Cable News Network, Inc. f/k/a Cable News Network, LP, LLLP v. Webworx / Nicholas Hadjipavlou
Claim Number: FA1206001450267
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 Webworx / Nicholas Hadjipavlou (“Respondent”), represented by Constantinos Pavlou of L. Papaphilippou & Co LLC, Cyprus.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cnnfilms.com>, registered with Name.com.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 25, 2012; the National Arbitration Forum received payment on June 25, 2012.
On June 25, 2012, Name.com confirmed by e-mail to the National Arbitration Forum that the <cnnfilms.com> domain name is registered with Name.com and that Respondent is the current registrant of the name. Name.com has verified that Respondent is bound by the Name.com 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 June 26, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 16, 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@cnnfilms.com. Also on June 26, 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.
A timely Response was received and determined to be complete on July 12, 2012.
An Additional Submission was received from Complainant and determined to be complete on July 17, 2012.
On July 20, 2012 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follow:
Complainant registered the CNN mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,597,839 registered May 22, 1990).
Respondent’s <cnnfilms.com> domain name is confusingly similar to Complainant’s CNN mark.
Respondent is not commonly known by the disputed domain name.
Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Respondent resolved the disputed domain name to an inactive website.
Respondent currently resolves the disputed domain name to a website bearing only the language “Cyprus Business Directory” with a link to a website offered at <cyprusonlinebusinessdirectory.com>.
Respondent has shown intent to disrupt Complainant’s business.
Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website.
Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the CNN mark.
B. Respondent
Respondent contends as follows:
Complainant is estopped from making a claim against the disputed domain name because Complainant waited until 8 years after Respondent registered the <cnnfilms.com> domain name.
Complainant filed a trademark application with the USPTO for the CNN FILMS mark that disclaimed the term FILM as a distinctive portion of the mark.
Respondent registered the disputed domain name a full eight years prior to Complainant’s potential entrance into the film industry.
Respondent’s <cnnfilms.com> domain name stands for an abbreviation of the owners’ names and their chosen trade.
Respondent registered the domain name to promote its “Chris ‘n’ Nick Films” business that operates in the wedding industry.
Respondent is making a legitimate and fair use of the domain name.
Respondent and Complainant operate in different industries and are using the “CNN Films” name for different purposes.
Complainant has already registered the <cnnmovies.com> domain name.
Respondent has not used the disputed domain name to disrupt Complainant’s business.
Respondent could not have registered the disputed domain name in bad faith because its registration of the domain name predates Complainant’s registration of the CNN FILMS mark.
C. Additional Submissions
Complainant additionally contends as follows:
Respondent’s actual name is WebWorx and not “Chris ‘n’ Nick Productions.”
Respondent failed to argue that the disputed domain name was not confusingly similar to the CNN mark.
Respondent failed to submit evidence that may indicate that it was commonly known by the disputed domain name prior to registering the disputed domain name.
Complainant’s CNN mark was registered long before Respondent registered the disputed domain name.
Respondent has no demonstrable plans to use the disputed domain name.
Laches is not a defense to a UDRP action and Respondent has not been harmed or prejudiced by the delay.
Complainant registered the CNN mark with the USPTO prior to Respondent’s registration of the at-issue domain name.
Respondent Webworx/Nicholas Hadjipavlou is not authorized to use the CNN mark.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in the CNN mark.
Respondent was aware of Complainant’s rights in the CNN mark at the time Respondent registered the at‑issue domain name.
“Chris ‘n’ Nick Films” was primarily conceived for the purpose of creating a nominal justification for Respondent’s registration and use of the at-issue domain name.
Respondent’s <cnnfilms.com> website at one time contained a link to another website and currently shows a website shell containing the text “Chris 'n' Nick Films.”
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.
Respondent suggests that the Doctrine of Laches bars the Complaint’s success since Complainant could have brought a UDRP action as early as 2004 but instead waited approximately 8 years before doing so. However, the equitable Doctrine of Laches generally does not apply to UDRP proceedings. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defense of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); see also Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”).
