Cable News Network, Inc. f/k/a Cable News Network, LP, LLLP v. PrivacyProtect.org / Domain Admin
Claim Number: FA1305001500720
Complainant is Cable News Network, Inc. f/k/a Cable News Network, LP, LLLP (“Complainant”), represented by Brian J. Winterfeldt of Steptoe & Johnson LLP, Washington, D.C., USA. Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cnntamil.com>, registered with RegisterMatrix.com Corp.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 20, 2013; the National Arbitration Forum received payment on May 20, 2013.
On May 27, 2013, RegisterMatrix.com Corp. confirmed by e-mail to the National Arbitration Forum that the <cnntamil.com> domain name is registered with RegisterMatrix.com Corp. and that Respondent is the current registrant of the name. RegisterMatrix.com Corp. has verified that Respondent is bound by the RegisterMatrix.com Corp. 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 May 29, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 18, 2013 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@cnntamil.com. Also on May 29, 2013, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 24, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant
Respondent
A. Respondent failed to submit a Response in this proceeding.
Complainant is Cable News Network, Inc. which list its address as Atlanta, GA, USA. Complainant is the owner of domestic and foreign registrations for the mark CNN that Complainant uses in its business of providing national and global news service. Complainant has continuously used the CNN mark since at least 1990 both in real space and via the web at its <cnn.com> location.
Respondent is PrivacyProtect.org/Domain Admin which list its address as Nobby Beach, QLD, Australia. Registrant’s registrar’s address is listed as Milpitas, CA, USA. Respondent registered <cnntamil.com> on January 20, 2012.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant is the Cable News Network, owner of numerous trademark registrations for the CNN mark. Complainant contends that the CNN mark has been protected through various national trademark agencies such as the USPTO (Reg. No. 1,597,839 registered May 22, 1990) and the DIISRTE (Reg. No. 586,753 registered Sept. 17, 1992). The Panel finds that Complainant’s Policy ¶ 4(a)(i) rights in the CNN mark are satisfied as a result of these trademark registrations. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
Complainant next argues that Respondent’s <cnntamil.com> domain name merely adds the generic term “tamil” to the CNN mark. Complainant notes that the term “tamil” is a language spoken in India and Sri Lanka, and is often used to denote a geographic region. Complainant contends that combining the CNN mark with a geographic identifier enhances confusing similarity. The Panel finds that the additional term “tamil” enhances the confusing similarity as it references a distinct culture and/or region of the Indian Subcontinent. See Laboratoires De Biologie Vegetale Yves Rocher v. Choi, FA 104201 (Nat. Arb. Forum Mar. 22, 2002) (holding that the <yveskorea.com> domain name was confusingly similar to the complainant’s YVES ROCHER mark even though the domain name was only similar in part). The Panel also notes that the domain name features the generic top-level domain (“gTLD”) “.com,” which the Panel concludes is irrelevant. See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). The Panel finds that the <cnntamil.com> domain name is confusingly similar to the CNN mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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), 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). The Complainant has met this burden.
