ABS-CBN International v. Daryl Untalan
Claim Number: FA1604001671368
Complainant is ABS-CBN International (“Complainant”), represented by Charlene L. Minx of Steptoe & Johnson LLP, California, USA. Respondent is Daryl Untalan (“Respondent”), Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tfcreplay.net>, registered with GMO Internet, Inc. d/b/a Onamae.com.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 21, 2016; the Forum received payment on April 21, 2016.
On April 22, 2016, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <tfcreplay.net> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.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 April 27, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 2016 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@tfcreplay.net. Also on April 27, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On May 19, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Language Request
Complainant requests this administrative Proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request even though the registration agreement is in Japanese. There is a rebuttable presumption the Proceeding should take place in the language of the domain name registrar’s registration agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the Proceeding to ensure fairness and justice to both parties. After all, it would be hardly fair if a Proceeding took place in a language Respondent did not understand.
Factors which previous panels have seen as particularly compelling are:
1. WHOIS information which establishes Respondent in a country which evinces a familiarity with the English language,
2. filing of a trademark registration with an entity which evinces an understanding of the English language, and
3. any evidence (or lack thereof) evidencing Respondent’s understanding of the Japanese language included in the Registration Agreement.
See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). The Panel also weighs the relative time and expense in enforcing the Japanese language agreement. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). Complainant claims Respondent does not have any legitimate contact with Japan. Respondent’s contact information lists Rome as Respondent’s address. The resolving website is in English. The contact page of the resolving web site is in English. English is one of the two official languages of the Philippines (the other is Filipino). All of these facts support Complainant’s request these proceedings be held in English.
Pursuant to UDRP Rule 11(a), the Panel finds sufficiently persuasive evidence has been adduced by Complainant that Respondent is sufficiently conversant and proficient in the English language to understand this Proceeding. After considering the circumstances of the present case, the Panel decides the Proceeding should be in English.
Complainant requests the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant ABS-CBN International and/or its affiliates and/or predecessors-in-interest (collectively, “Complainant”), has used the trademark TFC since at least at early as 1994 in connection with its global television network and other entertainment-related products and services. The TFC mark is a widely-used and well-known abbreviation of Complainant’s mark THE FILIPINO CHANNEL, which also has been in use since at least as early as 1994 on the same goods and services.
In connection with this use, Complainant owns a number of worldwide trademark registrations and applications for the TFC mark and TFC-formative marks, including but not limited to the following:
(i) TFC, United States Reg. No. 3,733,072, registered on January 5, 2010 for “Television broadcasting services; television broadcasting services via cable and satellite” in Class 38 and “Production and programming of television shows; entertainment in the nature of ongoing programs in the fields of films, lifestyle, live action, entertainment, pop culture, news and entertainment news, Asian culture, romance, relationships, music, dance, business, home and personal makeovers, youth issues, game shows, sports, Christian topics, contests, and variety distributed over television, satellite, and via a global computer network“ in Class 41.
(ii) TFC, Canadian Reg. No. 706,915, registered on February 8, 2008 for “Television broadcasting services; television broadcasting services via cable and satellite; Production and programming of television shows; entertainment in the nature of on-going programs in the fields of films, lifestyle, live action, entertainment, pop culture, news and entertainment news, Asian culture, romance, relationships, music, dance, business, home and personal makeovers, youth issues, game shows, sports, Christian topics, contests, and variety distributed over television, satellite, and via a global computer network; providing online information in the fields of films, lifestyle, live action, entertainment, pop culture, news and entertainment news, Asian culture, romance, relationships, music, dance, business, home and personal makeovers, youth issues, game shows, sports, Christian topics, contests, and variety via a global computer network”.
(iii) TFC ON DEMAND, Canadian Reg. No. 717,951, registered on July 4, 2008 for “Television broadcasting; broadcasting services, namely, radio and Internet broadcasting services; provision of telecommunication access to video and audio content provided via a video on-demand service via the Internet and wireless devices; streaming of audio and video material on the Internet and over wireless devices; internet protocol television (IPTV) services; mobile media and entertainment services in the nature of electronic transmission of entertainment media content, namely, downloading services of video and audio content onto digital audio and video players; entertainment services, namely, providing a television program in the fields of films, lifestyle, live action, entertainment, pop culture, news and entertainment news, Asian culture, romance, relationships, music, dance, business, home and personal makeovers, youth issues, game shows, sports, Christian topics, contests and variety distributed over television, satellite and/or via a global computer network.”
