OWN LLC v. Public Domains
Claim Number: FA1104001382736
Complainant is OWN LLC (“Complainant”), represented by Ross Q. Panko of Arent Fox LLP, Washington, D.C., USA. Respondent is Public Domains (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <owntv.biz>, registered with GoDaddy.com, Inc.
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.
Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 8, 2011; the National Arbitration Forum received payment on April 11, 2011.
On April 11, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <owntv.biz> domain name is registered with GoDaddy.com, Inc. and that 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 12, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 2, 2011 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@owntv.biz. Also on April 12, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 April 27, 2011.
On May 2, 2011, the Complainant filed an Additional Submission received in a timely manner according to Forum Supplemental Rule 7.
On May 3, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Beatrice Onica Jarka as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant asserts that:
· The Respondent is using the disputed domain name to promote a commercial business venture, specifically, a "domain-based social networking TV system" in a manner that seeks to confuse consumers as to source or sponsorship of that venture, by using the disputed domain name in connection with television-related content.
· The Respondent is using the Domain Name to operate a web site that advertises goods and/or services that compete directly with those offered by Complainant.
· The Respondent's intent to disrupt Complainant's business is evident from his threatening and harassing e-mails. The e-mails sent by Mr. Norman (Respondent's principal) threaten to use the infringing Domain Name to "become a version of owntv," "expand the usage of the web site," and "put all or part of the web site into public auction this year."
· The Respondent is attempting to sell the disputed domain name via eBay for the exorbitant sum of $450,000, which proves also that the Respondent registered the disputed domain name with the intention to sell it to Complainant or one of Complainant's competitors, for profit.
· The Respondent clearly was aware of Complainant's OWN Marks and of Complainant's rights therein when it registered the disputed domain name. It is therefore apparent that Respondent registered the disputed domain name to prevent Complainant from reflecting its OWN Marks in a corresponding domain name.
· In addition, Respondent has engaged in a pattern of similar bad faith conduct by registering numerous domain names containing well-known third-party trademarks and the names of famous celebrities.
B. Respondent
By its Response, the Respondent has stated, by referring, supposedly to Ms Oprah Winfrey, that:
· The statements of the Complainant are incorrect.
· On or about April 7, 2011, it filed with the Trademark Trial and Appeal Board ("TTAB") seven extensions of time to oppose against Oprah's trademarks filings from April 13, 2010 over 'the Oprah Winfrey Network':
· Oprah lacks trademark over own as it filed several times for OWN trademark with USPTO and after abandoned most of them.
· The representative of Oprah apparently saw that the USPTO was not likely to accept the trademark filings for own and has dug out an obscure trademark with a similar name own onyx woman network.
· The disputed domain name is a working tv system.
· All the domains listed on the disputed domain name are not simply sitting there; they are dynamically linked to various generic videos, such that when a domain is clicked from the website under the disputed domain name, it should link to a video clip; just as it should when that same domain is typed in at the address bar.
· This type of tv is basically “direct navigation”, but instead of linking to some static cash-parking page, the link goes to a generic video clip, from which most, if not all are satirical.
· Finally, while some of the domains on the website under the disputed domain name have been listed on Ebay, the purpose of these listings was to try to drive hits onto the domains, not to sell them.
· The disputed domain name is generic and receiving a trademark registration for a generic name does not guarantee its owner success over time.
·
Oprah
has not proven any element of the UDRP Policy.
C. Additional Submissions
By the Additional Submission, the Complainant restates the Complaint’s contentions in reply to the Respondent allegations and declares that the Trademark Trial and Appeal Board ("TTAB") seven Extensions of Time to Oppose Complainant's application, filed by the Respondent do not involve Complainant's "OWN" trademark. Instead, by these applications the Respondent seeks to prevent the Complainant from obtaining registrations for the mark "THE OPRAH WINFREY NETWORK." The Complainant attaches to its Additional Submission evidences regarding the federal registration of the OWN trademark dated April 19, 2011.
Complainant holds federal registrations of the OWN trademark and has developed starting with January 2008, common law in the OWN trademark in connection mainly to entertainment services, television programming or broadcasting. The Complainant is also the holder of numerous domain names containing the mark "OWN," including <own.tv>, <myown.com> and <owntelevision.com>. The Respondent registered the disputed domain name on December 8, 2009, with full knowledge of the Complainant’s trademark with the clear intent to benefit from the use of this trademark.
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, OWN LLC, asserts it uses the OWN mark in connection with the “OWN” television and multimedia network (a joint venture between Oprah Winfrey and Discovery Communications). In addition, Complainant provides evidence that it uses the OWN ONYX WOMAN NETWORK mark for radio and television production. Complainant claims rights in the OWN ONYX WOMAN NETWORK mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,212,542 issued February 27, 2007). The Panel finds this trademark registration sufficiently proves Complainant’s rights in the OWN ONYX WOMAN NETWORK mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
In addition, Complainant claims common law rights in the OWN mark. Complainant has filed a trademark application with the USPTO for the OWN mark, but has not yet obtained a trademark registration (No. 77,369,749 filed January 11, 2008). In this sense, the Complainant claims it has acquired sufficient secondary meaning to establish common law rights in the OWN mark dating back to January 15, 2008. Complainant explains that it announced via press release its plans to launch a new television and multimedia network under the name “OWN,” which stands for “The Oprah Winfrey Network.” and submits a copy of this press release, dated January 15, 2008. Complainant claims many media outlets gave the announcement national attention on January 15, 2008. Complainant provides evidence of this coverage from USA Today, Variety, E! Online, The New York Times, Today, BET.com, and numerous other print and online publications.