Notwithstanding the foregoing, if the Panel were to apply the Doctrine of Laches to the instant dispute, one necessary element of the Doctrine requires that its proponent show that it has been prejudiced by the adverse party’s delay. But here Respondent fails to explain how it has been disadvantaged by Complainant’s delay in bringing the Complaint. Therefore, even if a Laches defense were to be considered, the Doctrine would nevertheless be ineffective.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Respondent mischaracterizes the at-issue trademark as CNN FILMS, rather than CNN. Respondent offers no compelling evidence that it has rights in CNN FILMS and puts forth no rational basis suggesting that the Panel should consider only the term CNN FILMS and disregard Complainant’s well known CNN mark. Therefore, the Panel finds that Complainant’s registrations of the CNN trademark with the USPTO conclusively demonstrate Complainant’s rights in a mark for the purposes of Policy ¶4(a)(i). See 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)). That Complainant’s trademark registration may be outside the jurisdiction in which the Respondent resides is immaterial. 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).
Respondent does not deny that Respondent’s <cnnfilms.com> domain name is confusingly similar to Complainant’s CNN mark. The at‑issue domain name includes Complainant’s entire mark, while adding the term “films” and the generic top-level domain “.com.” These alterations do not sufficiently differentiate the at‑issue domain name from Complainant’s mark under Policy ¶ 4(a)(i). 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 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)).
Respondent lacks rights and legitimate interests in respect of the <cnnfilms.com> domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at‑issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
Complainant has not authorized Respondent to use its CNN mark and there is no evidence tending to prove otherwise. Respondent is not commonly known by the disputed domain name, notwithstanding that Respondent proffered a business card showing an e-mail address at <cnnfilms.com>, an invoice containing the name “Chris ‘n’ Nick Productions,” and that currently the at‑issue domain name references a website showing the text “Chris ‘n’ Nick Films” on its homepage. Such evidence of a “Chris ‘n’ Nick” entity is slight and might easily have been fabricated to benefit the Response. Notably, there is no evidence supporting the existence of a “Chris ‘n’ Nick” entity in the form of a declaration, official business document, tax return, bank account, or other documentary evidence which one might easily proffer to demonstrate that a “Chris ‘n’ Nick” business actually existed at the time Respondent registered the at‑issue domain name. Without such evidence the Panel concludes that Respondent’s contention that the letters C N N represents the initials for “Chris ‘n’ Nick” is disingenuous and was ginned up for the purpose of defending a UDRP proceeding or other challenge regarding the <cnnfilms.com> domain name. Furthermore, WHOIS information identifies the registrant of the disputed domain name as “Webworx / Nicholas Hadjipavlou.” Given the foregoing, the Panel finds that Respondent is not commonly known by the at-issue domain name under 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).
Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent’s domain name previously resolved to an inactive website. As mentioned above the domain name now references what appears to be a sham website set up for the purpose of responding to a complaint regarding the domain name. There is no evidence that Respondent ever made material preparations to use the disputed domain name for a legitimate purpose. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel also notes that the at‑issue domain name has referenced a website offering a single link to <cyprusonlinebusinessdirectory.com>. The link was to a company offering services unrelated to Complainant. These circumstances likewise show that Respondent has made no bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii), respectively. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
Given the foregoing, Complainant makes out a prime facie case under Policy ¶4(a)(ii) and Respondent fails to show any evidence which conclusively demonstrates that it in fact has rights or interests in respect of the domain name.
Respondent registered and uses the at-issue domain names in bad faith.
While it is plausible that Respondent innocently registered the at-issue domain name because the letters C N N signify “Chis ‘n’ Nick,” as the Panel mentions above, the evidence corroborating this claim is sparse compared to what one might expected if such claim were genuine. Given that Respondent does not dispute that it knew of Complainant’s CNN trademark at the time it registered the at‑issue domain name, it would have been prudent for Respondent to name the alleged wedding video business something like “Nick ‘n’ Chris” or otherwise not register a domain name that contained the CNN trademark. That Respondent instead opted for a domain name containing Complainant’s entire trademark when it could have easily picked a non-infringing domain name is further evidence of Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). Moreover, the fact that the CNN mark was well known worldwide prior to the time Respondent registered <cnnfilms.com> and the fact that Respondent appended the suggestive term “films” to the CNN mark in forming the at‑issue domain name each indicate that Respondent was aware of Complainant’s media related business and that Respondent registered the at‑issue domain name with Complainant’s rights in mind. Respondent’s knowledge of Complainant’s trademark prior to registering the domain name suggests bad faith registration and use under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Finally, there is evidence that Respondent intentionally attempted to attract Internet users to its website for commercial gain. The at‑issue domain name has resolved to a website offering an unrelated link to a third party. It is reasonable to assume that Respondent intended to collect a click-through fee each time an Internet user utilized such link. The Panel therefore concludes that Respondent registered and uses the confusingly similar domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cnnfilms.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 31, 2012
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