Cable News Network, Inc. f/k/a Cable News Network, LP, LLLP v. Yahoo Net Caffe / Syed Zaheer Abbas
Claim Number: FA1101001368972
Complainant is Cable News Network, Inc. f/k/a Cable News Network, LP, LLLP (“Complainant”), represented by Emily S. Mechem of Arent Fox, LLP, Washington D.C., USA. Respondent is Yahoo Net Caffe / Syed Zaheer Abbas (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thecnnnews.com>, registered with Name.com LLC.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 21, 2011; the National Arbitration Forum received payment on January 21, 2011.
On January 24, 2011, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <thecnnnews.com> domain name is registered with Name.com LLC and that Respondent is the current registrant of the name. Name.com LLC has verified that Respondent is bound by the Name.com LLC 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 January 27, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 2011 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@thecnnnews.com. Also on January 27, 2011, 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 February 22, 2011 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
Respondent has submitted correspondence which did not comply with the rules making it acceptable as a Response. Notwithstanding the information therein has been taken into consideration in the making of this decision.
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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <thecnnnews.com> domain name is confusingly similar to Complainant’s CNN mark.
2. Respondent does not have any rights or legitimate interests in the <thecnnnews.com> domain name.
3. Respondent registered and used the <thecnnnews.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Cable News Network, Inc., is a large media company providing news and information services all over the world; both online and on television. Complainant owns multiple trademark registrations for its CNN mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,597,839 issued May 22, 1989). Complainant uses its mark to promote and support its business functions.
Respondent, Yahoo Net Caffe / Syed Zaheer Abbas, registered the disputed domain name on April 23, 2010. The disputed domain name resolves to a site that imitates Complainant’s site while offering advertisements and links to third party websites, many of which link to Complainant’s competitors. Presumably, Respondent receives click through fees from these linked sites.
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 contends that it has established its right in the mark by registering the mark with a federal trademark authority, the USPTO (e.g., Reg. No. 1,597,839 issued May 22, 1989). Previous panels have found that registering a mark with a federal trademark authority provides affirmative evidence of a complainant’s rights in that mark. See 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.”); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Furthermore, previous panels have also found that it is immaterial to the determination of a complainant’s rights in a given mark whether they have registered that mark in respondent’s country of residence. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, the Panel finds that Complainant has established its rights in the CNN mark under Policy ¶ 4(a)(i) by registering the mark with a federal trademark authority.
Complainant also contends that Respondent’s <thecnnnews.com> domain name is confusingly similar to its own CNN mark. The disputed domain name incorporates he entirety of the mark while including the term “the,” the descriptive term, “news,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent fails to sufficiently differentiate its disputed domain name from Complainants mark by making the aforementioned changes; thereby, making the two confusingly similar under Policy ¶ 4(a)(i). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (finding that the addition of the descriptive term “wine” to the complainant’s BLACKSTONE mark in the <blackstonewine.com> domain name was insufficient to distinguish the mark from the domain name under Policy ¶ 4(a)(i)); see also Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)).
The Panel finds that the requirements of Policy ¶ 4(a)(i) have been met.
The Panel finds that Complainant has met its burden of proof by making a prima facie case against Respondent showing that Respondent lacks rights or legitimate interests in the disputed domain name. Previous panels have found that burden shifts to Respondent to prove it has rights or legitimate interests in a mark after Complainant has met is prima facie burden. See 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, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). Respondent’s failure to file answer to the initial complaint allows this Panel to assume that Respondent lacks any rights or legitimate interests in the dispute domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, the Panel will examine the entire record to determine whether Respondent does in fact have rights or legitimate interests in the disputed domain name according to the factors enumerated in Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain name. Respondent has not offered any evidence to support the finding that it is commonly known by the disputed domain name. Nothing included in the WHOIS information indicates that Respondent is commonly known by the disputed domain name. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).
Complainant also asserts that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name resolves to a site that imitates Complainant’s site and offers advertisements and links to third party websites, many of which are Complainant’s competitors. The Panel finds that using the disputed domain name in this manner does not constitutes a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Complainant alleges that Respondent’s use of the disputed domain name disrupts its business by diverting Internet users to its competitors. The disputed domain name resolves to a site which imitates Complainant’s own website while offering links to third party websites including those of Complainant’s competitors. The Panel finds that the disputed domain name does in fact disrupt Complainant business constituting bad faith registration and use under Policy 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant also alleges that Respondent is using the disputed domain name for its own commercial gain. The disputed domain name resolves to a site offering links to third party websites including many of Complainant’s competitors. Presumably, Respondent collects click-through fees from the linked sites. The Panel finds that Respondent is using the disputed domain name for its own commercial gain constituting bad faith registration and use under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); 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.’”).
The Panel finds that the requirements of Policy ¶ 4(a)(iii) have been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thecnnnews.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: February 22, 2011
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