CBS Broadcasting Inc. v. Domain Administrator / Site Matrix, LLC
Claim Number: FA1912001874037
Complainant is CBS Broadcasting Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Domain Administrator / Site Matrix, LLC (“Respondent”), Puerto Rico.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwcbsandyou.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 5, 2019; the Forum received payment on December 5, 2019.
On December 6, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <wwwcbsandyou.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 December 10, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 2019 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@wwwcbsandyou.com. Also on December 10, 2019, 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 January 2, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <wwwcbsandyou.com> domain name is confusingly similar to Complainant’s CBS mark.
2. Respondent does not have any rights or legitimate interests in the <wwwcbsandyou.com> domain name.
3. Respondent registered and uses the <wwwcbsandyou.com> domain name in bad faith.
B. Respondent failed to file a Response in this proceeding.
Complainant is a global leader in news, sports, and entertainment programming. Complainant holds a registration for the CBS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 852,481, registered July 9, 1968).
Respondent registered the <wwwcbsandyou.com> domain name on Aug. 24, 2018, and uses it to divert Internet users to Respondent’s website, to profit from click-through fees, and to offer to sell the domain name for more than out-of-pocket costs.
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(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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel finds that Complainant has established rights in the CBS mark for the purposes of Policy ¶ 4(a)(i) based on registration of the mark with the USPTO. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Respondent’s <wwwcbsandyou.com> domain name includes the CBS mark, and adds “www,” the generic terms “andyou,” and the “.com” generic top-level domain (“gTLD”). These changes do not distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also Discover Financial Services v. Milen Radumilo, FA 1784143 (Forum June 1, 2018) (“The disputed domain name is confusingly similar to the DISCOVER mark as it contains the mark in its entirety, adding a hyphen, the prefix “www”, the descriptive term “card”, as well as the gTLD ‘.com.’”). Accordingly, the Panel finds that Respondent’s <wwwcbsandyou.com> domain name is confusingly similar to Complainant’s CBS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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 an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent fails to use the <wwwcbsandyou.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, as Respondent uses the disputed domain name as a “link farm,” which displays links to services not affiliated with Complainant. Displaying hyperlinks for commercial gain via a disputed domain name is not a use indicative of a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Bloomberg Finance L.P. v. Syed Hussain / IBN7 Media Group, FA 1721384 (Forum Apr. 26, 2017) (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). Complainant provides screenshots of the website at the disputed domain name which displays hyperlinks. The Panel therefore finds that Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus has no rights under Policy ¶¶ 4(c)(i) or (iii).
Complainant asserts that Respondent also lacks rights or legitimate interests in the <wwwcbsandyou.com> domain name because Respondent makes a public offer to sell the disputed domain name for more than out-of-pocket costs. A general offer to sell a disputed domain name can show a lack of rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Complainant provides a screenshot of a webpage that indicates that the disputed domain name is for sale for $463. The Panel finds that this further evidence that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <wwwcbsandyou.com> domain name in bad faith due to Respondent’s offer to sell the disputed domain name for more than out-of-pocket costs. An offer to sell a disputed domain name for more than out-of-pocket costs can show bad faith registration and use per Policy ¶ 4(b)(i). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs). Accordingly, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).
Complainant contends that Respondent registered and uses the <wwwcbsandyou.com> domain name in bad faith as Respondent has a history of cybersquatting and has previous adverse UDRP decisions against it. A history of prior adverse UDRP decisions can show bad faith registration and use under Policy ¶ 4(b)(ii). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Complainant cites to two adverse UDRP decisions and provides a list of domain names owned by Respondent, which Complainant argues are based on preexisting trademarks. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(ii).
Complainant also argues that Respondent registered and uses the <wwwcbsandyou.com> domain name in bad faith, as Respondent uses the disputed domain name to attract Internet users to the disputed domain name for commercial gain by hosting sponsored links. The use of a disputed domain name to display links related to or unrelated to a complainant for commercial gain can show bad faith registration and use per Policy ¶ 4(b)(iv). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Accordingly, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwcbsandyou.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 3, 2020
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