Insider, Inc. v. DNS Admin / Contact Privacy Service
Claim Number: FA1912001874834
Complainant is Insider, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, United States. Respondent is DNS Admin / Contact Privacy Service (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <businessinsider.tv>, registered with Net 4 India Limited.
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 December 12, 2019; the Forum received payment on December 12, 2019.
On December 20, 2019, Net 4 India Limited confirmed by e-mail to the Forum that the <businessinsider.tv> domain name is registered with Net 4 India Limited and that Respondent is the current registrant of the name. Net 4 India Limited has verified that Respondent is bound by the Net 4 India Limited 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 December 26, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 21, 2020, 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@businessinsider.tv. Also, on December 26, 2019, 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.
On January 24, 2020, 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 received no response from Respondent within the time allowed, the Forum transmitted to the parties a Notification of Respondent Default.
Thereafter, on January 26, 2020, Respondent filed with the Forum its Response to the Complaint.
On January 29, 2020, Complainant filed with the Forum an Additional Submission in answer to Respondent’s Response.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complaint alleges, among other things, that:
Complainant is an American online media company and the publisher of <BusinessInsider.com> and other news and media websites.
Complainant holds a registration for the BUSINESS INSIDER service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,411,611, registered October 1, 2013).
Complainant has spent large sums in the process of advertising and promoting its business under the BUSINESS INSIDER mark.
Complainant’s BUSINESS INSIDER mark enjoys wide consumer recognition and acceptance in the Internet marketplace.
Complainant also has rights in the BUSINESS INSIDER mark under the common law running from February 10, 2009.
Respondent registered the domain name <businessinsider.tv> on or about July 19, 2010.
The domain name is both substantively identical and confusingly similar to Complainant’s BUSINESS INSIDER mark.
Respondent has not been commonly known by the domain name.
Respondent is not sponsored by or affiliated with Complainant in any way.
Complainant has not given to Respondent permission to use its BUSINESS INSIDER mark in a domain name.
Respondent fails to make either a bona fide offering of goods or services by means of the domain name or a legitimate noncommercial or fair use of it.
Instead, Respondent uses the domain name to redirect internet users to a webpage with links to commercial websites that compete with Complainant’s business.
Respondent receives revenues in the form of click-through fees from the operation of those links.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent both registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding within the time allowed by the Policy and its attendant Rules. However, Respondent did file a Response to the Complaint within five (5) days of the time allowed, and there is no indication in the record that Complainant has been prejudiced by that delay. For these reasons, and in the interests of justice, the Panel will accept and consider Respondent’s Response for all purposes in this proceeding.
Respondent’s Response asserts, inter alia, the following:
The date provided by Complainant for its first use of its mark in commerce is not relevant in this proceeding.
Likewise, Complainant’s registration of its mark with the USPTO is not relevant because Respondent’s domain name registration predates that registration.
[Respondent] “… is a [d]omain name speculator and has bought the domain name for the purpose of a subsequent resale without any intent to sell it to the trademark owner or its competitor.”
“[T]he practice … of registering a domain name for subsequent resale (including for profit) would not by itself support a claim that the [R]espondent registered the domain name in bad faith….”
This is true “irrespective of which party solicits the prospective sale.”
And this principle applies to “generalized” offers to sell.
Respondent has not engaged in pay-per-click activity respecting the domain name to generate revenue as alleged in the Complaint.
C. Complainant’s Additional Submission
In its Additional Submission, Complainant contends, among other things, that:
Complainant’s rights in its BUSINESS INSIDER mark under the common law are, without more, sufficient to establish that it has time priority, and, therefore, rights in its mark superior to any Respondent can claim in its domain name.
Respondent has engaged in a pattern of registering domain names that incorporate well-known third-party trademarks, including the following – Elizabeth Taylor, Avis, CFA Society and Brams Hill.
Complainant sent cease-and-desist letters to Respondent in July, and again in November, of 2019.
Sometime thereafter, Respondent replaced its active click-through website with a page reciting: “This site can’t be reached.”
(1) the domain name registered by Respondent is substantively identical and 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 domain name has been 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."
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 domain name has been registered and is being used by Respondent in bad faith.
Complainant has rights in the BUSINESS INSIDER service mark sufficient for purposes of Policy ¶ 4(a)(i), by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, Liberty Global Logistics, LLC v. damilola emmanuel, FA 1738536 (Forum August 4, 2017):
Registration of a mark with the USPTO sufficiently establishes
the required rights in the mark for purposes of the Policy.
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here India). 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.
However, because the record shows that Respondent registered the disputed <businessinsider.tv> domain name on July 19, 2010, several years prior to Complainant’s mark registration, which became effective on October 1, 2013, Complainant asserts that it has also acquired rights in its mark under the common law running from February 10, 2009, when the BUSINESS INSIDER mark was first used in commerce. If this assertion is sustained, Complainant can successfully claim time priority over Respondent’s claim of rights in its domain name. See, for example, Microsoft Corporation v. Story Remix, FA 1734934 (Forum July 10, 2017), concluding that:
The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.
To establish common law rights in a mark, Complainant must demonstrate that the mark has acquired “secondary meaning,” i.e.: an association shared among the consuming public linking the mark and a specific offeror of goods or services marketed under the mark sufficiently to justify its protection under law. As to what kind of evidence suffices to satisfy this requirement, see, for example, Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (finding that a UDRP complainant demonstrated secondary meaning, and, therefore, its common law rights in a mark, through the presentation of evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning”).
