Scripps Networks, LLC v. Jaime Garcia / Jiggie, Inc
Claim Number: FA2001001880992
Complainant is Scripps Networks, LLC (“Complainant”), represented by Thorne Maginnis of Arent Fox LLP, District of Columbia, USA. Respondent is Jaime Garcia / Jiggie, Inc (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hgtvgo.com>, registered with GoDaddy.com, LLC.
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.
Lars Karnøe as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 28, 2020; the Forum received payment on January 28, 2020.
On January 30, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <hgtvgo.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 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@hgtvgo.com. Also on January 31, 2020, 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.
A timely Response was received and determined to be complete on February 4, 2020.
Additional Submissions by Complainant was received on February 7, 2020 and February 12, 2020 and an Additional Submission by Respondent was received on February 9, 2020. In the view of the Panel the Additional Submissions comply with Supplemental Rule 7.
On February 10, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lars Karnøe as Panelist.
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
Complainant, Scripps Networks, LLC., is a TV service company. Complainant has rights in the HGTV mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,158,828, registered Oct. 17, 2006). See Compl. Annex. A. Additionally, Complainant has common law rights in the HGTV GO mark. Respondent’s <hgtvgo.com> domain name is identical or confusingly similar to Complainant’s marks as Respondent merely incorporates the generic term “go” and/or the “.com” generic top-level domain (“gTLD”) to Complainant’s HGTV and HGTV GO marks.
Respondents has no rights or legitimate interests in the <hgtvgo.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s marks. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent fails to make an active use of the disputed domain name. Further, Respondent is attempting to sell the disputed domain name.
Respondent registered and uses the <hgtvgo.com> domain name in bad faith. Respondent is attempting to sell the disputed domain name in excess of the initial registration costs. Furthermore, Respondent fails to make an active use of the disputed domain name. Finally, Respondent has actual or constructive knowledge of Complainant’s rights in the HGTV and/or HGTV GO marks at the time of registration.
B. Respondent
Respondent registered the disputed domain name with her mother, Hilda Garcia. The disputed domain name is not confusingly similar to Complainant’s HGTV mark, as Respondent’s domain name stands for “Hilda Garcia Taco Vlog”. Complainant’s HGTV mark is an acronym. Complainant’s HGTV GO application did not exist at the time of registration of the disputed domain name. Complainant does not have a trademark for HGTV GO.
Respondent does not claim affiliation with Complainant.
Respondent had no knowledge of Complainant’s streaming application or intentions of creating an application when Respondent registered the disputed domain name.
The Panel may note that Respondent registered the <hgtvgo.com> domain name on September 25, 2016. See Resp. Annex 6.
C. Additional Submissions
The further submissions made by the Complainant and the Respondent contains further specifications and support of arguments and points already referred to above in Part A and B.
There can be no doubt that the registered HGTV <word> and <device> marks of the Complainant are well-known in particular in the United States.
Secondly, there can be no doubt that the disputed domain name was registered after the applications for the Complainant’ HGTV trademarks and after these had become well-known.
Finally, the Respondent does not dispute that the Respondent was fully aware of the HGTV trademarks when registering the disputed domain name.
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:
(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 claims rights in the HGTV mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,158,828, registered Oct. 17, 2006). See Compl. Annex. A. Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the Complainant has rights in the HGTV mark under Policy ¶ 4(a)(i).
Additionally, Complainant claims it holds common law rights in the HGTV GO mark. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding 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, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through 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.”). Here, Complainant, along with its affiliated companies, is a leading media and entertainment company, with services reaching billions of subscribers in hundreds of countries and territories around the world. Complainant provides examples of how the HGTV GO mark has developed a secondary meaning with screenshots of its streaming application that bears the HGTV GO mark in various online marketplaces that has been available since December 2015. See Compl. Annex. C. The Panel is unable to find exact evidence of the availability of the claimed existence of the HGTV GO app and use of the HGTV GO mark since December 2015 in the evidence filed by the Complainant, however the Panel finds it unnecessary to decide whether or not Complainant have established common law rights in the HGTV GO mark for the purpose of the Panel’s decision in this matter.
Next, Complainant argues Respondent’s <hgtvgo.com> domain name is identical or confusingly similar to Complainant’s HGTV marks. Specifically, Respondent merely incorporates the generic term “go” and the “.com” gTLD to Complainant’s marks. The addition of a generic term and a gTLD to a complainant’s mark may not sufficiently distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”) and DIRECTV, LLC v. michal restl c/o Dynadot, Claim No. FA1805001788826 (Forum, July 5, 2018) (“Complainant asserts that the <directvgo.com> domain name is confusingly similar to the DIRECTV mark as it contains the mark in its entirety, adding the generic term “go”, as well as the gTLD “.com” … Slight differences between domain names and registered marks, such as the addition of words that describe the goods and services in connection with the mark, do not distinguish the domain name from the mark incorporated therein.”).Therefore, the Panel finds that Respondent’s <hgtvgo.com> domain name is identical or confusingly similar to Complainant’s HGTV marks under Policy ¶ 4(a)(i).
