National Arbitration Forum

 

DECISION

 

Discovery Communications, LLC v. Tripp Wood

Claim Number: FA0912001299987

 

PARTIES

 

Complainant is Discovery Communications, LLC (“Complainant”), represented by Emily Mechem, of Arent Fox LLP, Washington, D.C., USA.  Respondent is Tripp Wood (“Respondent”), North Carolina, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <discoveryaudio.com>, registered with GoDaddy.com, 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.

 

Anne M. Wallace, Q.C., as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 21, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 23, 2009.

 

On December 22, 2009, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <discoveryaudio.com> domain names is registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 December 28, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 19, 2010 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@discoveryaudio.com by e-mail.

 

A timely Response was received and determined to be complete on January 19, 2010.

 

Complaint’s Additional Submission was received January 22, 2010. I will consider this submission as it was received in a timely manner according to Supplemental Rule #7.

 

Respondent’s Additional Submission was received January 27, 2010. I will consider this submission as it was received in a timely manner according to Supplemental Rule #7.

 

On January 28, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Anne M. Wallace, Q.C. as Panelist.

 

RELIEF SOUGHT

 

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

 

PARTIES’ CONTENTIONS

 

A. Complainant

 

Complainant asserts that:

 

·        It owns numerous trademark and service mark registrations for its DISCOVERY Marks in the United States and internationally. Complainant provided ample evidence of marks establishing exclusive rights in the DISCOVERY Marks. Complainant owns 74 active registrations or applications in the United States for DISCOVERY Marks or marks that contain the word DISCOVERY. In addition, Complainant’s subsidiary, Antenna Audio owns a CTM registration for its mark ANTENNA AUDIO which it uses in connection with its audio related goods and services.

 

·        The disputed domain name is identical and/or confusingly similar to Complainant’s DISCOVERY Marks. The disputed domain name adds the term “audio” which is not only related to certain of Complainant’s goods and services under the DISCOVERY Marks, but also a reference to Complainant’s acquisition of Antenna Audio. Consequently, the domain name reflects a merging of the two company names. Further, the term “audio” is arguably generic and panelists have long held that adding a generic term to a complainant’s mark is insufficient to distinguish the disputed domain name from complainant’s mark. Complainant further argues that the addition of the generic top level domain .com is irrelevant when establishing whether a mark is identical or confusingly similar.

 

·        Respondent is not currently authorized or licensed to use DISCOVERY Marks. Further, complainant asserts that the disputed domain name is being used in connection with a website that promotes and provides links to commercial websites of third parties. This, Complainant says, creates a presumption that Respondent is earning click-through fees when Internet users click on these links and that Respondent is therefore profiting from the use of Complainant’s marks. Complainant says Respondent admitted to Complainant’s representative that he intended to use the disputed domain name in connection with a business venture.

 

·        Respondent, Tripp Wood, is registrant of the disputed domain name. There is no evidence Respondent is commonly known by the disputed domain name.

 

·        Respondent’s use of the disputed domain name to obtain click-through fees is evidence of registration and use in bad faith. Complainant says panel can infer Respondent’s knowledge of Complainant’s right based on its federal registrations which pre-date registration of the disputed domain name. Complainant also asserts that Respondent admitted to Complainant’s representative that he had been in negotiations with Complainant regarding a project and that he is friendly with certain of Complainant’s talent.

 

·        Respondent is acting in bad faith because he is attempting to divert Internet users to a deceptive commercial website that refer to Complainant and provides links to unrelated third party websites and competitor’s websites. Complainant says Respondent receives click-through fees which amounts to using the disputed domain name for commercial gain. Complainant says Respondent is using the DISCOVERY Mark together with the word “audio” which naturally refers to Antenna Audio, to profit the reputation and goodwill attached to Complainant.

 

B. Respondent

 

Respondent asserts that:

 

• Though the disputed domain name may arguably be similar to Complainant’s DISCOVERY Marks, the disputed domain name was conceived and sought by Respondent before Complainant acquired Antenna Audio. Since Antenna Audio appears to be its own entity, there is little reason for Respondent to have drawn a conclusion that the words discovery and audio would result in market confusion.

 

• Complainant never asked Respondent for a business plan. Respondent was clear with Complainant’s representative that his plans for the disputed domain name did not involve audio broadcast or equipment and that he would give the representative the opportunity to review his website before going live to allow her the chance to look for conflicting interests. Respondent told Complainant’s representative that he had been operating in the Gulf of Alaska as a commercial fisherman and had met a man who said he crews on a boat that is filmed by Discovery Channel. This meeting came up as a topic of interest in the conversation. Briefly meeting a person who claims to be filmed by Discovery Channel does not in itself familiarize one with the business practices of the filming entity.

 

• Respondent made so claim that he and Complainant were working together on another project. Respondent has not, and does not intend to engage in talks with Discovery Channel.

