Cable News Network, Inc. f/k/a Cable News Network, LP, LLLP v. Teddy Wells
Claim Number: FA1308001516056
Complainant is Cable News Network, Inc. f/k/a Cable News Network, LP, LLLP (“Complainant”), represented by Brian J. Winterfeldt of Katten Muchin Rosenman LLP, Washington, D.C., USA. Respondent is Teddy Wells (“Respondent”), Hawaii, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ireportawards.com>, registered with GoDaddy.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 22, 2013; the National Arbitration Forum received payment on August 22, 2013.
On August 23, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <ireportawards.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 August 26, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 16, 2013 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@ireportawards.com. Also on August 26, 2013, 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 September 19, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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. 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 <ireportawards.com> domain name, the domain name at issue, is confusingly similar to Complainant’s IREPORT mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is one of the world’s leading news and information providers throughout international media and operates “iReport,” which started in 2006. iReport combines user generated content and social networking by providing an open forum and the ability for Internet users to upload, share and discuss news with each other. iReport began on August 2, 2006 and on February 13, 2008 Complainant launched <ireport.com>. Complainant owns registrations with the United States Patent and Trademark Office (“USPTO”) for the IREPORT mark:
Reg. No. 3,868,990 registered November 2, 2010;
Reg. No. 3,868,991 registered November 2, 2010;
Reg. No. 3,888,442 registered December 14, 2010;
Reg. No. 3,704,162 registered November 3, 2009;
Reg. No. 3,611,475 registered April 28, 2009;
Reg. No. 3,949,682 registered April 26, 2011;
Reg. No. 3,949,683 registered April 26, 2011;
Reg. No. 3,972,258 registered June 7, 2011.
Complainant also claims common law rights in the IREPORT AWARDS mark through its use and commercial recognition with a first use date of February 15, 2011. Complainant’s official website is located at the <cnn.com> domain name.
Respondent’s <ireportawards.com> domain name contains Complainant’s IREPORT mark in its entirety. Respondent adds the generic term “awards” to Complainant’s mark. Respondent’s <ireportawards.com> domain name is identical to Complainant’s IREPORT AWARDS mark. Respondent adds the generic top-level domain (“gTLD”) “.com" and removes the spaces between the words in Complainant’s mark. Respondent is not commonly known by the disputed domain name and is identified as “Teddy Wells” in the WHOIS information. Nothing on Respondent’s resolving website suggests that Respondent is commonly known by the disputed domain name. Respondent uses the disputed domain name to redirect Internet users to various Facebook pages, including a commercial page for the “Hawaii Actors Network” and Respondent’s own Actor/Director services. Respondent’s action of taking down the website that resolves from the disputed domain name does not demonstrate a legitimate interest. Respondent is presumably collecting revenue by creating a likelihood of confusion between Complainant’s mark and the confusingly similar domain name. The website resolving from Respondent’s disputed domain name either promotes Respondent’s business and offers commercial links to third parties, or it resolves to no page at all. Respondent had actual knowledge of Complainant’s rights in the IREPORT mark because they are famous. Respondent’s registration of the disputed domain name just days after Complainant announced the launch of its IREPORT AWARDS campaign indicates opportunistic bad faith. Respondent is currently passively holding the disputed domain name. The WHOIS information for Respondent’s <ireportawards.com> domain name indicates that it was created on May 18, 2012.
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.”).
Complainant is an international media and entertainment company, as well as a world leader in providing news and information services and has a system of awards that it represents with its IREPORT AWARDS mark. Complainant contends that it owns rights in the famous IREPORT mark through its registrations with the USPTO:
Reg. No. 3,868,990 registered November 2, 2010;
Reg. No. 3,868,991 registered November 2, 2010;
Reg. No. 3,888,442 registered December 14, 2010;
Reg. No. 3,704,162 registered November 3, 2009;
Reg. No. 3,611,475 registered April 28, 2009;
Reg. No. 3,949,682 registered April 26, 2011;
Reg. No. 3,949,683 registered April 26, 2011;
Reg. No. 3,972,258 registered June 7, 2011.
Previous panels have found that evidence of a registration with a recognized authority such as the USPTO is sufficient to indicate rights in a given mark under Policy ¶ 4(a)(i). 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.”) The Panel finds that Complainant has rights in the IREPORT mark pursuant to Policy ¶ 4(a)(i).
