Cable News Network, Inc. f/k/a Cable News Network LP, LLLP v. Bliss Lose
Claim Number: FA0807001215553
Complainant is Cable News Network, Inc. f/k/a Cable
News Network LP, LLLP (“Complainant”),
represented by Emily S. Mechem, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <cnn-video.com>, registered with Tucows 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 15, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 16, 2008.
On July 16, 2008, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <cnn-video.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 July 17, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 6, 2008 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@cnn-video.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 13, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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." 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.
A. Complainant makes the following assertions:
1. Respondent’s <cnn-video.com> domain name is confusingly similar to Complainant’s CNN mark.
2. Respondent does not have any rights or legitimate interests in the <cnn-video.com> domain name.
3. Respondent registered and used the <cnn-video.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is an international media and entertainment company that is one of the world’s leading news and information providers. For more than twenty years, Complainant has been providing news and information services under the CNN mark. It provides cable network, radio, and online news services across the globe, readily available to over one billion people. As a part of its online services, Complainant operates a website at the <cnn.com> domain name. Under which, there is a further link labeled “CNN Videos,” to which Internet users are directed to a listing of video streaming news and entertainment services. Complainant has registered the CNN mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,594,839 issued May 22, 1990).
Respondent’s <cnn-video.com> domain name was registered on October 28, 2006. It resolves to a commercial website incorporating Complainant’s CNN mark and stylized logo. It sells video conversion software and indicates that the owner of the site is “A-Z Software, Inc.”
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."
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.”).
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.
The Panel finds that Complainant has sufficiently
established rights in the CNN mark through registration with the USPTO pursuant
to Policy ¶ 4(a)(i). See
VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat.
Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS
SQUARE mark by registering it with the United States Patent and Trademark
Office (“USPTO”).”); see also Reebok Int’l Ltd. v. Santos, FA 565685
(Nat. Arb. Forum Dec. 21, 2005) (“Complainant owns a United States Patent and
Trademark Office (‘USPTO’) registration issued September 5, 2000 for the RBK
mark. This trademark registration is
adequate to establish rights pursuant to Policy ¶ 4(a)(i).”).
The <cnn-video.com> domain name contains
Complainant’s CNN mark in its entirety followed by a hyphen, the descriptive
word “video,” and the generic top-level domain (“gTLD”) “.com.” The inclusions of a hyphen and a gTLD are
irrelevant to a Policy ¶ 4(a)(i) analysis. Moreover, the addition of the word “video”
does not distinguish the disputed domain name from Complainant’s mark because
it directly describes and correlates to a medium in which Complainant provides
most of its services under the CNN mark.
For all of these reasons, the Panel finds that Respondent’s disputed
domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶
4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum
Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for
purposes of the Policy); see also Health
Devices Corp. v.
The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(i).
To begin a Policy ¶
4(a)(ii) analysis, Complainant must have first
established a prima facie case that Respondent lacks rights and
legitimate interests in the disputed domain name. The Panel finds that this threshold has been
met and that the attention and responsibility accordingly shifts to Respondent
to demonstrate that it does have rights or legitimate interests in the disputed
domain name. See AOL LLC v. Gerberg,
FA 780200 (Nat.
Arb. Forum Sept. 25, 2006) (“Complainant must 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 interest in the subject domain names.”); see also SEMCO Prods., LLC v. dmg world
media (uk) ltd, FA 913881 (Nat.
Arb. Forum Apr. 9, 2007) (concluding that under Policy ¶ 4(a)(ii) and the
factors listed in Policy ¶ 4(c), a complainant must first make a prima facie case that the respondent has
not used or made demonstrable preparations to use the disputed domain name in
connection with a bona fide offering
of goods or services, that the respondent is not commonly known by the disputed
domain name, and that the respondent is not making a legitimate noncommercial
or fair use of the disputed domain name before the burden shifts to the
respondent to show otherwise).
However, Respondent
has failed to reply to the Complaint.
Therefore, the Panel may presume that Respondent has no rights or
legitimate interests in the disputed domain name. For the purposes of clarity though, the Panel
will continue to examine the record in consideration of the factors listed in
Policy ¶ 4(c). See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat.
Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint
functions as an implicit admission that [Respondent] lacks rights and
legitimate interests in the disputed domain name. It also allows the Panel to accept all
reasonable allegations set forth…as true.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec.
21, 2000) (finding that failing to respond allows a presumption that the
complainant’s allegations are true unless clearly contradicted by the
evidence).
Complainant asserts
that it is not affiliated with nor has ever granted permission to Respondent to
use the CNN mark in any way.
Moreover, Complainant points out that there is nothing else in the
record, including the WHOIS information which indicates that Respondent is or
ever was commonly known by the disputed domain name. The WHOIS information lists Respondent as
“Bliss Lose” and the disputed domain name’s own website states that its owner
is “A-Z Software, Inc.” Without any
additional evidence, the Panel finds that Respondent is not commonly known by
the <cnn-video.com> 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 Braun
Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that
the respondent was not commonly known by the disputed domain names where the
WHOIS information, as well as all other information in the record, gave no
indication that the respondent was commonly known by the disputed domain names,
and the complainant had not authorized the respondent to register a domain name
containing its registered mark).
The <cnn-video.com>
domain name is being used by Respondent in connection with a commercial website
that offers for sale software products.
The disputed domain name also prominently features Complainant’s
stylized CNN mark and logo. It is
apparent that Respondent is attempting to financially benefit from use of
Complainant’s mark. As a result, the
Panel finds that Respondent is utilizing the disputed domain name for 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 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)); see also
Wells Fargo & Co. v. Nadim,
FA 127720 (Nat. Arb. Forum Nov. 29, 2002) (finding that the respondent’s use of
the complainant’s WELLS FARGO mark to redirect Internet users to a domain name
featuring magazine subscriptions was neither a bona fide offering of
goods or services nor a legitimate noncommercial or fair use of the domain
name).
The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(ii).
The disputed domain
name is confusingly similar to Complainant’s mark and resolves to a website
selling video conversion software.
The websites utilize in advertising and selling such software bold
displays of Complainant’s stylized mark and logo. The Panel finds this to be evidence that
Respondent is attempting to commercially profit off of the goodwill and
services associated by consumers and Internet users with Complainant’s
mark. As such the Panel considers this
to be conclusive evidence of Respondent’s bad faith registration and use of the
disputed domain name pursuant to Policy ¶ 4(b)(iv).
The <cnn-video.com> domain name incorporates Complainant’s CNN mark and resolves to a website prominently featuring Complainant’s stylized CNN mark and logo. The CNN mark has been used by Complainant around the world in markets representing over one billion people. For the purposes of a UDRP proceeding, Complainant’s CNN mark is adequately famous and well-known. Moreover, the mark is being implemented by Respondent in an infringing way. Although there may be legitimate situations in which the disputed domain name could be utilized by another than Complainant, those circumstances do not exist here. The Panel finds that the notoriety and use of an exact copy of Complainant’s stylized mark constitutes evidence of Respondent’s constructive notice of Complainant’s rights in its mark. Since Respondent has failed to provide additional evidence or counter Complainant’s arguments, the Panel finds that Respondent had sufficient notice of Complainant’s rights in its mark before registering and while using the disputed domain name, providing additional evidence of Respondent’s bad faith registration and use of the <cnn-video.com> domain name under Policy ¶ 4(a)(iii). See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding bad faith where the respondent failed to provide any evidence to controvert the complainant's allegation that it registered the domain name in bad faith and where any future use of the domain name would do nothing but cause confusion with the complainant’s mark, except in a few limited noncommercial or fair use situations, which were not present); see also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (“The Respondent intentionally registered a domain name which uses the Complainant’s name. There is no reasonable possibility that the name ‘karlalbrecht.com’ was selected at random. There may be circumstances where such a registration could be done in good faith, but absent such evidence, the Panel can only conclude that the registration was done in bad faith.”); see also Via Rail Canada Inc. v. Mean Old Man Prods., AF-0759 (eResolution Apr. 23, 2001) (“A strong trademark, where unique because of its coined origins . . . might effectively preclude any legitimate or good faith registration or use of an identical or similar domain name.”)
The Panel concludes that Complainant has sufficiently established 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 <cnn-video.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 26, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum