National Arbitration Forum
DECISION
American Broadcasting
Companies, Inc. v. Merrill Sech
Claim Number: FA0701000893427
PARTIES
Complainant is American Broadcasting Companies, Inc. (“Complainant”), represented by J.
Andrew Coombs, of J. Andrew Coombs, A Professional
Corporation, 450 North Brand
Boulevard, Suite 600, Glendale, CA 91203-2349,
USA. Respondent is Merrill Sech (“Respondent”), P.O.
Box 1423, Palatine, IL 60078.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <abc7chicago.mobi>, registered with Go Daddy
Software, 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.
John J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 19, 2007; the National
Arbitration Forum received a hard copy of the Complaint on January
22, 2007.
On January 20, 2007, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <abc7chicago.mobi> domain name is
registered with Go Daddy Software, Inc.
and that the Respondent is the current registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 January 22, 2007, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of February 12, 2007 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@abc7chicago.mobi by e-mail.
A timely Response was received and determined to be complete on February 12, 2007.
On February 19, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed John J. Upchurch as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
makes the following assertions:
1.
Respondent’s
<abc7chicago.mobi> domain name
is confusingly similar to Complainant’s ABC 7 CHICAGO mark.
2.
Respondent
does not have any rights or legitimate interests in the <abc7chicago.mobi> domain name.
3.
Respondent
registered and used the <abc7chicago.mobi>
domain name in bad faith.
B.
Respondent
(a) denied Complainant’s ‘abc7chicago’ is a registered trademark; and (b)
claimed that Respondent is the rightful owner of the <abc7chicago.mobi> domain name.
FINDINGS
Complainant submits
evidence of its numerous trademark registrations for the ABC mark that it holds with the United States
Patent and Trademark Office (“USPTO”) (Reg. No. 2,023,417 issued December 17, 1996;
Reg. No. 2,066,519 issued June 3, 1997).
Respondent has not made demonstrable preparations to use the <abc7chicago.mobi> domain name
because the disputed domain name does not resolve to an active website.
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
The Panel finds that Complainant
has established rights in the mark pursuant to Policy ¶ 4(a)(i). See Paisley Park
Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the
complainant had established rights in the PAISLEY PARK mark under Policy ¶
4(a)(i) through registration of the mark with the USPTO); see also ESPN,
Inc. v. MySportCenter.com,
FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (concluding that the complainant
demonstrated its rights in the SPORTSCENTER mark through its valid trademark
registrations with the USPTO and similar offices around the world).
Complainant
contends that the <abc7chicago.mobi>
domain name is confusingly similar to its ABC
mark because the contested domain name simply appends the numeral “7” and the
geographic identifier “Chicago” to the end of the mark. Complainant alleges that its affiliate
network in the Chicago
area uses the ABC 7 CHICAGO mark
and the <abc7chicago.com> domain name, and thus the contested domain name
is descriptive of its business. The
Panel finds that Respondent has failed to sufficiently distinguish the
contested domain name from Complainant’s mark and thus the contested domain
name is confusingly similar to the mark pursuant to Policy ¶ 4(a)(i). See Am. Online, Inc.
v. Oxford Univ., FA 104132 (Nat. Arb. Forum Mar. 19, 2002) (finding several domain names
that added the numeral “7” or the term “seven” to the complainant’s AOL mark were confusingly similar to the mark under
Policy ¶ 4(a)(i)); see also Gillette
Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding
that the additions of the term “batteries,” which described the complainant’s
products, and the generic top-level domain “.com” were insufficient to
distinguish the respondent’s <duracellbatteries.com> from the
complainant’s DURACELL mark).
Rights or Legitimate Interests
Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interests in the
contested 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 Policy ¶ 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
Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007)
(finding that once a prima facie case has been established by the
complainant under Policy ¶ 4(c), the burden then shifts to the respondent to
demonstrate its rights or legitimate interests in the disputed domain name).
Complainant contends that because
the WHOIS information lists the registrant of the <abc7chicago.mobi>
domain name as “Merrill Sech,” and there is no other evidence in the record
indicating that Respondent is commonly known by the contested domain name,
Respondent is not commonly known by the contested domain name. Complainant also asserts that it has not
authorized or licensed Respondent to register or use a domain name
incorporating a variation of Complainant’s ABC
mark. The Panel agrees that Respondent
is not commonly known by the contested domain name, and finds that Respondent
does not have rights or legitimate interests in the domain name pursuant to
Policy ¶ 4(c)(ii). See 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); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS
contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”).
The Panel also
finds that Respondent’s non-use of the disputed domain name provides evidence
that Respondent lacks rights or legitimate interests in the disputed domain
name pursuant to Policy ¶ 4(a)(ii). See Flor-Jon Films, Inc. v. Larson, FA
94974 (Nat. Arb. Forum July 25, 2000) (finding that the respondent’s failure to
develop the site demonstrates a lack of legitimate interest in the domain
name); see also Melbourne IT Ltd. v.
Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or
legitimate interests in the domain name where there is no proof that the
respondent made preparations to use the domain name or one like it in
connection with a bona fide offering
of goods and services before notice of the domain name dispute, the domain name
did not resolve to a website, and the respondent is not commonly known by the
domain name)
Registration and Use in Bad Faith
Complainant asserts that Respondent
has failed to make any active use of the <abc7chicago.mobi> domain name since registering it on October 23, 2006. The Panel finds that Respondent’s failure to
use the disputed domain name indicates that Respondent registered the disputed
domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See TV
Globo Ltda. v. Globoesportes.com, D2000-0791 (WIPO Sept. 12, 2000) (finding
bad faith where (1) the domain name in dispute is obviously connected with a
well-known mark, (2) the respondent deliberately chose a domain name which is
the mark of the largest TV operator in the world’s largest Portuguese speaking
country, and (3) the respondent failed to develop the site); see also CBS Broad., Inc. v.
LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000)
(finding that given the long use and fame of the complainant’s mark, the
respondent’s conduct is evidence of bad faith).
Furthermore,
Respondent has demanded compensation in exchange for transferring the disputed
domain name registration to Complainant.
Complaint submits as evidence an e-mail exchange with Respondent where
Respondent refused to transfer the <abc7chicago.mobi>
domain name. The Panel finds that
Respondent’s offer to sell the disputed domain name registration to Complainant
demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003)
(“Respondent's general offer of the disputed domain name registration for sale
establishes that the domain name was registered in bad faith under Policy ¶
4(b)(i).”); 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).
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 <abc7chicago.mobi> domain name be TRANSFERRED
from Respondent to Complainant.
John J. Upchurch,
Panelist
Dated: February 28, 2007
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