In support of its claim of common law rights in the BUSINESS INSIDER mark from the development of secondary meaning, Complainant submits that:
a. Complainant registered the <BusinessInsider.com> domain name on March 6, 1998;
b. the mark was first used in commerce on February 10, 2009;
c. Complainant has spent thousands of dollars to advertise and promote the mark on the Internet;
d. owing to these efforts, the mark has obtained wide consumer recognition and acceptance;
e. one of Complainant’s services offered under the mark was recognized in a TIME magazine article as among the “Best 25 Financial Blogs” in January of 2009; and
f. also in 2009, Complainant received a Webby honor for “Best Business Blog.”
Respondent does not contest any of these assertions. We therefore conclude that Complainant has made a sufficient showing of secondary meaning in its BUSINESS INSIDER mark to establish its rights in the mark under the common law, and, therefore, to meet the standing requirements of Policy ¶ 4(a)(i).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <businessinsider.tv> domain name is substantively identical, and, therefore, confusingly similar, to Complainant’s BUSINESS INSIDER service mark. The domain name incorporates the mark in its entirety, with only the deletion of the space between its terms and the addition of the Top Level Domain (“TLD”) “.tv,” which is the country code TLD (“ccTLD”) for the island nation of Tuvalu. 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, Dell Inc. v. Protection of Private Person, FA 1681432 (Forum August 1, 2016):
A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the contested <businessinsider.tv> domain name, 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 present 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. We must therefore examine the record before us, in light of the several considerations set out in Policy paragraphs 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 is not commonly known by the <businessinsider.tv> domain name, that Respondent is not sponsored by or affiliated with Complainant in any way, and that Complainant has not given to Respondent permission to use its BUSINESS INSIDER mark in a domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “DNS Admin / Contact Privacy Service,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed 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). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
Complainant also asserts that Respondent fails to make a bona fide offering of goods or services by means of the <businessinsider.tv> domain name or a legitimate noncommercial or fair use of it, in that Respondent uses the domain name to redirect Internet users to a webpage with links to the websites of enterprises that compete with the business of Complainant, and that Respondent receives revenues in the form of click-through fees from the operation of those links. Respondent opposes this characterization of its use of the domain name, insisting that it has not engaged in pay-per-click activity respecting the domain name to generate revenue for itself as alleged in the Complaint. Our review of the available evidence convinces us that, although there is some ambiguity in the record on discrete points of the disagreement between the parties, Complainant has the balance of persuasion in its favor. We are particularly persuaded by the fact that Respondent evidently ignored Complainant’s objections to its use of the domain name until it received the second of two cease-and-desist letters, and that the resolving website appears to have changed to its current format (“This site can’t be reached.”) only coincident with the filing of the instant Complaint.
This has significance in that, for immediate purposes, we are constrained to an examination of the circumstances of the parties as of the time of filing of the Complaint. See, for example, Bruyerre S.A. v. Online Systems, D2016-1686 (WIPO October 28, 2016):
Respondent's rights or legitimate interests are typically assessed at the time of [filing of] the Complaint….
We therefore conclude that Respondent’s use of the challenged domain name, as detailed in the Complaint, is neither a bona fide offering of goods or services by means of it 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, McGuireWoods LLP v. Mykhailo Loginov, FA1594837 (Forum January 22, 2015):
The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s … services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are convinced by the evidence that Respondent’s use of the contested <businessinsider.tv> domain name, which we find to be substantively identical, and, therefore, confusingly similar, to Complainant’s BUSINESS INSIDER service mark, is an attempt by Respondent to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in both registering and using the domain name. See, for example, Staples, Inc. v. HANNA EL HIN, FA1557007 (Forum June 6, 2014):
Therefore, the Panel finds that Respondent registered and is using the … domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.
In this connection, we acknowledge that Respondent may be correct in contending that:
[Respondent] “… is a [d]omain name speculator and has bought the domain name for the purpose of a subsequent resale without any intent to sell it to the trademark owner or its competitor.”
And Respondent is largely correct in adding that:
“[T]he practice … of registering a domain name for subsequent resale (including for profit) would not by itself support a claim that the [R]espondent registered the domain name in bad faith….” [emphasis added]
See, for example, Front Range Internet, Inc. v. Murphy, FA145231 (Forum April 4, 2003):
In some circumstances, the trading of domain name registrations is considered a bona fide offering of goods and services.
But while it is true that functioning as a domain name reseller may not alone be indicative of bad faith in the registration and use of domain names, it is also true that what a reseller does with a domain name while it is awaiting resale matters. That is why Respondent finds it necessary to include the phrase “by itself” in its Response to the Complaint. As a consequence, where it is found, as here, that a respondent’s modus operandi can be summarized as registration of a domain name that is confusingly similar to the mark of another followed by exploitation of the domain name for profit while awaiting its eventual sale, the “reseller” label will not serve to avoid a finding of bad faith in the registration and use of the domain name. See, for example, Materia, Inc. v. Michele Dinoia, FA1627209 (Forum August 20, 2015), finding no rights to or legitimate interests in a contested domain name in circumstances where:
Respondent does not dispute that she is in the business of warehousing domain names incorporating trademarks owned by others,…. Respondent also does not dispute that she is using the Disputed Domain Name to divert Internet users … to her website containing third-party advertisements and sponsored listings to generate revenue through click-through fees.
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 <businessinsider.tv> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 3, 2020
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