Although Complainant does not present any evidence that it owns trademark registrations with any national trademark agency for the IREPORT AWARDS mark, previous UDRP cases have held that Complainant need not own a valid trademark registration for its mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”). Therefore, the Panel finds that Complainant has provided evidentiary support for having acquired secondary meaning in the IREPORT AWARDS mark which would give rise to common law rights through continuous, widespread use of the mark since February 15, 2011 in connection with its iReport award campaign. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established). Based on the evidence provided, the Panel finds that complainant has common law rights in its IREPORT AWARDS mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <ireportawards.com> domain name contains Complainant’s IREPORT mark in its entirety with the addition of the gTLD “.com” and the descriptive term “awards.” Previous panels have found that variations such as these are insufficient to differentiate a disputed domain name from a given mark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a 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). Therefore, the Pane concludes that Respondent’s <ireportawards.com> domain name is confusingly similar to Complainant’s IREPORT mark under Policy ¶ 4(a)(i).
Respondent’s <ireportawards.com> domain name is identical to Complainant’s IREPORT AWARDS mark. The only variations between the disputed domain name and Complainant’s mark are the addition of the gTLD “.com” and the deletion of a space in the mark. Previous panels have found that minor changes such as these do not distinguish a disputed domain name from a Complainant’s mark. See Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark). The Panel finds that Respondent’s <ireportawards.com> domain name is identical to Complainant’s IREPORT AWARDS mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent has no rights or legitimate interests in the <ireportawards.com> domain name because it is not commonly known by it under Policy ¶ 4(c)(ii). Respondent is identified as “Teddy Wells” in the WHOIS information. Previous panels have found that a respondent is not commonly known by a disputed domain name where there is no indication on the record that respondent is commonly known by that disputed domain name. 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). The Panel thus finds that Respondent has no rights or legitimate interests in the disputed domain name because it is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Further, Respondent has no rights or legitimate interests in the <ireportawards.com> domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (c)(iii). Respondent previously used the disputed domain name to redirect Internet users to Facebook pages, including a commercial page for the Hawaii actors Network and Respondent’s own actor/director services. The Panel notes that on April 25, 2013 the resolving website featured headings such as “Health Care Reform,” and “Teach Me Obamacare (Affordable Care Act).” The Panel also notse that on June 4, 2013 the disputed domain name resolved to a website entitled “Teddy Wells (Tips-Teddy Inspires Personal Success)” and featuring postings such as “Teddy Wells 90 day fitness challenge with UFC BJ Penn gym,” “Hawaii Actors Network,” “Bella Petite Radio,” “Film Actors Network- Social Networking for Your film industry!” and “Teddy Wells recites Dr Kings I have a dream.” Previous panels have found that when a respondent uses a confusingly similar or identical disputed domain name to redirect Internet users to a website promoting its own goods, that use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. See Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant). Accordingly, the Panel finds that Respondent’s actions did not estalbish rights in the disputed domain name because Respondent was not making a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (c)(iii).
Respondent has currently taken down the website resolving from the <ireportawards.com> domain name, but passive holding of the disputed domain name does not confer rights or legitimate interests to Respondent. Previous panels have found that failing to make an active use of a disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). The Panel thus concludes that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (c)(iii) by failing to make an active use of the disputed domain name.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent was using the confusingly similar or identical disputed domain name to redirect Internet users searching for Complainant’s official website, to a Facebook page promoting Respondent and its media-related services. Respondent offered commercial links to third parties, indicating Respondent’s intent to disrupt Complainant’s business. Previous panels have found that using a confusingly similar or identical disputed domain name to resolve to a website featuring links to third parties, some of which compete with complainant’s business, indicates an intent to divert Internet users away from a complainant’s business in bad faith. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”). The Panel finds that Respondent registered and was using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant claims that Respondent has registered and was using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). Complainant argues that Respondent intentionally attempted to attract, for commercial gain, Internet users to its website. Respondent used the confusingly similar or identical disputed domain name to attract Internet users to its website for commercial gain, because, presumably Respondent was collecting click-through revenue from the links present on Respondent’s resolving website. Previous panels have found that featuring competing and noncompeting links on a website resolving from a confusingly similar domain name is evidence of bad faith under Policy ¶ 4(b)(iv). See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)).
Respondent took down the website that once resolved from the disputed domain name. Complainant argues that Respondent had obvious knowledge of Complainant’s marks when it registered the domain name and thus passively holding the disputed domain name does not negate bad faith. Previous panels have found that passively holding a confusingly similar or identical domain name satisfies the requirement of ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). The Panel thus finds that Respondent’s act of removing the resolving website does not negate a finding of bad faith under Policy ¶ 4(a)(iii).
Respondent registered the <ireportawards.com> domain name days after Complainant announced its launch of the 2012 IREPORT AWARDS campaign. Previous panels have routinely found that registering a domain name relating to a complainant’s recent public announcement indicates opportunistic bad faith. See Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the respondent demonstrated bad faith where the respondent was aware of the complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names). The Panel finds that Respondent’s timing for its registration of the <ireportawards.com> domain name indicates opportunistic bad faith use and registration.
The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and 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).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ireportawards.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 20, 2013
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