 

• Respondent has never received any click-through fees from use of the disputed domain name. Respondent has never received any monetary value from the use of the disputed domain name. The domain automatically defaults to a parked page at GoDaddy.com. Respondent has no control of the content of this page, including links, and has no agreement to receive money from such. Respondent had no knowledge of this automatic default parking page through Go Daddy and when he became aware of it, he began resolving all his domains to a parked page that reads “Under Construction”. Respondent has never attempted to monetize the disputed domain name or attempted to associate the disputed domain name with Complainant or Complainant’s competition.

 

• Respondent has plans to use the disputed domain name for a website devoted to information about brain confusion suffered by previously deaf people who hear for the first time. Respondent produced a copy of a napkin on which, on March 2, 2006, he sketched a couple of his development ideas. He wanted to find a domain name that described “Surprise discovery of hearing” or “Potential audial hearing”. Respondent does not believe he was even aware of Discovery Channel at this time and even if he had, he would not have thought it illegal to use the generic word “discovery” in a domain name. Respondent did not choose the domain discoveraudio.com because he did not want the user to think he actually dealt with the medical end or offered treatment. The word discovery conveys something located, and does not imply action, and this better fit Respondent’s purpose. Respondent intends to build his web site as an informational and idea exchange site.

 

• Respondent made it clear to Complainant’s representative that he acquired the disputed domain name for personal use and that the disputed domain name was not for sale.

 

• Respondent purchased the disputed domain name at auction in the summer of 2007. Although the purchase was after Complainant acquired Antenna Audio, the idea to purchase the domain name and plans for its use were conceived by Respondent before the acquisition. The disputed domain name had originally been registered in 2003, long before Complainant purchased Antenna Audio.

 

• Respondent has no history of purchasing conflicting domain name or attempting to sell conflicting domain names.

 

C. Additional Submissions

 

Complainant

 

Complainant asserts that:

 

• Respondent’s professed legitimate interest is a transparent, post hoc attempt to avoid an adverse ruling in this case. The only support for Respondent’s claim of a legitimate interest it self-serving statements and a photocopy of notes allegedly written on a restaurant napkin. Respondent has not submitted any formal business plans or other documents establishing that before he had notice of the dispute, he made demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services.

 

• Respondent has not shown that he does not receive click through fees. Since Respondent has control over his web page, the content displayed on the GoDaddy.com page is his responsibility and that is shows bad faith.

 

Respondent

 

Respondent asserts that while it would have been nice to have well drawn documents and letterheads for all his business and philanthropic ideas, the practicality of such documents being drafted for each one are logistically and financially impractical. Any good idea Respondent ever came up with started on a restaurant napkin, paper bag or on the edge of a newspaper.

 

Respondent provided a recording of a telephone conversation with a representative of GoDaddy.com. in which the representative confirmed that the disputed domain name has never been placed in a position that would benefit Respondent, monetarily or otherwise. Under the terms of the agreement with GoDaddy.com, the domain name automatically resolves to a free parking page unless the registrant chooses otherwise.

 

FINDINGS

 

1.      The disputed domain name is confusingly similar to Complaint’s DISCOVERY trademark.

 

2.      Respondent has no rights or legitimate interests in the disputed domain name.

 

3.      Respondent has registered and used the disputed domain name in bad faith.

 

DISCUSSION

 

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the 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.

 

Identical and/or Confusingly Similar

 

Complainant owns a number of trademark registrations for the DISCOVERY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 883,953 issued January 6, 1970). Complainant has established rights in the DISCOVERY mark for purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO.  See Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that the Complainant’s federal trademark registration established its rights in the mark under Policy ¶ 4(a)(i)); see also Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The effective date of Complainant's federal rights is . . . the filing date of its issued registration. Although it might be possible to establish rights prior to that date based on use, Complainant has submitted insufficient evidence to prove common law rights before the filing date of its federal registration.”).

 

Complainant argues that Respondent’s <discoveryaudio.com> domain name is confusingly similar to Complainant’s DISCOVERY mark pursuant to Policy ¶ 4(a)(i).  Complainant argues that Respondent’s disputed domain name contains Complainant’s DISCOVERY mark in its entirety, adds the generic term “audio,” and adds the generic top-level domain (“gTLD”) “.com.”  The generic term “audio,” when added to Complainant’s DISCOVERY mark in the disputed domain name, creates a confusing similarity between Complainant’s mark and the disputed domain name. This is further confusing because the generic term “audio” has an obvious relationship to Complainant’s offering of various products in the audio and audio-related industry.  See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark).  Further, the addition of a gTLD fails to distinguish a disputed domain name from a registered mark.  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also 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). 

 

Having reviewed all the evidence, the Panel finds that Respondent’s <discoveryaudio.com> domain name is confusingly similar to Complainant’s DISCOVERY mark pursuant to Policy ¶ 4(a)(i). Complainant has significant rights in the DISCOVERY Marks. The addition of the word “audio” to the mark does not decrease the likelihood of confusion, nor does the use of the top level .com extension. In coming to this conclusion, I have not found it necessary to consider the arguments about the acquisition of Antenna Audio.