(iv) TFC THE FILIPINO CHANNEL, Canadian Reg. No. 738948, registered on April 28, 2009 for “Television broadcasting; television broadcasting via cable, satellite and the Internet; provision of telecommunication access to video and audio content provided via a video-on-demand service via the Internet and wireless devices; streaming of audio and video material on the Internet and over wireless devices; internet protocol television (IPTV) services; mobile media and entertainment services in the nature of electronic transmission of entertainment media content, namely, downloading services of video and audio content onto digital audio and video players; entertainment services, namely, providing a television program in the fields of films, lifestyle, live action, entertainment, pop culture, news and entertainment news, Asian culture, romance, relationships, music, dance, business, home and personal makeovers, youth issues, game shows, sports, Christian topics, contests and variety distributed over television, satellite and/or via a global computer network.”
(v) TFC ON DEMAND, United States App. No. 77/131,728, filed on July 20, 2010 for “Television broadcasting; broadcasting services and provision of telecommunication access to video and audio content provided via a video-on-demand service via the Internet and wireless devices; streaming of audio and video material on the Internet and over wireless devices; internet protocol television (IPTV) transmission services; mobile media services in the nature of electronic transmission of entertainment media content; all of the foregoing excludes the production and staging of live mixed martial arts (MMA) events” in Class 38 and “Entertainment services, namely, providing a television program in the fields of films, lifestyle, live action, entertainment, pop culture, news and entertainment news, Asian culture, romance, relationships, music, dance, business, home and personal makeovers, youth issues, game shows, sports, Christian topics, contests, and variety distributed over television, satellite and/or via a global computer network; all of the foregoing excludes the production and staging of live mixed martial arts (MMA) events” in Class 41.
(vi) TFC@THEMOVIES, United States App. No. 85/973,953, filed on July 1, 2013 for “On-line retail store services featuring DVDs, audio-visual works, downloadable pre-recorded video and motion pictures” in Class 35, “Broadcasting services and provision of telecommunication access to audio-visual content and motion pictures provided via a video-on-demand service via the Internet and wireless devices; streaming of audio-visual content and motion pictures on the Internet and over wireless devices; Internet protocol television (IPTV) transmission services; mobile media services in the nature of electronic transmission of entertainment media content” in Class 38, and “Showings of motion pictures and audiovisual works; production and distribution of motion pictures and audiovisual works; production of DVDs featuring motion pictures, audiovisual works, and television programs; planning arrangement of showing motion pictures, shows, plays or musical performances; distribution of motion pictures; ticket reservation and booking services for entertainment events; providing an Internet website portal in the field of entertainment and motion pictures; provision of information relating to motion pictures, theatrical screenings, and actors” in Class 41.
(vii) TFC LIFESTYLE NETWORK, United States App. No. 85/973,963, filed on July 1, 2013 for “Television broadcasting, programme broadcasting and audiovisual image distribution services including via cable and satellite; direct-to-home television transmission services; video-on-demand transmission services; internet protocol television services, namely, transmission of television via a global computer network; streaming of audio and video material on the internet and to mobile phones, handheld digital electronic devices and other personal media devices via wireless global computer networks” in Class 38, “Production and distribution of television shows, programming and movies; entertainment in the nature of on-going programs and series in the fields of beauty, wellness, home, home design, and travel distributed via television, cable, Internet, Internet protocol television, via global computer networks, and via wireless global computer networks” in Class 41, “Providing online information in the field of dining via global computer networks and wireless computer networks” in Class 43, and “Providing online information in the fields of fashion, lifestyle, self-help, self-improvement, and personal relationships via a global computer network and wireless computer networks” in Class 45.
