Scripps Networks, LLC v. chen wenjie
Claim Number: FA1310001523127
Complainant is Scripps Networks, LLC (“Complainant”), represented by Ryan C. Compton of DLA Piper LLP (US), Washington, D.C., USA. Respondent is chen wenjie (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <scrippsnetwork.com>, registered with DropFall.com Inc.
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.
Ho Hyun Nahm as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 7, 2013; the National Arbitration Forum received payment on October 7, 2013.
On October 10, 2013, DropFall.com Inc confirmed by e-mail to the National Arbitration Forum that the <scrippsnetwork.com> domain name is registered with DropFall.com Inc and that Respondent is the current registrant of the name. DropFall.com Inc has verified that Respondent is bound by the DropFall.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 October 11, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 31, 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@scrippsnetwork.com. Also on October 11, 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 November 6, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm 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 issues 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.
A. Complainant
1. Policy ¶ 4(a)(i)
a. Complainant owns the SCRIPPS NETWORKS trademark for use in connection with lifestyle-oriented content for television and the Internet.
b. Complainant has registered the SCRIPPS NETWORKS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,344,722 registered April 25, 2000).
c. Respondent’s <scrippsnetwork.com> domain name is confusingly similar to Complainant’s SCRIPPS NETWORKS mark.
i. The disputed domain name’s affixation of the “.com” generic top-level domain (“gTLD”) is of no consequence, nor is the absence of the mark’s spacing.
2. Policy ¶ 4(a)(ii)
a. Respondent has not been commonly known by or associated with the SCRIPPS NETWORKS mark, and Complainant has never authorized Respondent’s use of the mark.
b. Respondent currently uses the <scrippsnetwork.com> domain name to divert consumers to other third-party sites, which are aimed at Complainant’s potential consumers. Respondent uses the resolving website as a placeholder featuring sponsored links related to cable and satellite television, Internet, and home-related content.
3. Policy ¶ 4(a)(iii)
a. Respondent is using the <scrippsnetwork.com> domain name to disrupt Complainant’s business.
b. Respondent has used the <scrippsnetwork.com> domain name to attract Internet users for commercial gain.
c. Respondent knew of Complainant and its SCRIPPS NETWORKS mark at the time Respondent registered the disputed domain name, and Respondent intended to use the domain to trade off of the fame and goodwill associated with Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the <scrippsnetwork.com> domain name on July 10, 2013.
Complainant established that it had rights in the mark contained in the disputed domain name.
Respondent has no rights to or legitimate interests in the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain names 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:
(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 claims to own the SCRIPPS NETWORKS trademark for use in connection with lifestyle-oriented content for television and the Internet. Complainant presents evidence of its registration of the SCRIPPS NETWORKS mark with the USPTO (Reg. No. 2,344,722 registered April 25, 2000). The Panel finds that Complainant’s USPTO registration establishes Complainant’s rights in the mark under Policy ¶ 4(a)(i), even despite the fact that Respondent appears to reside out of the United States. See Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“The Panel finds that Complainant has established trademark rights in the CLEAR BLUE marks through introduction of the certificates for its U.S. registration for those trademarks”); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant also claims that Respondent’s <scrippsnetwork.com> domain name is confusingly similar to Complainant’s SCRIPPS NETWORKS mark, arguing that the domain name’s affixation of the “.com” gTLD is of no consequence. The Panel agrees that the affixation of a gTLD does not affect its analysis of confusing similarity under Policy ¶ 4(a)(i). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Panel notes that the disputed domain name also omits the space between words in Complainant’s mark as well as the final instance of the letter “s.” As the Panel considers these alterations insufficient to distinguish the disputed domain name from the mark, the Panel holds that Respondent’s <scrippsnetwork.com> domain name is confusingly similar to Complainant’s SCRIPPS NETWORKS mark within the meaning of Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Keystone Publ’g., Inc. v. UtahBrides.com, D2004-0725 (WIPO Nov. 17, 2004) (finding that the <utahwedding.com> domain name was confusingly similar to the complainant’s UTAHWEDDINGS.COM mark because the domain name simply lacked the letter “s”).
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); 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 argues that Respondent has not been commonly known by or associated with the SCRIPPS NETWORKS mark, and Complainant has never authorized Respondent’s use of the mark. The Panel notes that the WHOIS information on file identifies Respondent as “chen wenjie,” which further suggests that Respondent is not known as <scrippsnetwork.com>. The panel in Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) held that the respondent was not commonly known by the contested domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name. In light of the similar facts at hand, the instant Panel holds that Respondent is not commonly known by the <scrippsnetwork.com> domain name for the purposes of Policy ¶ 4(c)(ii).
Complainant asserts that Respondent currently uses the <scrippsnetwork.com> domain name to divert consumers to competitive third-party websites aimed at Complainant’s potential consumers. Complainant specifies that Respondent uses the resolving website as a placeholder featuring sponsored links related to cable and satellite television, Internet, and home-related content. See Complainant’s Ex. E. Past panels have agreed that a respondent’s use of a contested domain name to merely display pay-per-click links to products or services that compete with those offered by the complainant constitutes neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See, e.g., H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). This Panel similarly finds that Respondent’s use of the <scrippsnetwork.com> domain name does not represent a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant contends that Respondent is using the <scrippsnetwork.com> domain name to disrupt Complainant’s business in bad faith pursuant Policy ¶ 4(b)(iii). Complainant expounds, urging that Respondent creates confusion through its registration and use of a domain name incorporating and confusingly similar to the SCRIPPS NETWORKS mark, thereby disrupting the business of a competitor. As the Panel agrees that either Respondent itself is a competitor of Complainant or that Respondent’s website features links to entities that compete with Complainant, the Panel holds that Respondent has registered and used the <scrippsnetwork.com> domain name in bad faith under Policy ¶ 4(b)(iii) by unfairly disrupting Complainant’s business. 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)); see also Complainant’s Ex. E.
Complainant further contends that Respondent uses the <scrippsnetwork.com> domain name to attract Internet users to its website for commercial gain. Complainant maintains that Respondent registered and uses the at-issue domain name, which consists entirely of Complainant’s well-known SCRIPPS NETWORKS mark, for the sole purpose of misdirecting consumers who are attempting to locate the website for Complainant’s television network and online real estate listing services. Complainant asserts that once an Internet user enters <scrippsnetwork.com> into his or her browser, the user is directed to a website featuring sponsored links and pop-up advertisements related to cable and satellite television, Internet, and home-related content. See Complainant’s Ex. E. Complainant infers that Respondent generates a pecuniary gain from these commercial links. As the Panel agrees with Complainant’s characterization of the relevant evidence, the Panel determines that Respondent has intentionally attempted to attract Internet users to its website for commercial gain, demonstrating bad faith registration and use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Finally, Complainant alleges that Respondent knew of Complainant and its SCRIPPS NETWORKS mark at the time Respondent registered the disputed domain name, and Respondent intended to use the domain to trade off of the fame and goodwill associated with Complainant’s mark. Complainant points to the similarity between the <scrippsnetwork.com> domain name and Complainant’s SCRIPPS NETWORKS mark, as well as Respondent’s hosting of links to services similar to those provided by Complainant under the mark, as evidence that Respondent had notice of Complainant and its rights. In light of the circumstances above, the Panel determines that Respondent had actual knowledge of Complainant's mark and rights at the time Respondent registered the disputed domain, and the Panel holds that Respondent registered the <scrippsnetwork.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <scrippsnetwork.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Panelist
Dated: November 12, 2013
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