Complainant argues that media reports prominently referred to the new network as operating under the name “OWN.” In addition, Complainant claims the announcement appeared on Ms. Winfrey’s website, which averages 80 million page views per month. Complainant argues that the prominence of Ms. Winfrey enhances consumers’ immediate association between Complainant’s OWN marks and the OWN television network. Moreover, Complainant states that it owns numerous domain names containing the OWN mark, including <own.tv>, <myown.com>, and <owntelevision.com>. Complainant asserts its registered these domain names prior to Respondent’s registration of the disputed domain name. Finally, Complainant provides evidence that it has filed a trademark application with the USPTO for the OWN mark (No. 77,369,749 filed January 11, 2008).
The Panel finds that it is undeniable that the services offered by the Complainant referring to OWN television and multimedia network have been started to be advertised and offered by the Complainant under the OWN name. The advertisement of the OWN television and multimedia network in connection with Ms. Oprah Winfrey, enhanced consumers’ immediate association between Complainant’s OWN marks and the OWN television network. Moreover, the Complainant filed for the OWN trademark with USPTO (No. 77-981,582, January 11, 2008), with first use dating back to 15 of January 2008 for broadcasting services. The application was granted under Reg. No. 3,949,131 on April 19, 2011.
Regarding the secondary meaning of the OWN mark, the Panel considers that the Complainant submitted evidence sufficient to show it has acquired secondary meaning in the OWN mark.
Therefore, the Panel holds that the Complainant has established common law rights in the mark dating back to January 15, 2008. See Enfinger Dev., Inc. v. Montgomery, FA 370918 (Nat. Arb. Forum Feb. 16, 2005) (finding that the complainant had common law rights in the McMULLEN COVE mark because the complainant provided sufficient evidence that the mark had acquired secondary meaning, including development plans, correspondence with government officials, and newspaper articles featuring the mark); see also Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”).
Complainant avers Respondent’s <owntv.biz> domain name is confusingly similar to its OWN mark. Complainant claims Respondent wholly incorporates its mark in the disputed domain name and then merely adds the letters “tv,” a common abbreviation for the term “television,” which is the primary service offered by Complainant under its OWN mark. The Panel finds the addition of the term “tv” fails to sufficiently distinguish Respondent’s domain name from Complainant’s mark. See Victoria’s Secret v. Plum Promotions, FA 96503 (Nat. Arb. Forum Feb. 27, 2001) (“The mere addition of the generic term “tv” does not reduce the likelihood of confusion under Policy 4(a)(i).”). The Panel finds also the affixation of the generic top-level domain (“gTLD”) “.biz” irrelevant to the Policy ¶ 4(a)(i) analysis. See 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.”). Therefore the Panel determines that the Respondent’s <owntv.biz> domain name is confusingly similar to Complainant’s OWN mark under Policy ¶ 4(a)(i).
While Respondent contends that the <owntv.biz> domain name is comprised of common and generic terms and as such, cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June, 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”)
Therefore, the Panel finds that the Complainant has proven the first element under Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), the Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera 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.”).
Complainant contends that Respondent is not commonly known by the <owntv.biz> domain name and does not use a personal name, company name or title that incorporates the OWN mark. Complainant argues that Respondent does not own a trademark or service mark registration that is in any way related to the disputed domain name. The WHOIS information for the disputed domain name lists the registrant as “Public Domains,” which does not reflect an association between Respondent and the disputed domain name. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name and lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Complainant submits screen shots of the website resolving from the <owntv.biz> domain name. Complainant claims the resolving website contains the message, “OWNTV.Biz is a domain-based Social Networking TV system…With the full run out of domains and links, it will function as a simple, cost effective advertising system, which uses the domains to attract Web users.” In addition, Complainant alleges that on October 25, 2010, Respondent’s principal, Reuben Norman, sent an e-mail to Discovery Communications proposing a business venture involving the disputed domain name. Complainant claims that Discovery Communications responded that it was not interested in doing business with Mr. Norman. Complainant asserts that Respondent currently uses the disputed domain name to resolve to a website featuring links to generic video content from which Respondent presumably profits. Such use cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and 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 Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).