Complainant also argues that Respondent’s identity in the WHOIS is “PrivacyProtect.org.” Complainant notes that it received correspondence from “Ni How” in response to Complainant’s letters. Complainant claims that no other evidence suggests that Respondent is known as or by <cnntamil.com>. The Panel finds that nothing in the record shows that Respondent is commonly known by the disputed <cnntamil.com> domain name pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant next argues that Respondent has used the <cnntamil.com> domain name as a parked website that displays commercial hyperlinks to Complainant’s various competitors. Complainant states that the domain name’s source code indicates that these hyperlinks are monetized so that Respondent receives fees each time an Internet user clicks on them. The Panel notes that the <cnntamil.com> domain name resolves to a website soliciting a variety of hyperlinked advertisements, including “Learn English,” “Online Degree,” “Tamil Girls,” and “Watch Free Movie,” along with a directory to “Tamil News Paper” and an array of dating websites. See Complainant’s Ex. 6. The Panel finds that the solicitation of these various hyperlinks, whether unrelated or competing, does not create a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or use. See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
Complainant also claims that Respondent, or one of its agents, made it clear to Complainant that it was willing to sell this domain name. Complainant claims that Respondent’s registration of this domain name with a focus on selling it is evidence that Respondent lacks a right or legitimate interest in this domain name. The Panel notes that a “Ni How” e-mailed Complainant asserting that the domain name did not infringe, but then stating “if you guys want to buy the name, you can make an offer.” See Complainant’s Ex. 9. The Panel finds that regardless of Respondent’s assertions in personal e-mails, the willingness of Respondent to release the disputed domain name for any offered sum of money suggests that Respondent has neither rights nor legitimate interests under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant claims that Respondent responded to Complainant’s cease and desist letter by claiming that it was “not infrindging [sic]” and invited Complainant to make a cash offer for the <cnntamil.com> domain name. The Panel again notes that Respondent, through an e-mail by “Ni How,” expressed its interest in selling the domain name to Complainant. See Complainant’s Ex. 9. The Panel finds that Respondent’s suggestion that Complainant offer to buy this domain name is evidence of a Policy ¶ 4(b)(i) bad faith use and registration for sale to Complainant. See CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) (“There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent”).
Complainant argues that Respondent has engaged in a pattern of bad faith registrations. Respondent has registered numerous domains incorporating other well-known marks which were involved in numerous other UDRP proceedings wherein Respondent was respondent and lost control of the domain names. See The Gap, Inc. v. PrivacyProtect.org c/o Domain Admin, FA 1332394 (Nat. Arb. Forum Aug. 16, 2010); Victoria’s Secret Stores Brand Management, Inc. v. PrivacyProtect.org c/o Domain Admin, FA 1357512 (Nat. Arb. Forum Dec. 17, 2010); Target Brands, Inc. v. PrivacyProtect.org / Domain Admin, FA 1371798 (Nat. Arb. Forum Mar. 30, 2011); Allstate Insurance Company v. Privacyprotect.org / Domain Admin, FA 1375041 (Nat. Arb. Forum Apr. 1, 2011); NORDSTROM, Inc. and NIHC, Inc. v. PrivacyProtect.org / Domain Admin, FA 1398811 (Nat. Arb. Forum Sept. 8, 2011); Wal-Mart Stores, Inc. v. PrivacyProtect.org / Domain Admin, FA 1400433 (Nat. Arb. Forum Sept. 21, 2011); LF, LLC v. PrivacyProtect.org / Domain Admin, FA 1400742 (Nat. Arb. Forum Nov. 1, 2011); Citigroup Inc. v. PrivacyProtect.org a/k/a Domain Admin, FA 1400922 (Nat. Arb. Forum Sept. 16, 2011). The Panel notes that although Respondent is using a privacy protection service, Respondent may still be ultimately accountable for this Policy ¶ 4(b)(ii) pattern of bad faith. See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Complainant next argues that Respondent uses the <cnntamil.com> domain name to advertise competing businesses in an attempt to disrupt Complainant’s CNN business. The Panel notes that some of the advertisements on the disputed domain name’s website, such as “Tamil News Paper” may be construed as offering competing services. See Complainant’s Ex. 9. The Panel finds that hosting hyperlinks to competing websites is evidence of Policy ¶ 4(b)(iii) bad faith use and registration for purposes of commercial disruption. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant also argues that Respondent is making use of the CNN mark in the <cnntamil.com> domain name in order to enhance the likelihood that Internet users will confuse Complainant as a sponsor or endorser of the competing hyperlinks that are found within the domain name’s content page. The Panel again notes that the <cnntamil.com> domain name resolves to a website soliciting an array of competing and unrelated hyperlinks. See Complainant’s Ex. 6. The Panel finds that the registration and use of the <cnntamil.com> domain name for purposes of hosting hyperlinks is evidence of a Policy ¶ 4(b)(iv) bad faith attempt to confuse Internet users in order to amplify Respondent’s advertisement revenues. See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <cnntamil.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: July 8, 2013
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