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Generic Top Level Domain Name (gTLD) Decisions |
WV Educational Broadcasting Authority v.
Robert Thompson
Claim
Number: FA0309000196011
Complainant is WV Educational Broadcasting Authority,
Charleston, WV (“Complainant”) represented by Dale Malcomb. Respondent is Robert Thompson, Charleston, WV
(“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wvpbs.org>, registered with Go Daddy
Software, Inc.
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 September 12, 2003;
the Forum received a hard copy of the
Complaint on September 15, 2003.
On
September 15, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum
that the domain name <wvpbs.org> is registered with Go Daddy
Software, Inc. and that Respondent is the current registrant of the name. Go
Daddy Software, Inc. has
verified that Respondent is bound by the Go Daddy
Software, Inc. 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
September 18, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of October 8, 2003 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@wvpbs.org 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
October 16, 2003, 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 <wvpbs.org>
domain name is identical to Complainant’s WVPBS mark.
2. Respondent does not have any rights or
legitimate interests in the <wvpbs.org> domain name.
3. Respondent registered and used the <wvpbs.org>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is a
state agency that is in charge of the broadcast and distribution of Public
Television and Public Radio in the state
of West Virginia. Complainant also sells videotapes, music
CD’s, some related merchandise, and receives donations. Complainant has used the WVPBS service mark
for more than two years. Complainant
uses the WVPBS mark as an ID and header for its television listings in all
newspapers and cable on-air guides statewide.
According
to the record, the <wvpbs.org> domain name was originally
registered by Word and Song Ministries on April 15, 2003. The domain name was used to redirect
Internet users to the <wordandsong.com> website. Complainant contacted Mr. McKnight, the
listed administrative contact for the <wvpbs.org> domain
name, to discuss the domain name but was told that Respondent handled all his
domain names. Complainant contacted
Respondent and offered to purchase the <wvpbs.org> domain name for
the out-of-pocket costs incurred related to the domain name, plus an additional
two or three hundred dollars.
Respondent declined the offer and stated that the domain name could not
be sold for less than $10,000.
Complainant informed Respondent that it could not afford to pay $10,000
for the domain name. Following this
correspondence, Respondent contacted Complainant to announce that Respondent
now owned the <wvpbs.org> domain name and would sell it for
$10,000. The WHOIS information within
the record confirms that Respondent is the current registrant of the <wvpbs.org>
domain name.
Respondent’s <wvpbs.org>
domain name redirects Internet users to a website hosted by <vstore.com>,
which displays the title “West Virginia Philanthropic
Bookstore.” Respondent uses the <wvpbs.org> domain
name to sell books, music CD’s, videos and to accept donations.
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.
Due to
Respondent’s failure to contest the assertions within the Complaint, the Panel
may accept all reasonable assertions as true.
It is reasonable to presume that Complainant has established common law
rights in the WVPBS mark through Complainant’s use of the
mark for the past two
years. Therefore, the Panel may
conclude that Complainant has established rights in the WVPBS mark. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding it appropriate for the Panel to draw adverse inferences from
Respondent’s failure to reply
to the Complaint); see also Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that Complainant’s allegations are true unless
clearly contradicted
by the evidence); see also 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); see also Smart Design LLC v. Hughes, D2000-0993
(WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require
Complainant to demonstrate ‘exclusive rights,’
but only that Complainant has a
bona fide basis for making the Complaint in the first place).
Respondent’s
domain name is identical to Complainant’s mark because the domain name fully
incorporates the WVPBS mark and merely adds
the generic top-level domain “.com”
to the mark. Respondent’s addition of
the “.com” generic top-level domain is insufficient to distinguish the domain
name from Complainant’s mark. See Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s
mark because the generic top-level domain
(gTLD) “.com” after the name
POMELLATO was not relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top level of the domain name such as “.net” or “.com” does
not affect the domain
name for the purpose of determining whether it is
identical or confusingly similar).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Due to
Respondent’s failure to contest the allegations of the Complaint, the Panel may
presume that Respondent lacks rights or legitimate
interests in the <wvpbs.org>
domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no
legitimate interest
in the domain names); see also Canadian
Imperial Bank of Commerce v. D3M Virtual Reality, Inc., AF-0336
(eResolution Sept. 23, 2000) (finding no rights or legitimate interests where
no such right or interest was immediately
apparent to the Panel and Respondent
did not come forward to suggest any right or interest it may have possessed).