The Panel finds that the Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and that the burden therefore shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <hgtvgo.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized to use Complainant’s marks. Relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The Panel notes that the WHOIS of record identifies the Respondent as “Jaime Garcia / Jiggie, Inc” and no information in the record indicates that Respondent was authorized to use Complainant’s marks or was commonly known by the disputed domain name. See Compl. Annex. F. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the <hgtvgo.com> domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the <hgtvgo.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent fails to actively use the disputed domain name. Inactively holding a disputed domain name may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”). Here, Complainant provides a screenshot of the disputed domain name’s resolving webpage, showing a webpage with no content other than information related to purchasing the disputed domain name. See Compl. Annex F. Furthermore, it is not disputed by the Respondent that there have been no use of the webpage after the registration of the domain name in September 2016. Therefore, the Panel finds that Respondent fails to use the <hgtvgo.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Additionally, Complainant argues Respondent is attempting to sell the disputed domain name for an amount that exceeds its out-of-pocket costs. Offering to sell a domain name for an amount exceeding the registration costs of the domain name is not a legitimate non-commercial or fair use of the domain name under Policy ¶ 4(c)(i) or (iii). See University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“The Panel finds Respondent’s willingness to sell this <perifacts.com> domain name in excess of out-of-pocket registration costs weighs against Respondent’s case for rights or legitimate interests in the domain name.”). Here, Complainant provides a screenshot of the disputed domain name’s resolving webpage, showing a webpage with no content other than information related to purchasing the disputed domain name for $99,999. See Compl. Annex F. Therefore, the Panel finds that Respondent fails to use the <hgtvgo.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Complainant argues Respondent registered and uses the <hgtvgo.com> domain name in bad faith. Specifically, Respondent is attempting to sell the disputed domain name in excess of the initial registration costs. Registration of a disputed domain name to offer for sale at an amount that exceeds out of pocket cost may be evidence of bad faith under Policy ¶ 4(b)(i). See Deutsche Lufthansa AG v. Kenechukwu Okoli, FA 1821759 (Forum Jan. 13, 2019) (“The domain name’s website listed the domain name for sale for $9,150. Respondent also contacted Complainant directly to offer the domain name for sale. Doing so suggests bad faith registration and use of the <lufthansamiles.com> domain name pursuant to Policy ¶ 4(b)(i).”). Here, Complainant shows via a screenshot of the disputed domain name’s resolving webpage that the domain name is currently for sale for $99,999, which far exceeds the costs of registering the domain name. See Compl. Annex F. Therefore, the Panel finds Respondent registered and used the <hgtvgo.com> domain name in bad faith under Policy ¶ 4(b)(i).
Complainant also asserts that Respondent fails to make an active use and is passively holding the domain name. Failure to make an active use a domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum February 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”) As noted previously, Complainant provides screenshots of the disputed domain name that resolves to an inactive website, which currently lists the domain name for sale. See Compl. Annex F. Therefore, the Panel find that Respondent’s inactive use of the disputed domain name – particularly in this matter for more than three years - indicates bad faith registration and use per Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent had knowledge of Complainant’s rights in the HGTV mark at the time of registering the <hgtvgo.com> domain name. The Panel determines, as undisputed by the Respondent, that the Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and that this actual knowledge adequately demonstrates bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”).
The Respondents claim in his response that the domain name <hgtvgo.com> was created with acronyms for a webpage with a vlog (Hilda Garcia taco vlog) for his mother Hilda Garcia’s taco recipes for tacos to go is not credible and entirely unsupported by evidence apart from the written statement of the Respondents mother prepared and signed after the commencement of the UDRP proceedings and filed with the Respondents Additional Submission. Such ex post facto defense cannot constitute a bona fide use of the relevant domain name. See, e.g., NBC Universal Media, LLC v. Larry Hoff, Claim No. FA1901001824897 (Forum Feb. 18, 2019) (ordering the transfer of >nbcsportsbet.com> to NBC, and noting that “[t]he claim by Respondent that NBC commonly represents “Nothing But Cash” to internet users is fanciful. Complainant’s reputation worldwide must have imprinted its mark on the public psyche…. Respondent must have known of Complainant’s mark at the time of registration of [nbcsportsbet.com] on July 19, 2018. Respondent is a resident of the United States where Complainant is a dominant player in the media with a nation-wide outreach.”); and Valeant International Bermuda v. DNS Administrator, Claim No. FA1408001573544 (Forum September 15, 2014) (“The Panel considers it noteworthy that none of the e-mail correspondence presented by Respondent contains any mention of the disputed domain name in connection with the sports scheduling venture, and that the only evidence of such a connection is contained in self-serving affidavits of persons connected with Respondent that were prepared specifically for purposes of this proceeding.”)
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hgtvgo.com> domain name be TRANSFERRED from Respondent to Complainant.
Lars Karnøe, Panelist
Dated: 14 February 2020
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