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbered Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

There is no evidence before the Panel to show that Respondent has trade mark rights in the disputed domain name or that Complainant has been authorized Respondent to use the DISCOVERY Mark. That is sufficient to shift the burden to Respondent to establish that he has rights or legitimate interests in the disputed domain name.

 

Under Policy 4(c), there are three possibilities. Under Policy 4(c)(i), Respondent has not demonstrated that before notice of the dispute he used or made demonstrable preparations to use the domain name or a corresponding domain name in connection with a bona fide offering of goods or services. Respondent asserts his notes on a napkin demonstrate preparations to use the domain name. Under the policy, the preparations must be demonstrable. I am not satisfied that some notes on a napkin are demonstrable preparations to use the disputed domain name. The notes on the napkin were allegedly made in March of 2006. Respondent acquired the disputed domain name in the summer of 2007, more than a year later. Respondent provided no evidence of anything he did in the ensuing two and one half years to prepare to use the disputed domain name as he alleges he intends to use it. There is, therefore, no evidence of demonstrable preparation.  

 

Under Policy 4(c)(ii), Complainant argues that Respondent is not commonly known by the disputed domain name or by Complainant’s DISCOVERY mark by providing evidence that Respondent’s WHOIS information identifies the registrant as “Tripp Wood.”  There is no evidence before the Panel to show that Respondent has been commonly known by the disputed domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Lastly, under 4(c)(iii), there is no evidence that Respondent is making a legitimate noncommercial or fair use of the disputed domain name.

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent is using the disputed domain name to intentionally attract Internet users to its website by creating a strong possiblity of confusion with Complainant’s marks and offering links to unrelated websites. If one searches the disputed domain name, it resolves to a “Free Parking” site sponsored by GoDaddy.com. Complainant asserts that presumably Respondent is obtaining click-through fees from the advertising on this web site.

 

Respondent has provided a recording of a telephone interview with a representative of GoDaddy.com in which the representative confirms that Respondent receives no click-through fees. The domain is automatically parked at this site until Respondent does something else with it. Respondent asserts, therefore, that since he is not receiving any income from the disputed domain name, bad faith is not established. I disagree. Particularly given the length of time during which Respondent has taken no steps to do anything with the disputed domain name, a closer look at this situation is required.  

 

Respondent asserts that he is not engaged in bad faith behavior because he does not control the links generated by the parking service and he does not receive revenue from the parking service.  Respondent, however, is ultimately responsible for the content resolving from the disputed domain name. He has allowed the disputed domain name to resolve to the GoDaddy.com sponsored site, which site has links to other commercial ventures. Other panels have decided, and I agree, that a respondent engages in bad faith registration and use when the respondent has authorized the use of the parking service and thus condoned its use of the disputed domain name. Respondent in this case has done this by entering into the agreement he entered into with GoDaddy.com.  

 

See St. Farm Mutual Auto. Insr. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site.  Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”); see also Express Scripts, Inc. v. Windgather Invs. Ltd., D2007-0267 (WIPO Apr. 26, 2007) (“The respondent contends that the advertisements in this case were ‘generated by the parking company’. The implication is that the respondent was not responsible for the content of these advertisements. This may well be correct but in the panel’s view this makes no difference. The respondent placed the Domain Name with a parking company in circumstances where it would have been aware that those using the Domain Name were likely to have mistyped the complainant’s name.”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding bad faith registration and use even where the “respondent [was] adamant that he [was] not receiving click-through referral fees generated from the websites at which the Disputed Domains [were] ‘parked.’ …for a number of reasons, the panel [found] that it [was] irrelevant whether or not respondent [was] personally receiving any of those click-through referral fees… the key fact here is that respondent, in collaboration with the domain parking service is exploiting complainant’s good will.”); see also Baylor Univ. v. Red Hot Web Gems, Inc., FA 1082178 (Nat. Arb. Forum Dec. 3, 2007) ( “Respondent has established that it does not receive any of the revenues from the click-through fees from the links displayed on the websites that resolve from sites associated with the domain names at issue.  These revenues accrue to the domain name registrar who offers a "parking service" for domain holders until they are ready to post their own content.  However, [the] respondent has a choice to resolve the domains to blank or noncommercial pages and has chosen not to do so. In doing so, [the] respondent is spared the cost of website hosting fees, which inures to [the] respondent's commercial benefit. Therefore, [the] respondent has allowed the domains to be used to attract, for commercial gain, Internet users who may be confused as to [the] complainant’s affiliation with those sites.  To a majority of the Panel, this is sufficent evidence of [the] respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).

 

I see no distinguishing feature between this case and those of other panels dealing with “parked” domain names. Respondent allowed the domain name to be “parked” with GoDaddy. While he may not have been receiving click-through referral fees, he did allow the disputed domain name to be used to attract, for commercial gain, Internet users who may be confused as to Complainant’s affiliation with those sites. This constitutes bad faith registration and use.

 

DECISION

 

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

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

 

 

Anne M. Wallace, Q.C., Panelist
Dated: February 19, 2010

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum