The British Broadcasting Corporation v.
Aak
Claim
Number: FA0401000227644
Complainant is The British Broadcasting Corporation (“Complainant”),
represented by Douglas A. Rettew, of Finnegan Henderson Farabow Garrett & Dunner L.L.P., 1300 I Street NW, Washington, DC
20005. Respondent is Aak (“Respondent”), P.O. Box 383,
Rawalpindi, Rawalpindi, Pakistan 46000.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwbbcnews.com>, registered with Intercosmos
Media Group, Inc. d/b/a Directnic.Com (hereinafter “Directnic.Com”).
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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on January 16, 2004; the Forum received a hard copy of the
Complaint on January 19, 2004.
On
January 19, 2004, Directnic.Com confirmed by e-mail to the Forum that the
domain name <wwwbbcnews.com> is registered with Directnic.Com and
that Respondent is the current registrant of the name. Directnic.Com has
verified that Respondent is bound by the Directnic.Com registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
January 20, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 9, 2004 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@wwwbbcnews.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted to
the parties a Notification of Respondent Default.
On
February 16, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed John J. Upchurch 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."
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 makes the following assertions:
1. Respondent’s <wwwbbcnews.com>
domain name is confusingly similar to Complainant’s BBC mark.
2. Respondent does not have any rights or
legitimate interests in the <wwwbbcnews.com> domain name.
3. Respondent registered and used the <wwwbbcnews.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, The
British Broadcasting Corporation, is one of the world’s largest international
media companies, employing more than 2,000 staff in 41 bureaus worldwide.
Beginning in 1927, Complainant began using the BBC mark to connotate its
broadcast services, including its news programming services. Complainant’s
three main daily news bulletins are branded “BBC News at One,” “BBC News at
Six” and “BBC News at Ten,” and the BBC News attracts, on average, 42% of the
share of relevant viewers in its market. Additionally, Complainant uses the BBC
mark in connection with its BBC World Service, an international radio service
that reaches 150,000,000 listeners weekly. In its English language transmissions
of the BBC World Service, news bulletins begin and end with the phrase “BBC
News.” Complainant also owns and operates the <bbcnews.com> domain name,
which had an annual budget of 15.4 million in 2003/2004.
Complainant has
obtained numerous registrations for the BBC mark worldwide, including in the
United States (e.g. U.S. Reg. No. 1,556,559) and in the United Kingdom (e.g.
U.K. Reg. No. 1,163,265).
Respondent, Aak,
registered the <wwwbbcnews.com> domain name on December 17, 2002,
without license or permission to use the BBC mark for any purpose. Respondent
uses the disputed domain name to redirect Internet users to the
<abortionistruth.com> domain name, an anti-abortion website which
features graphic images of aborted fetuses. Previously, the domain name
directed users to the <abortionismurder.org> domain name, which contained
similar images and content.
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."
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.
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.
Complainant has established rights in the BBC mark through registration
of the mark with the appropriate governmental authorities worldwide. See
Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption).
Respondent’s
<wwwbbcnews.com> domain
name is confusingly similar to Complainant’s BBC mark. Adding the “www”
prefix to Complainant’s BBC mark does not create any notable distinction from
the mark. Likewise, the addition of the word “News,” which describes many of
the services provided under the BBC mark, does not distinguish the domain name
from Complainant’s mark. See Space Imaging LLC v. Brownwell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s
domain name combines Complainant’s mark with a generic term that has an obvious
relationship to Complainant’s business); see also Dana Corp.
v. $$$ This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov.
19, 2002) (finding Respondent's <wwwdana.com> domain name confusingly
similar to Complainant's registered DANA mark because Complainant's mark
remains the dominant feature).
Accordingly, the
Panel finds that the <wwwbbcnews.com> domain name is confusingly similar to Complainant’s BBC mark under Policy
¶ 4(a)(i).
Respondent has
taken the traditional route of cybersquatters and added the letters “www” to
Complainant’s famous BBC mark, and is using the domain name to direct Internet
users to graphic, anti-abortion webpages. Both Respondent’s use of
Complainant’s mark in a “www” derivative domain name and its use of the domain
name to direct unsuspecting Internet users to politically charged content
operate as evidence that Respondent lacks rights and legitimate interests in
the disputed domain name. See Diners Club Int’l Ltd. v. Domain
Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23,
2003) (holding that Respondent’s <wwwdinersclub.com> domain name, a typosquatted version of
Complainant’s DINERS CLUB mark, was evidence in and of itself that Respondent
lacks rights or legitimate interests in the disputed domain name vis á vis
Complainant); see also Am. Online,
Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000)
(finding that use of Complainant’s mark “as a portal to suck surfers into a
site sponsored by Respondent hardly seems legitimate”).
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<wwwbbcnews.com> domain
name under Policy ¶ 4(a)(ii).
Respondent is attempting to use the disputed domain name to ensnare
Internet users seeking Complainant’s <bbcnews.com> domain name into
viewing a graphic, anti-aboriton website. Such use may confuse Internet users
into believing that the content they view is sponsored or endorsed by
Complainant, tarnishing Complainant’s mark. Particularly because Respondent
chose the disputed domain name because of its confusing similarity to
Complainant’s famous mark, such registration and use is in bad faith. See
Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the
<wwwdewalt.com> domain name was registered to “ensnare those individuals
who forget to type the period after the “www” portion of [a] web-address,”
evidence that the domain name was registered and used in bad faith); see
also Journal Gazette Co. v. Domain For Sale Inc., FA 122202 (Nat. Arb.
Forum Oct. 9, 2002) (“Respondent chose the domain name to increase the traffic
flowing to the <abortionismurder.org> and <thetruthpage.com>
websites,” which tarnished Complainant’s mark, evidence that the domain name
was registered in bad faith).
The Panel thus
finds that Respondent registered and used the <wwwbbcnews.com> domain name in bad faith, and that Policy ¶
4(a)(iii) is satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <wwwbbcnews.com> domain name be TRANSFERRED
from Respondent to Complainant.
John
J. Upchurch , Panelist
Dated: March 1, 2004
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