Furthermore,
Respondent is using the confusingly similar domain name for commercial benefit
by selling merchandise. The fact that
Respondent did not use the domain name for commercial activity until Respondent
received notification of Complainant’s
rights in the WVPBS mark is evidence
that the domain name is not being used to make a bona fide offering of goods or
services pursuant
to Policy ¶ 4(c)(i) nor for a legitimate noncommercial or
fair use pursuant to Policy ¶ 4(c)(iii).
See MSNBC Cable, LLC v.
Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate
interests in the famous MSNBC mark where Respondent attempted to
profit using
Complainant’s mark by redirecting Internet traffic to its own website); see
also Wells Fargo & Co. v. Nadim, FA 127720 (Nat. Arb. Forum Nov.
29, 2002) (finding that Respondent’s use of Complainant’s WELLS FARGO mark to
redirect Internet
users to a domain name featuring magazine subscriptions was
neither a bona fide offering of goods or services nor a legitimate
noncommercial
or fair use of the domain name).
Also,
Respondent is not authorized or licensed to use or register domain names that
incorporate Complainant’s mark. The
WHOIS information for the disputed domain name does not establish that
Respondent is commonly known by the <wvpbs.org> domain name. Therefore, the Panel concludes that
Respondent lacks rights or legitimate interests in the <wvpbs.org>
domain name pursuant to Policy ¶ 4(c)(ii).
See Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO
Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was
not commonly known by the mark and
never applied for a license or permission
from Complainant to use the trademarked name); see also Tercent, Inc.
v. Yi, FA 139720 (Nat. Arb. 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).
In addition, Respondent attempted to sell the <wvpbs.org> domain name
to Complainant for more than the out-of-pocket costs incurred by
Respondent. Respondent’s attempt to
sell the disputed domain name is evidence that Respondent lacks rights or
legitimate interests in the domain
name.
See Am. Nat’l Red Cross v.
Domains a/k/a Best Domains a/k/a John Barry, FA 143684 (Nat. Arb. Forum
Mar. 4, 2003) (stating that “Respondent’s
lack of rights and legitimate interests in the domain name is further evidenced
by Respondent’s attempt to sell its domain
name registration to Complainant,
the rightful holder of the RED CROSS mark”); see also Mothers Against
Drunk Driving v. Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding
that under the circumstances, Respondent’s apparent willingness to dispose of
its rights in the disputed domain name suggested that it lacked rights
or legitimate interests in the domain name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
The record shows
that the <wvpbs.org> domain name was originally registered by Word
and Song Ministries on April 15, 2003 and that Respondent was the listed
technical
contact. Once Respondent was
informed of Complainant’s interest in the domain name, Respondent registered
the domain name in his own name. The
fact that Respondent registered the domain name after being informed of
Complainant’s interest in the domain name is evidence
that Respondent knew of
Complainant’s rights in the WVPBS mark.
Further evidence of Respondent’s actual or constructive knowledge of
Complainant’s rights is that Complainant’s mark is well known
within
Respondent’s city of residence.
Registration of a domain name, despite knowledge of Complainant’s
rights, is evidence of bad faith registration pursuant to Policy
¶
4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly
known mark at the time
of registration); see also Ty Inc.
v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s
registration and use of an identical and/or confusingly similar domain
name was
in bad faith where Complainant’s BEANIE BABIES mark was famous and Respondent
should have been aware of it).
Furthermore,
Respondent uses the misleading domain name for his own commercial benefit by
redirecting Internet users to a commercial
website. Respondent’s use of the <wvpbs.org> domain name for
commercial gain by selling goods similar to those offered by Complainant is
evidence that the domain name was registered
and is being used in bad faith
pursuant to Policy ¶ 4(b)(iv). See
G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum
Nov. 21, 2002) (finding that Respondent registered and used the domain name in
bad faith pursuant to
Policy ¶ 4(b)(iv) because Respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website);
see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov.
22, 2002) (finding that if Respondent profits from its diversionary use of
Complainant's mark when
the domain name resolves to commercial websites and
Respondent fails to contest the Complaint, it may be concluded that Respondent
is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
In addition,
Respondent’s attempt to sell the <wvpbs.org> domain name for more
than out-of-pocket costs to Complainant is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(i). See
World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000)
(finding that 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); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web
Serv., FA 95685 (Nat. Arb. Forum
Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no
certain price is demanded,
are evidence of bad faith”).
The Panel finds
that Policy ¶ 4(a)(iii) has been 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 <wvpbs.org> domain name be TRANSFERRED
from Respondent to Complainant.
John
J. Upchurch , Panelist
Dated: October 27, 2003
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