Cable News Network, Inc. f/k/a Cable News Network, LP, LLLP v. Oakwood Services Inc. - N/A N/A
Claim Number: FA1006001331735
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 <cnnentertainment.com>, registered with Compana, LLC.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 24, 2010.
On June 28, 2010, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <cnnentertainment.com> domain name is registered with Compana, LLC and that Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 1, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 21, 2010 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@cnnentertainment.com. Also on July 1, 2010, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 26, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <cnnentertainment.com> domain name is confusingly similar to Complainant’s CNN mark.
2. Respondent does not have any rights or legitimate interests in the <cnnentertainment.com> domain name.
3. Respondent registered and used the <cnnentertainment.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Cable News Network, Inc. f/k/a Cable News Network, LP, LLLP, is an international media and entertainment company and has used its CNN mark for over 20 years to identify its news and information services. Complainant operates an official website which resolves from the <cnn.com> domain name. Complainant provides 24 hour breaking news coverage on both its television network and website, but also includes interactive resources for sports, entertainment, weather, politics, personal finance, and the law on its website. Complainant has multiple registrations of its CNN mark registered with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,597,839 issued May 22, 1990).
Respondent, Oakwood Services Inc. - N/A N/A registered the disputed domain name on September 20, 2004. The disputed domain name resolves to a website that prominently displays Complainant’s CNN marks and features links to Complainant’s competitors.
Respondent has been the respondent in at least four other UDRP proceeding in which the disputed domain names were transferred to the complainant’s in their respective cases. See Ubisoft Entm’t S.A. v. Oakwood Servs. Inc., FA 1298869 (Nat. Arb. Forum Jan. 28, 2010); see also Laufer Media, Inc. v. Oakwood Servs. Inc., D2009-1180 (WIPO Oct. 24, 2009).
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.
Complainant asserts rights in its CNN mark based on its holding of multiple registrations of the mark with the USPTO (e.g. Reg. No. 1,597,839 issued May 22, 1990). The Panel finds that Complainant’s registrations with the USPTO are evidence of Complainant’s rights in its CNN mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also 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.”).
Complainant alleges that Respondent’s <cnnentertainment.com>
domain name is confusingly similar
to Complainant’s CNN mark. Respondent’s
disputed domain name adds the descriptive term “entertainment,” which makes
reference to an area of new service that Complainant provides. The Panel finds that the addition of a
descriptive term is not sufficient to distinguish a disputed domain name from a
mark. See 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; see also Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2,
2005) (finding that the addition of the descriptive term “talk” to a registered
mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)). Respondent’s
disputed domain name also appends the generic top-level domain (“gTLD”) “.com,”
which the Panel finds is irrelevant to Policy ¶ 4(a)(i)
analysis. See Trip
Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007)
(concluding that the affixation of a gTLD to a domain name is irrelevant to a
Policy ¶ 4(a)(i) analysis); see also Jerry Damson, Inc.
v.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights and
legitimate interests in the <cnnentertainment.com> domain name.
The requirements of Policy ¶ 4(a)(ii) indicate
that Complainant must first establish a prima
facie case supporting its assertions before the burden is effectively
transferred to Respondent who must then prove that it does have rights of
legitimate interests in the disputed domain name. The Panel has reviewed the Complaint and
finds that Complainant has provided enough evidence to establish a prima facie case. Therefore, the burden is now on Respondent to
prove its rights or legitimate interests in the <cnnentertainment.com>
domain name. The Panel notes that
Respondent did not respond to these proceedings and thus, the Panel infers that
Respondent lacks all rights and legitimate interests in the disputed domain
name. See Document Techs.,
Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000)
(“Although Paragraph 4(a) of the Policy requires that the Complainant prove the
presence of this element (along with the other two), once a Complainant makes
out a prima facie showing, the burden of production on this factor
shifts to the Respondent to rebut the showing by providing concrete evidence
that it has rights to or legitimate interests in the Domain Name.”); see also Bank
of Am. Corp. v. McCall, FA 135012 (Nat.
Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in
its failure to meet its burden, but also will be viewed as evidence itself that
Respondent lacks rights and legitimate interests in the disputed domain
name.”). However, the Panel will examine
the record to determine whether Respondent owns any rights or legitimate
interests in the disputed domain name under Policy ¶ 4(c).
The WHOIS information for the disputed domain name lists “Oakwood Services Inc. - N/A N/A” as the registrant of the <cnnentertainment.com> domain name. Additionally, Complainant asserts that it has not authorized or licensed Respondent to use Complainant’s CNN mark. Without evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed 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.”); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
Complainant alleges that Respondent’s disputed domain name resolves to a website that displays third-party links, many of which direct Internet users to Complainant’s competitors in the news and entertainment source business. Complainant further alleges that Respondent’s use creates a presumption that Respondent earns click-through fees when Internet users click on these links and that Respondent is thereby profiting from the use of Complainant’s CNN mark. The Panel finds that Respondent’s use of the disputed domain name to display links to Complainant’s competitors and profit from the receipt of click-through fees is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent has engaged in a pattern
of bad faith conduct by registering numerous domain names containing well-known
marks. Complainant further asserts that
in at least four previous UDRP proceedings Respondent was held to have
registered and used domain names in violation of UDRP Policy. See Ubisoft Entm’t S.A. v.
Oakwood Servs. Inc., FA 1298869 (Nat. Arb.
Forum Jan. 28, 2010); see also Laufer Media, Inc. v. Oakwood Servs. Inc.,
D2009-1180 (WIPO Oct. 24, 2009). The
Panel finds that Respondent’s history of prior UDRP proceedings resulting in
the transfer of infringing domain names from Respondent to the complainant’s in
those cases is evidence of Respondent’s bad faith registration and use pursuant
to Policy ¶ 4(b)(ii) in the instant proceeding.
See Westcoast Contempo Fashions Ltd. v.
Previous panels have found that a respondent who registers and uses a disputed domain to display third-party links that compete with a complainant’s business have demonstrated bad faith. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business). In this case, Respondent has registered and is using the <cnnentertainment.com> domain name to display links to Complainant’s direct competitors in the news and entertainment source industry. The Panel finds that Respondent has evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(iii) in its attempt to disrupt Complainant’s business.
Complainant asserts that Respondent has registered and used
the disputed domain name in bad faith because Respondent has attempted to
divert Internet users seeking Complainant’s services to a commercial website
offering links to Complainant’s competitors.
Complainant further asserts that Respondent presumably receives
click-through fees from its diversionary use of the disputed domain name. The Panel finds that Respondent’s
registration and use of the disputed domain name to intentionally attract
Internet users for Respondent’s commercial gain is evidence of Respondent’s bad
faith pursuant to Policy ¶ 4(b)(iv). See
The Panel finds that Complainant has satisfied 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 <cnnentertainment.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: August 2, 2010
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