Educational Broadcasting Corporation v. Modern Limited - Cayman Web Development c/o Web Master
Claim Number: FA0701000882170
Complainant is Educational Broadcasting Corporation (“Complainant”), represented by David
H. Bernstein, of Debevoise & Plimpton LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wliw.com>, registered with Enom.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On January 12, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 1, 2007 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@wliw.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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:
Complainant is a non-profit corporation that owns and
operates the public television station WLIW, which is a Public Broadcasting
Service (“PBS”) affiliate in the
This television station has used its WLIW mark, which consists of the FCC-designated call letters for the station, continuously since 1969.
Complainant has expended significant time, money, and effort establishing public recognition of the WLIW mark as a source of educational entertainment programs and related products.
Complainant has received numerous awards for its original television programming, some of which is broadcast nationwide on PBS.
Complainant has not given Respondent consent to use its WLIW mark in the domain name <wliw.com>.
Respondent registered the <wliw.com> domain name on July 1, 2004.
Respondent uses the disputed domain name to display text-based entertainment-related and public television links which divert Internet users to unrelated commercial sites, some of which offer products that compete with those of Complainant.
Respondent’s <wliw.com> domain name is identical to Complainant’s WLIW mark.
Respondent does not have any rights or legitimate interests in the disputed domain name.
Numerous panels have found Respondent to be in violation of the Policy, and have accordingly ordered Respondent to transfer multiple domain names.
Respondent registered and uses the <wliw.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical to a trademark 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.
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.
It is not necessary for Complainant to hold a registered trademark in order to establish rights in its WLIW mark for purposes of the Policy. Common law rights in a mark are sufficient to satisfy 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 trademark or service 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.”
Complainant has established rights in the common law trademark WLIW through more than thirty years of continuous and extensive use. It is undisputed on this record that Complainant has created substantial consumer recognition in the WLIW mark sufficient to establish its rights in the mark pursuant to Policy ¶4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also 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.”
Respondent’s <wliw.com> domain name is identical to Complainant’s WLIW mark. The disputed domain name uses the WLIW mark in its entirety, adding only the generic top-level domain “.com.” Therefore, the mark and the disputed domain name are identical within the meaning of Policy ¶4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to a competing mark); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. 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.”).
The Panel therefore finds that Policy ¶4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or
legitimate interests in the <wliw.com>
domain name. Once Complainant makes out a
prima facie case in support of its
allegations, the burden shifts to Respondent to show it does have rights or
legitimate interests pursuant to Policy ¶ 4(a)(ii). Because Respondent failed to respond to the
Complaint, the Panel is entitled to and does assume that Respondent does not
have rights or legitimate interests in the disputed domain name. See G.D.
Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding
that, where a complainant has asserted that a respondent does not have 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); see also Am.
Express Co. v. Fang Suhendro, FA
129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to
respond, it is presumed that Respondent lacks all rights and legitimate
interests in the disputed domain name.”).
Nevertheless, the Panel will examine the record to determine if there is any basis for concluding that Respondent has rights or legitimate interests under Policy ¶ 4(c).
In this connection, we first observe that there is no dispute that Respondent currently uses the <wliw.com> domain name, which is identical to Complainant’s WLIW mark, to display links to websites, some of which offer products and services that directly compete with the business of Complainant. Moreover, by using the contested domain name to display text-based entertainment-related and public television links, Respondent is capitalizing on consumer confusion to redirect Internet users to commercial web sites.
Such use of the disputed domain name does not constitute 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). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to that complainant’s competitors, was not a bona fide offering of goods or services); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because a respondent's sole purpose in selecting the domain names was to cause confusion with a complainant's website and marks, its use of the names was not in connection with an offering of goods or services or any other fair use); further see MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where a respondent attempted to profit from using a complainant’s mark by redirecting Internet traffic to its own website).
Complainant alleges,
and Respondent does not deny, that Complainant has not given Respondent consent
to use its WLIW mark in the <wliw.com> domain name. Moreover, there is no information in the
WHOIS database indicating that Respondent is commonly known by the <wliw.com>
domain name. Therefore,
Respondent has not established rights to or legitimate interests in the <wliw.com>
domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have
rights in a domain name when that respondent is not known by the mark); see also Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has been involved in previous disputes in which the panels have transferred the disputed domain names to the complainants. See e.g.: L.A. Weight Loss Ctrs. Inc. v Cayman Trademark Trust, FA 464493 (Nat. Arb. Forum April 25, 2005); Keffer Dodge, Inc. v. Modern Ltd.-Cayman Web Dev., FA 311382 (Nat. Arb. Forum Sept. 20, 2004); SiteComp, Inc. v. Modern Ltd.-Cayman Web Dev., FA 280552 (Nat. Arb. Forum July 12, 2004); WeddingChannel.com Inc. v. Modern Ltd.-Cayman Web Dev., FA 271153 (Nat. Arb. Forum Sept. 9, 2004).
Respondent has thus exhibited a pattern of abusively registering domain names including marks in which others have rights. Respondent’s behavior in the instant case thus constitutes bad faith registration and use pursuant to Policy 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that a respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringed upon others’ famous and registered trademarks); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that a respondent’s previous registrations of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)).
Moreover, Respondent is using the <wliw.com> domain name for a website that displays links
to third-party sites, some of which offer goods and services that compete with the
business of Complainant. The Panel
infers that Respondent earns click-through fees for each consumer that it
diverts to these third-party websites.
Therefore, Respondent is taking commercial advantage of the likelihood
of confusion between Respondent’s domain name and Complainant’s mark, and
profiting from the goodwill associated with Complainant’s mark in bad faith
pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA
208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name
that incorporates another's mark with the intent to deceive Internet users in
regard to the source or affiliation of the domain name is evidence of bad
faith.”). See also Perot Sys. Corp. v.
Perot.net, FA 95312 (Nat. Arb. Forum
For these reasons, the Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
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 <wliw.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated:
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