(viii) L LIFESTYLE NETWORK A TFC PREMIUM CHANNEL, United States App. No. 85/974,819, filed July 1, 2013 for “Television broadcasting, programme broadcasting and audiovisual image distribution services including via cable and satellite; direct-to-home television transmission services; video-on-demand transmission services; internet protocol television services, namely, transmission of television via a global computer network; streaming of audio and video material on the internet and to mobile phones, handheld digital electronic devices and other personal media devices via wireless global computer networks” in Class 38, “Production and distribution of television shows, programming and movies; entertainment in the nature of on-going programs and series in the fields of beauty, wellness, home, home design, and travel distributed via television, cable, Internet, Internet protocol television, via global computer networks, and via wireless global computer networks” in Class 41, “Providing online information in the field of dining via global computer networks and wireless computer networks” in Class 43, and “Providing online information in the fields of fashion, lifestyle, self-help, self-improvement, and personal relationships via a global computer network and wireless computer networks” in Class 45.
Complainant also owns a number of worldwide trademark registrations for the mark THE FILIPINO CHANNEL (for which “TFC” is a well-known and commonly used abbreviation), including the following:
(i) THE FILIPINO CHANNEL, United States Reg. No. 1,994,383, registered on August 20, 1996 for “Cable television broadcasting” in Class 38 and “Television show production and programming” in Class 41.
(ii) THE FILIPINO CHANNEL, European Community Reg. No. 000449058, registered on September 6, 1998 for “Television broadcasting services; television broadcasting services via satellite and cable” in Class 38 and “Television show production and programming” in Class 41.
[d.] Language of Proceeding
Complainant respectfully requests that this case proceed in English. Although the registrar of the Disputed Domain Name is a Japanese entity and the registration agreement for the Disputed Domain Name is in Japanese, the Respondent appears to have no legitimate contacts with Japan. Respondent’s address is listed as Rome, Italy. Moreover, Respondent is capable of conducting this proceeding in English. This is because the Disputed Domain Name resolves to a website that is in the English language. English is used throughout the website at the Disputed Domain Name, and there is no evidence that any Japanese is used by Respondent.
Specifically, the Disputed Domain Name resolves to a website that advertises itself in the English language: “Watch Pinoy Channel Teleserye Replay online TV for free…” All of the categories are listed in English (“Featured,” “New Videos,” “Top Videos,” “Categories”, etc.) The contact us page (www.tfcreplay.net/contactus.php) also is in English, as are other pages throughout the website.
Because Respondent conducts the infringing activity at the Disputed Domain Name entirely in English, he/she is capable of proceeding with this case in English. Moreover, Respondent appears to have no legitimate connection with Japan (other than registering the Disputed Doman Name through a Japanese registrar) such that it is necessary to translate this Complaint into Japanese. Based on the above, Complainant requests that the Panel allow this case to proceed in English.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds:
[a.] The Disputed Domain Name is Confusingly Similar to the TFC Mark in Which Complainant Has Rights
Complainant is the California-based subsidiary of ABS-CBN Corporation, a diversified Filipino media conglomerate and the Philippines’ largest media and entertainment company. Complainant’s holdings include, among others, two national television networks; two radio stations; subsidiaries dealing in print, cable television, telecommunications, film production, and new media; and four international premium television networks, one of which is branded THE FILIPINO CHANNEL and is widely referred to and known by its abbreviation, TFC (the “Mark”). TFC is Complainant’s global subscription television channel that is targeted primarily to Filipino expatriates and their families. TFC broadcasts a 24-hour lineup of television shows imported from Complainant’s and its affiliates, and is widely recognized as the world’s most comprehensive 24-hour Tagalog-language premium programming service. Currently, the programming service offered under TFC has over 3 million paid household subscribers worldwide and 8 million in viewership.
In addition to the global subscription television channel branded TFC, Complainant’s Parent Company also owns and operates the website TFC.TV, an Internet-based, paid video-on-demand (“VOD”) and live broadcast service featuring content from Complainant’s channels. TFC.TV provides exclusive access to Complainant’s content, including news, TV shows, and movies, for viewers through laptops, computers, and personal devices.
Due to Complainant’s continuous and longstanding use of the Mark for over 20 years, as well as its extensive promotion, advertising and marketing of services under the Mark, the TFC mark is famous, and serves uniquely to identify Complainant and its premium programming service and related online and streaming services around the world.