On the other side, the Respondent argues that it does have rights and legitimate interests in the <owntv.biz> domain name because, contrary to Complainant’s assertion, the website at the disputed domain name is a working TV system. Respondent alleges that the model of merging large numbers of generic domain names onto various forms of generic video content is the next successful TV model and that it knows of at least two firms that appear to be running this model: Google-YouTube and CheezBurger.com. Respondent states that a recent 2010 book by Harold Davis, Google Advertising Tools, describes in detail how a person can create a Youtube-type channel for generic domains. Respondent asserts that all of the domains listed at the disputed domain name are not just sitting there but are dynamically linked to various generic videos. Respondent calls this type of tv “direct navigation” but instead of linking to some static cash-parking page, the link goes to a generic video clip. Respondent argues that most of these clips, if not all, are satirical. Respondent claims that according to Bloomberg Venture, Cheezburger grossed $4 million in 2010 with about 1,000 misspelled domain names linked to various Youtube clips, especially cat videos. Respondent contends that while some of the domains listed at the <owntv.biz> have been listed on eBay, the purpose of those listings was to try to drive hits onto the domains, not to sell them. Respondent denies that it has sold a single domain name. Respondent asserts that its intention is to link as many generic domain names as possible under various generic domain tv systems and to derive future income from ad sales, not to become a major domain name reseller.
Despite of presenting such elaborate reasoning, the Respondent’s assertions forget to mention that his preparations for the so called “direct navigation” TV have been done under the very name of television and multimedia network under the trademark "OWN," which stands for "The Oprah Winfrey Network." and was advertised as such long before the Respondent registered the disputed domain name. Moreover, by prominently displaying on its web site references to a "domain-based Social Networking TV system," and links to web sites about television-industry celebrities like Diane Sawyer and Rachel Maddow, Respondent clearly seeks to mislead consumers into believing that its web site is affiliated with or endorsed by the Complainant.
Respondent argues that the terms of the disputed domain name are comprised of common and generic or descriptive terms, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet.
Complainant contends the Panel must reject Respondent’s argument that the term “own” is “generic as it pertains to media and/or the web” and therefore Complainant cannot claim exclusive rights in the word. Complainant argues that there is no evidence that the word “own” is generic for entertainment services, television programming or broadcasting, or any of the other services Complainant offers under its OWN mark. Instead, Complainant claims its use of the OWN mark is a distinctive indicator of source used to designate Complainant’s entertainment services, television programs, and other goods and services offered under the OWN mark.
The Panel agrees with the Complainant and finds that Respondent’s argument pertaining to the generic nature of the terms in the mark fails. Accordingly, the Panel finds that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See PetWarehouse v. Pets.Com, Inc., D2000-0105 (“[I]t is possible for two generic terms taken together to achieve trademark or service mark status by achieving a sufficient level of secondary meaning in the relevant community. However, the burden on the party making a claim to distinctiveness or secondary meaning in such a case is high because of the disinclination of the courts to take words of ordinary meaning out of common usage.”).
Moreover, on approximately April 7, 2011, Complainant alleges Respondent used the alias “krichter42” and placed the <owntv.biz> domain name for sale on eBay.com, with an asking price of $450,000. The Panel finds that this Respondent attempt to auction a domain name that is confusingly similar to Complainant’s OWN mark for more than Respondent’s out-of-pocket costs, is a further clear indication that the Respondent does not have rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (“Moreover, the Panel interprets Respondent’s offer to sell the domain name registration for $100,000 as evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).”).
Therefore, the Panel finds that the Complainant has proven also the second element under Policy ¶ 4(a)(ii).
Considering the above, the Panel has sufficient indication of the fact that the Respondent has registered and uses the disputed domain name in bad faith.
Complainant alleges that Respondent registered the <owntv.biz> domain name with the intention of selling it to Complainant or one of Complainant’s competitors for profit. Complainant argues that in communications with Discovery Communications and Complainant’s outside counsel, Respondent repeatedly tried to coerce Complainant into buying the disputed domain name by threatening to use the disputed domain names in ways that would be disruptive to Complainant’s business, including putting the website into public auction. On April 7, 2011, Complainant asserts that Respondent, using an alias, put the disputed domain name up for sale on eBay.com with an asking price of $450,000. The Panel concludes that these actions show that Respondent registered the disputed domain name with the intent to sell it to Complainant for an amount in excess of out-of-pocket costs, which reveals bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Wrenchead.com, Inc. v. Hammersla, D2000-1222 (WIPO Dec. 12, 2000) (finding that offering the domain name for sale at an auction site is evidence of bad faith registration and use); see also Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name).
Complainant also asserts that ,Respondent’s use of the OWN mark in the <owntv.biz> domain name is intended to attract Complainant’s followers and subsequently profit from the confusion created as to the source, sponsorship or affiliation of Respondent’s resolving website. Complainant argues that Respondent uses the <owntv.biz> domain name to promote a commercial business venture, specifically a “domain-based social networking TV system,” in a manner that seeks to confuse consumers as to the source or sponsorship of that venture. The Panel finds that Respondent’s activities demonstrate bad faith registration and use according to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
In conclusion, the Panel finds that the Complainant has proven also the last element under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <owntv.biz> domain name be TRANSFERRED from Respondent to Complainant.
Beatrice Onica Jarka, Panelist
Dated: May 17, 2011
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