Cable News Network, Inc. f/k/a / Cable News Network, LP, LLLP v. Private Whois cnnelections.com
Claim Number: FA1203001433780
Complainant is Cable News Network, Inc. f/k/a / Cable News Network, LP, LLLP (“Complainant”), represented by Brian J. Winterfeldt of Steptoe & Johnson LLP, Washington, D.C., USA. Respondent is Private Whois cnnelections.com (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cnnelections.com>, registered with Internet.bs Corp.
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.
The Honourable Neil Anthony Brown QC
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 9, 2012; the National Arbitration Forum received payment on March 9, 2012.
On March 14, 2012, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <cnnelections.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 March 15, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 4, 2012 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@cnnelections.com. Also on March 15, 2012, 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 April 18, 2012 Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC s 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 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
Complainant made the following submissions.
1. The disputed domain name is confusingly similar to Complainant’s CNN mark.
2. The CNN mark is arbitrary, distinctive, strong, and a famous trademark.
3. The disputed domain name merely adds a generic or descriptive term to the CNN mark.
4. The disputed domain name contains the CNN mark in its entirety.
5. Respondent has no legitimate interest in the disputed domain name.
6. Respondent is not commonly known by the disputed domain name.
7. The CNN mark is an internationally famous name and mark.
8. Respondent is not making a bona fide use of the disputed domain name because it resolves to a website unrelated to cable news network.
9. Respondent has registered and used the disputed domain name in bad faith.
10. Respondent is offering to sell the disputed domain name.
11. Respondent has engaged in a pattern of bad faith registrations
12. Respondent has shown an intent to disrupt Complainant’s business.
13. Respondent has intentionally attempted to attract, for commercial gain, internet users to its website.
14. Respondent has falsified their WHOIS record.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a renowned international media and entertainment enterprise.
2. Complainant is the registered proprietor of many trademark registrations for CNN including its trademark registration with the United States Patent and Trademark Office (“USPTO”) for its CNN mark (e.g., Reg. No. 1,597,839 registered on May 22, 1990) and its trademark registration with the Bahamas Registrar General’s Office (“RGO”) (e.g., Reg. No. 14,148 registered on June 21, 1991).
3. Respondent , which is domiciled in the Bahamas, registered the disputed domain name on January 30, 2012. The domain name resolves to a webpage that advises internet users how to buy the domain name and with links to third party websites offering goods and services in fields other than media and entertainment.
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.”).
The first issue is whether Complainant has rights in the CNN trademark on which it relies. In that regard, Complainant presents the Panel with evidence of its trademark registration with the United States Patent and Trademark Office (“USPTO”) for its CNN mark (e.g., Reg. No. 1,597,839 registered on May 22, 1990). Complainant has also offered evidence of its extensive trademark registrations, including with the Bahamas Registrar General’s Office (“RGO”) (e.g., Reg. No. 14,148 registered on June 21, 1991). The Panel accepts the evidence submitted and, based on this evidence of its multiple trademark registrations with trademark authorities, including the USPTO, finds that Complainant has established rights in the 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 Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”).
The next question is whether Respondent’s disputed domain name is confusingly similar to Complainant’s CNN mark and Complainant submits that it is. Complainant argues that the disputed domain name contains the CNN mark in its entirety, with the addition of the descriptive term “elections.” The Panel notes that the disputed domain name also contains the generic top-level domain (“gTLD”) “.com.” Based on prior UDRP cases holding that these alterations are insufficient to differentiate a disputed domain name from a mark, the Panel holds that the disputed domain name is confusingly similar to Complainant’s CNN mark pursuant to Policy ¶4(a) (i).That is so because the internet user would naturally assume that the disputed domain name was an official CNN domain name and that it would lead to an official CNN website where Complainant would be dealing with the news coverage of elections. That is particularly so, as Complainant rightly submits, as Complainant has covered elections in the past and the domain name has been registered in a United States election year. 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 Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case and that it arises from the following considerations:
(a) Respondent has chosen to take Complainant’s famous, distinctive and arbitrary CNN trademark and to use it in its domain name and to add the word “elections” which can only enhance the confusing similarity between the domain name and the trademark;
(b) Respondent has then decided to use the domain name to lead to a website where interested persons may buy the domain name and to websites offering various goods and services for which Respondent must be presumed to be paid click- through fees;
(c) Respondent has engaged in these activities without the consent or approval of Complainant.