It is undisputed that Complainant is the owner of rights to the TFC mark through its use and registration, in multiple jurisdictions, of trademark registrations for TFC. See National Association of Credential Evaluation Services, Inc. v. Shanker Munshani, FA1103001375372 (Forum April 8, 2011) (“The Panel further concludes that Complainant, through its use and ownership of a U.S. registration for the NACES mark, has rights in such mark.”); see also Expedia, Inc. v. Tan, FA991075 (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 Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)).
The Disputed Domain Name TFCREPLAY.NET is confusingly similar to Complainant’s Mark. The Disputed Domain Name uses the TFC mark in its entirety along with the descriptive word “replay,” which clearly is meant to reference that content is being replayed and re-shown. The only “distinction” is the addition of the generic top-level domain (“gTLD”) “.net.” UDRP decisions have consistently held that the affixation of such a gTLD does not sufficiently distinguish a disputed domain name from a complainant’s mark. See Trip Network Inc. v. Alviera, FA 914943 (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 Ocwen Financial Corp. v. Robbie Viera, FA0707001048760 (Forum September 19, 2007) (finding that www.ocwen.org was “identical” to the complainant’s mark OCWEN under Policy ¶4(a)(i) “as the disputed domain name contain[ed] the complainant’s mark in its entirety with the addition of the generic top-level domain (‘gTLD’) ‘.org’”); Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO April 10, 2000) (finding the domain name www.microsoft.org identical to the complainant’s mark).
[b.] Respondent Has No Rights or Legitimate Interests in the Disputed Domain Name
Respondent has no rights or legitimate interest in the Disputed Domain Name for the following reasons.
i. Respondent Is Not Commonly Known by the Disputed Domain Name
Upon information and belief, Respondent is not and has never been commonly known by the Disputed Domain Name. Respondent is an individual, not a corporation; his name is Daryl Untalan. His name bears no similarity to the TFC mark, and Complainant has not licensed or otherwise authorized Respondent to use the TFC mark. In cases involving similar facts, UDRP decisions have consistently found that the respondent did not have any rights or legitimate interest in the disputed domain name. See, e.g., The Royal Bank of Scotland Group plc v. Vietnam Domain Privacy Services, FA 1103001378748 (Apr. 16, 2011) (finding that the respondent was not commonly known by the disputed domain name, pursuant to Policy ¶4(c)(ii), as there was no information in the record to indicate otherwise). See also Yahoo! Inc. v. Junlong Zheng c/o OnlineNIC, FA1142567 (Forum Mar. 25, 2008) (holding respondent has no rights or legitimate interests pursuant to Section 4(c)(ii) because there is no evidence in the record or WHOIS information indicating respondent is commonly known by the disputed domain name and because Complainant did not authorize respondent to use its YAHOO! mark); Tercent Inc. v. Lee Yi, FA139720 (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 Gallup, Inc. v. Amish Country Store, FA96209 (Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
ii. Respondent’s Use of the Disputed Domain Name to Host an Infringing Website Does Not Constitute a Bona Fide Offering of Goods or Services
Respondent uses the Disputed Domain Name – which completely incorporates Complainant’s Mark – to host a blatantly infringing website that appropriates Complainant’s content and wrongfully diverts consumers from Complainant’s paid television channel and/or paid VOD service. The website at the Disputed Domain Name offers dozens of links to ABS-CBN television shows and movies, all of which have been appropriated without license by Respondent. This does not constitute a bona fide use. In fact, the Disputed Domain Name even copies the look and feel of Complainant’s TFC mark by using the same font and stylized elements. Indeed, the Disputed Domain Name flaunts that it offers infringing content for free: it advertises its website as allowing consumers to “watch Pinoy Channel…online TV for free…” Because the Disputed Domain Name uses Complainant’s TFC mark plus the descriptive word “replay”, consumers are likely to be confused that the Disputed Domain Name and the links at the Disputed Domain Name’s website are approved of, sponsored by, or otherwise associated with Complainant and its high quality products and services because of the reputation of the TFC mark.
