national arbitration forum

 

DECISION

 

Zee TV USA, Inc. v. Arsalan Altaf

Claim Number: FA0611000841064

 

PARTIES

Complainant is Zee TV USA, Inc. (“Complainant”), represented by Kay Lyn Schwartz, of Gardere Wynne Sewell, LLP, 1601 Elm Street, Suite 3000, Dallas, TX 75201.  Respondent is Arsalan Altaf (“Respondent”), 246 Scantic Rd., East Windsor, CT 06088.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <zeetv.com>, registered with Enom, Inc..

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 13, 2006; the National Arbitration Forum received a hard copy of the Complaint on November 15, 2006.

 

On November 17, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <zeetv.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 November 17, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 7, 2006 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@zeetv.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 14, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant is one of the world’s leading television broadcasting companies, and is the largest worldwide provider of continuous South Asian language television programming.

 

Complainant has continuously used the ZEE and ZEE TV marks in connection with its television broadcasting services since 1995. 

 

Complainant expanded its operations into the United States in July of 1998, and has since become the leading non-Hispanic ethnic television channel as measured by the number of paying subscribers in the Americas.

 

As a result of Complainant’s substantial investment in its marks, those marks have become widely known and recognized among South Asian consumers.   

 

Complainant holds numerous service mark registrations in connection with the provision of the broadcasting services, including the ZEE mark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3097202, issued March 7, 2006), and the ZEE TV mark, registered with the USPTO as of July 11, 2000 (Reg. No. 2,366,571).

 

Respondent registered the disputed domain name on September 22, 1998. 

 

The disputed domain name resolves to a website that features advertisements for third-party websites, some of which are operated by competitors of Complainant.

Respondent receives income based upon the number of visits made to this website.

 

Respondent’s <zeetv.com> domain name is confusingly similar to Complainant’s ZEE TV mark.

 

Respondent’s use of Complainant’s marks in the disputed domain name tends to cause confusion among Internet users as to Complainant’s possible sponsorship of or affiliation with Respondent’s website. 

 

Respondent does not have any rights or legitimate interests in the contested domain name <zeetv.com>.

 

Respondent registered and uses the <zeetv.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)   the domain name registered by Respondent is confusingly similar to the ZEE service mark and identical to the ZEE TV 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 same domain name was registered and is being used by Respondent in bad faith.

 

DISCUSSION

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 a 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:

 

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 or legitimate interests in respect of the domain name; and

iii. the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Respondent’s registration of the disputed domain name occurred prior to Complainant’s registration of its ZEE and ZEE TV marks. However, Complainant is not required to hold a mark registration in order to establish rights in the marks for purposes of Policy ¶ 4(a)(i).  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that a complainant's mark be registered by a government authority for such rights to exist); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names”.

 

For purposes of Policy ¶ 4(a)(i), Complainant has established common law rights in the ZEE and ZEE TV marks through continuous and extensive use of the marks in connection with the provision on television broadcasting services dating from 1995.  It is undisputed that Complainant has created substantial goodwill towards the marks.  Consequently, Complainant’s marks have acquired sufficient secondary meaning in the marks to establish common law rights.  See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”); see also Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that a complainant had acquired common law rights in the mark FISHTECH that it had used since 1982).

 

We next note that Respondent’s domain name is substantively identical to Complainant’s ZEE TV mark.  The disputed domain name merely removes the space between the two terms of Complainant’s ZEE TV mark and adds the top-level domain “.com.”  These alterations do not distinguish the disputed domain name from Complainant’s ZEE TV mark because spaces are not allowed in domain names and top-level domains are a requirement for all domain names.  In Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000), a panel found 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 . . . ."  Likewise, in Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001), a panel found that the <hannoverre.com> domain name was identical to a complainant’s HANNOVER RE mark, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names.” 

 

Respondent’s domain name is also confusingly similar to Complainant’s ZEE mark because the letters “tv” added to the mark to form the domain name are directly reflective of Complainant’s well known business.  Such an appendage lacks the distinction necessary to pass muster under the Policy.  See for example, Diageo Brands B.V., Diageo North America, Inc. and United Distillers Manufacturing, Inc. v. iVodka.com a.k.a. Alec Bargman, D2004-0627 (WIPO Sep. 27, 2004):

 

…adding a word such as “vodka,” that is descriptive of the goods offered by Complainants under its Marks, does not distinguish the Domain Names from the Marks but rather supports a finding of confusing similarity.

The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied as to both marks.

Rights or Legitimate Interests

 

Complainant contends that Respondent does not have rights or legitimate interests in the <zeetv.com> domain name.  Complainant has the initial burden of proof to establish that Respondent lacks rights or legitimate interests in its domain name.  Once Complainant makes out a prima facie case in support of its allegations, the burden then rests with Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):

 

Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).

 

See also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant has asserted that a respondent has no rights or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”). 

 

The Panel nonetheless chooses to examine the record to determine if there is any basis for concluding that Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).

 

In this connection, we first note that, on the record before us, there is no dispute that Respondent’s domain name resolves to a website featuring advertisements for third-party websites, from which Respondent presumably receives click-through fees.  Such use does not amount to 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):

 

Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

 

See also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that a respondent’s use of a disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name); likewise see Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate interests in a disputed domain name where a respondent used a complainant’s mark to redirect Internet users to a website offering credit card services related to those offered under a complainant’s mark). 

 

Furthermore, according to the WHOIS database, the registrant of the <zeetv.com> domain name is “Arsalan Altaf,” and there is no other evidence in the record of this proceeding to suggest that Respondent is commonly known by the disputed domain name.  Accordingly, Respondent has failed to demonstrate rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See, for example, Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (indicating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply).

The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

 

Complainant asserts that Respondent is using the disputed domain name to redirect Internet users to a website featuring advertisements for third-party websites, and that Respondent receives commercial gain from the redirection of Internet users to those websites.  Additionally, Complainant asserts that the use of its marks in the disputed domain name causes confusion as to Complainant’s possible sponsorship of or affiliation with the resulting website.  In light of these undisputed allegations, the Panel concludes that Respondent’s registration and use of the identical <zeetv.com> domain name for commercial gain constitutes bad faith under Policy ¶ 4(b)(iv).  See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that a respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to a complainant’s mark to redirect users to a website that offered services similar to those offered by that complainant); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name there in question was obviously connected with a complainant’s well-known marks, thus creating a likelihood of confusion for commercial gain).

 

Moreover, Respondent’s use of a domain name that is identical or confusingly similar to Complainant’s marks to redirect Internet users to a website featuring links to various third-party websites constitutes disruption that evidences bad faith pursuant to Policy ¶ 4(b)(iii).  See, for example, Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003):

 

Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).

 

See also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that a respondent acted in bad faith by attracting Internet users to a website that competed with a complainant’s business).

 

For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.

 

Accordingly, it is Ordered that the <zeetv.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  December 27, 2006

 

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