(d) Complainant also submits that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information lists “Private Whois cnnelections.com” as the registrant of the disputed domain name. However, the Panel also notes that Respondent does not provide any evidence that it is commonly known by the disputed domain names. Based on the evidence submitted, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).
(e) Complainant also argues that Respondent uses the <cnnelections.com> domain name to resolve to a website that directs Internet users to enter their name, phone number, and e-mail addresses in order to receive an e-mail that will contain a link to Escrow.com, where the user can allegedly complete an escrow purchase of <cnnelections.com> for a price of $850.00. The Panel finds Respondent’s use of the disputed domain name to attempt to sell the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy¶¶ 4(c)(i) and 4(c)(iii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
(f) Complainant also contends that Respondent uses the disputed domain name to host a commercial search engine and hyperlinks that are unrelated to Complainant. Complainant submits that Respondent must be presumed to receive click-through fees from the hyperlinks. Complainant provides a screen shot of the resolving website that the Panel finds supports its claims. Therefore, the Panel also concludes that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain name when the respondent uses the domain name to host unrelated hyperlinks. See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names. Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and that it has also been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names was registered and used in bad faith. That is so for the following reasons.
First, Complainant relies on Policy ¶ 4(b) (i) and contends that Respondent’s use of the disputed domain name to divert Internet customers seeking Complainant’s website to a website soliciting personal information and offering to sell the disputed domain name for $850.00 is prima facie bad faith pursuant to Policy ¶ 4(b) (i). The Panel agrees with this submission. Based on this evidence, the Panel finds that offering to sell a confusingly similar domain name is evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”); see also Randstad Gen. Partner, LLC v. Domains For Sale For You, D2000-0051 (WIPO Mar. 24, 2000) (finding bad faith where the respondent offered the domain name for sale on its website <internetdomains4u.com> for $24,000). Accordingly, the Panel finds that Respondent has registered and used the disputed domain name in bad faith.
Secondly, Complainant relies on Policy ¶4(b)(ii) and argues that Respondent has engaged in a pattern of bad faith registration and use pursuant to Policy ¶4(b)(ii).The conclusion must be reached in view of the fact that Respondent has been shown to have made repeated domain name registrations that infringe on the trademark rights of Cable News Network and others. Complainant provides the Panel with case citations showing Respondent’s pattern of bad faith registration and use. See Juicy Couture, Inc. v. Private Whois Discount-jucy-coutures.com, FA1108001405232 (Nat. Arb. Forum Oct. 12, 2011); Wal-Mart Stores, Inc. v. Private Whois mywalmartcom.com, FA1108001402076 (Nat. Arb. Forum Sept. 13, 2011). The Panel notes that the named respondents in these two cases both contain the “Privacy Whois” portion of Respondent’s “Privacy Whois cnnelections.com” name, but that neither of the respondents have completely identical names as the named Respondent in this case. However, the Panel determines that the respondents in both of the above cases are the same as the current Respondent and the Panel therefore finds that Respondent acted in bad faith under Policy ¶4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Thirdly, Complainant further argues that Respondent’s disputed domain name resolves to a website soliciting personal information and offering to sell the domain name, while offering monetized links to competing third parties. Complainant claims that such a use disrupts Complainant’s business. As the use of those links has the potential to reduce the amount of activity on Complainant’s own website, the Panel finds that the hyperlinks disrupt Complainant’s business and thus constitute bad faith registration and use under Policy ¶ 4(b)(iii). 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).”).
Fourthly, Complainant relies on Policy ¶ 4(b)(iv) and argues that Respondent has shown bad faith registration and use within the meaning of that provision. Complainant submits that Respondent has done this by creating a likelihood of confusion with Complainant’s mark through its confusingly similar domain name, thereby misleading Internet users and diverting Internet traffic to the resolving website for commercial gain. The Panel presumes that the displayed links are pay-per-click links which generate revenue for Respondent when clicked. Based on Complainant’s submissions and evidence, the Panel finds that Respondent acted in bad faith under Policy ¶4(b)(iv) when it registered and used the disputed domain name for the purpose of attracting consumers and financially profiting by creating a likelihood of confusion with Complainant’s mark as to the affiliation of Respondent’s website or the products on it . See 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.’”); see also 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).”).
Finally, Complainant asserts that, in light of the fame and notoriety of Complainant's CNN mark, it is inconceivable that Respondent could have registered the <cnnelections.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel agrees with Complainant that such is the fame of the CNN mark that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name. The Panel finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
In addition and having regard to the totality of the evidence, the Panel finds that Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cnnelections.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 19, 2012
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