Moreover, Respondent likely generates revenue from this website since it displays numerous paid, third-party ads, both on the homepage and when users click on links to streaming video. Such use plainly does not constitute a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use. See, e.g., Disney Enterprises, Inc. v. Dot Stop, FA 0302000145227 (Forum Mar. 17, 2003) (finding that the use of a confusingly similar domain name to redirect Internet traffic for Respondent’s profit is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); The Royal Bank of Scotland Group plc v. Vietnam Domain Privacy Services, FA 1103001378748 (Apr. 16, 2011) (finding that respondent’s use of a disputed domain name redirecting Internet users to a directory website featuring links which directly compete with complainant’s business was not a bona fide offering of goods or services under Policy ¶4(c)(i)); Citigroup Inc. v. Adamo Cardosi, FA0605000708953 (Forum June 28, 2006) (finding Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business while obtaining click-through fees 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)).
Respondent cannot establish any of the circumstances listed under UDRP Policy, ¶4(c) which would entitle it to the lawful registration of the subject domain name. Many previous panels have concluded that when none of the circumstances listed under UDRP Policy,¶4(c) are met and Respondent has no connection or affiliation with the Complainant, then Respondent cannot have legitimate rights in or to the subject domain name. See Dell Inc. v. William Stenzel, FA0510000574596 (NAF Nov. 23, 2005); Barry Zito v. Stan Andruszkiewicz, FA0207000114773 (NAF Aug. 20, 2002); Florida First Bank v. Mukadder Mufit Ozgunes, FA0004000094391 (NAF May 15, 2000); V Secret Catalogue, Inc. v. Artco, Inc., FA94342 (NAF May 9, 2000). As was the case in those decisions, Respondent here cannot set forth any of the circumstances listed in UDRP Policy, ¶4(c).
[c.] Respondent Has Registered and Is Using the Disputed Domain Name in Bad Faith
Respondent’s registration and use of the Disputed Domain Name plainly meet the grounds of bad faith outlined in the UDRP.
i. Intent to Disrupt Competitor’s Business
Respondent’s use and registration of the Disputed Domain Name disrupts Complainant’s business in the field of television programming and online television streaming, and therefore constitutes bad faith use and registration under Section 4(b)(iii) of the Policy. Potential customers who encounter the Disputed Domain Name are likely to believe that it is affiliated with Complainant due to the use of Complainant’s TFC mark and the descriptive word “replay.” Additionally, potential customers using a search engine to search for Complainant’s website may instead find Respondent’s website due to the confusingly similar domain name. Respondent’s resolving website contains dozens of links to infringing and competing content, and users may decide to wrongfully use such services rather than Complainant’s paid subscription channel and/or its paid VOD service. This use disrupts Complainant’s business and constitutes bad faith use and registration. See, e.g., Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (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)); see also Am. Online, Inc. v. Tapia, FA 328159 (Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).”).
ii. Intent to Attract, for Commercial Gain, Internet Users to the Disputed Domain Name by Creating a Likelihood of Confusion with Complainant’s Mark and Collecting Advertisement Revenue
Respondent’s registration and use of the Disputed Domain Name also constitutes bad faith under Section 4(b)(iv) of the Policy. By registering a confusingly similar domain name to Complainant’s mark and hosting a website at that domain that offers infringing content, Respondent had the clear goal to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s mark and generating advertising revenue. Indeed, consumers are likely to be confused when they see the Disputed Domain Name because it wholly incorporates Complainant’s famous TFC mark and offers TFC shows and movies. As a result, consumers will believe that the website at the Disputed Domain Name are approved of, sponsored by, or otherwise associated with Complainant because of the reputation and recognition of the TFC mark. Intentionally causing such confusion for commercial gain is strong evidence of bad faith. See Citigroup Inc. v. Adamo Cardosi, FA0605000708953 (Forum June 28, 2006) (finding Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to competing websites unrelated to Complainant's business while obtaining click-through fees is evidence of bad faith under Section 4(b)(iv) of the Policy); Kmart v. Khan, FA127708 (Forum Nov. 22, 2002) (finding that if a respondent profits from its diversionary use of a complainant's mark when the domain name resolves to commercial websites, that respondent was using the domain name in bad faith pursuant to Policy ¶4(b)(iv)); DatingDirect.com Ltd. v. Aston, FA593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); Kapula Candies (Proprietary) Ltd. v. Wayne Stuart Dixon, 2002 UDRP LEXIS 1083 (UDRP 2002) (“[A] domain name that is identical to the Complainant’s registered trademark to redirect Internet users to a website of the Respondent’s which sells goods which compete with those . . . sold by the Complainant is strong evidence . . . of bad faith”); Perot Sys. Corp. v. Perot.net, FA95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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(f), 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 (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 a California-based subsidiary of ABS-CBN Corporation, a diversified Filipino media conglomerate and the Philippines’ largest media and entertainment company. Complainant registered its TFC mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,733,072, registered January 5, 2010). Registration of a mark with a governmental authority (such as the USPTO) sufficiently demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i), even though the parties are in different countries. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). Complainant need only demonstrate Complainant has some rights, not that Complainant has rights in Respondent’s home country. Complainant has established rights in the TFC mark under Policy ¶ 4(a)(i).
