use the domain name or one like
it in connection with a bona fide offering of goods and services before
notice of the domain name dispute, the domain name did not resolve to a
website, and the respondent is not commonly known by the domain name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Complainant
contends that Respondent registered the <myabcnews.com> domain
name in bad faith pursuant to Policy
¶ 4(a)(iii) because Respondent has not made any use of the disputed domain name
since registering it. Therefore, the
Panel finds that Respondent registration of the disputed domain constitutes bad
faith pursuant to Policy ¶
4(a)(iii). See Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in bad
faith); see also Caravan Club v.
Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the
respondent made no use of the domain name or website that connects with the
domain name, and that passive holding of a domain name permits an inference of
registration and use in bad faith); see also Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18,
2000) (“it is possible, in certain circumstances, for inactivity by the Respondent
to amount to the domain name being used in bad faith”).
Furthermore,
Respondent registered the <myabcnews.com> domain name which
contains Complainant’s famous ABC mark.
This suggests that Respondent had actual knowledge of Complainant’s
rights in the ABC mark when it registered the domain name and chose the
disputed domain name based on the goodwill Complainant has acquired in the ABC
mark. Furthermore, Complainant’s
registration of the ABC mark with the USPTO bestows upon Respondent constructive
notice of Complainant’s rights in the mark.
Respondent’s registration of a domain name containing Complainant’s
marks in spite of Respondent’s actual or constructive knowledge of
Complainant’s rights in the mark is evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding
that evidence of bad faith includes actual or constructive knowledge of a
commonly known mark at the time of registration); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding
that, because the link between the complainant’s mark and the content
advertised on the respondent’s website was obvious, the respondent “must have
known about the Complainant’s mark when it registered the subject domain
name”); see
also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4,
2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the
USPTO, a status that confers constructive notice on those seeking to register
or use the mark or any confusingly similar variation thereof.”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <myabcnews.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
September 26, 2005
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