Complainant claims Respondent’s <tfcreplay.net> domain name is confusingly similar to Complainant’s TFC mark because it incorporates the entire mark, while adding the descriptive term “replay” and the gTLD “.net.” The term “replay” is descriptive of re-watching Complainant’s video content. The addition of a descriptive word to a complainant’s mark does not prevent a finding of confusing similarity under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Karandish, FA 563833 (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)). Domain name syntax requires a TLD, whether a gTLd or a ccTLD. The gTLD “.net” must be disregarded under a Policy ¶ 4(a)(i) analysis. See Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”). The <tfcreplay.net> domain name is confusingly similar to Complainant’s TFC mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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.”).
Complainant claims Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. The WHOIS information lists “Daryl Untalan” as registrant of the disputed domain name. There is no obvious relationship between the registrant’s name and the disputed domain name. Complainant has not licensed Respondent to use Complainant’s TFC mark. Respondent has failed to submit a response in this case. Given the lack of evidence to the contrary, the Panel must conclude Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (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.”).
Respondent does not appear to be making any bona fide use of the <tfcreplay.net> domain name. Complainant claims the <tfcreplay.net> domain name resolves to a website that allows users to watch bootleg video streams of Complainant’s movies and television programs (without providing screenshots). While typically the Panel is not required to perform independent research, precedent allows it to undertake limited factual research into publically available information it feels would be helpful in reaching a decision. See, e.g., Givi Srl & G. Visenzi Motomarket Srl v. Shahi, D2005-0392 (WIPO July 11, 2005). While the Panel could conduct research, the Panel does not feel it is necessary because Respondent has not contested any of Complainant’s claims. According to the facts in the Complaint, Respondent offers a competing service. By using the disputed domain name in this manner, Respondent acts as a competitor and diverts Internet users seeking Complainant’s TFC website to Respondent’s own website. Complainant believes Respondent is profiting from Internet user confusion. Respondent does not dispute any of this. A respondent’s use of a disputed domain name in this manner is neither (i) a bona fide offering of goods or services nor (ii) a legitimate noncommercial or fair use of the disputed domain name under Policy ¶4(c)(i) or (c)(iii). See, e.g., Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003); General Motors LLC v. MIKE LEE, FA 1659965 (Forum March 10, 2016).
The Panel finds Policy ¶ 4(a)(ii) satisfied.
Complainant claims the <tfcreplay.net> domain name was registered and is being used in bad faith. A competitor is one who acts in opposition to another in the marketplace. See, e.g., Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000). Respondent is acting as a competitor of Complainant because Respondent is replaying Complainant’s video content without authorization. Respondent’s use of Complainant’s TFC mark diverts Complainant’s customers to Respondent’s competing website in bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Respondent registered and is using the domain in bad faith under Policy ¶ 4(b)(iii).
Complainant claims the <tfcreplay.net> domain was registered in bad faith because Respondent was trying to capitalize on Complainant’s mark. Respondent uses the <tfcreplay.net> domain to direct Internet users to a webpage showing bootleg copies of Complainant’s streaming video movies and television programs. Respondent is capitalizing on, and profiting from, Complainant’s mark and the goodwill associated with Complainant’s mark. Respondent has registered and is using the <tfcreplay.net> domain name in bad faith under Policy ¶ 4(b)(iv) because Respondent is diverting Internet users from Complainant’s website for Respondent’s own commercial benefit. See OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum April 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)). Respondent is engaged in bad faith registration and use under Policy ¶ 4(b)(iv).
The Panel finds Policy ¶ 4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <tfcreplay.net> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, May 23, 2016
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