DECISION

CNET Networks, Inc. v. (This Domain is For Sale) Joshuathan Investments, Inc.

Claim Number:  FA0305000159545

PARTIES

Complainant is CNET Networks, Inc., San Francisco, CA, USA (“Complainant”) represented by Karen Greenstein of CNET Networks, Inc.  Respondent is (This Domain is For Sale) Joshuathan Investments, Inc., Belize City, BELIZE (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cnetnews.com>, registered with Bulkregister.Com, Inc.

PANEL

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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 29, 2003; the Forum received a hard copy of the Complaint on June 2, 2003.

On May 29, 2003, Bulkregister.Com, Inc. confirmed by e-mail to the Forum that the domain name <cnetnews.com> is registered with Bulkregister.Com, Inc. and that Respondent is the current registrant of the name. Bulkregister.Com, Inc. has verified that Respondent is bound by the Bulkregister.Com, 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 June 2, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 23, 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 @cnetnews.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 July 1, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <cnetnews.com> domain name is confusingly similar to Complainant’s CNET mark.

2. Respondent does not have any rights or legitimate interests in the <cnetnews.com> domain name.

3. Respondent registered and used the <cnetnews.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, CNET Networks, Inc., has been continually using the CNET mark in commerce since April 4, 1995.  Complainant filed for a trademark application for the CNET mark on June 27, 1996, and obtained a registration from the U.S. Patent and Trademark office for the CNET mark (U.S. Reg. No. 2,163,213) on June 9, 1998.  Complainant’s CNET mark is registered on the Principal Register.

Complainant, which has operated its CNET online service since June 1995, launched CNET News in September 1996.  Since the much publicized launch of CNET News, Complainant has invested significant resources into developing and supporting its online news outlets and has received many awards for its reporting. 

Respondent, (This Domain is For Sale) Joshuathan Investments, Inc., registered the <cnetnews.com> domain name on November 11, 1997.  Respondent is linking the disputed domain name to the <Top10Sites.com> domain name, which allows Internet users to perform web searches.  In the lower right corner of the web page associated with the <Top10Sites.com> domain name are the words, “This Domain for Sale.  Click here for Details.”

Complainant attempted to contact Respondent three times to inquire about the price of the domain name.  Respondent, however, never responded to Complainant’s inquiries.  On several prior occasions, Respondent has impeded other trademark holders from using their trademarks in domain names in a similar manner.  See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., D2002-0787 (WIPO Oct. 8, 2002) (finding that Respondent registered the <bmwdealer.com> domain name, incorporating Complainant’s BMW mark.  Respondent did not respond to any correspondence by Complainant); Grolier Incorporated v. (This Domain is For Sale) Joshuathan Investments, Inc., 0227 (CPR Oct. 29, 2002) (finding that Respondent registered the <Grolier.com> domain name, incorporating Complainant’s domain name and trademark.  Respondent did not respond to any correspondence from Complainant); Southwestern Bell Yellow Pages, Inc. v. (This Domain is For Sale) Joshuathan Investments, Inc., D2002-0850 (WIPO Oct. 30, 2002) (Respondent registered the <smartpages.com> domain name, incorporating Complainant’s domain name and mark.  Respondent responded to an email from Complainant’s counsel, but sought $4,100 for the domain name in question and stated that Respondent knew Complainant would prevail in an ICANN proceeding, but would not voluntarily transfer the name).

DISCUSSION

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.

Identical and/or Confusingly Similar

Complainant has established rights in the CNET mark through registration with the U.S. Patent and Trademark Office because Complainant’s filing for registration predates Respondent’s registration of the <cnetnews.com> domain name.  See FDNY Fire Safety Educ. Fund, Inc. v. Roger Miller, FA 145235 (Nat. Arb. Forum March 26, 2003) (finding that Complainant’s rights in the FDNY mark relate back to the date that its successful trademark registration was filed with the U.S. Patent and Trademark Office); see also J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal Register is prima facie proof of continual use of the mark, dating back to the filing date of the application for registration).

Complainant has also established common law rights in the CNET mark based on its continuous use of the mark in commerce since 1995.  See BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the Complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify Complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services); 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).

Respondent’s <cnetnews.com> domain name is confusingly similar to Complainant’s CNET mark.  Respondent’s domain name contains Complainant’s entire CNET mark with the addition of the word “news.”  The word “news” is used as a generic term to describe the type of business that Complainant is engaged in.  Thus, the disputed domain name is not significantly distinguishable from Complainant’s mark for purposes of Policy ¶ 4(a)(i).  See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Christie’s Inc. v. Tiffany’s Jewelry Auction Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name  <christiesauction.com> is confusingly similar to the Complainant's mark since it merely adds the word "auction" used in its generic sense).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied. 

Rights or Legitimate Interests

Complainant has the initial burden of showing that Respondent does not have rights or legitimate interests in the disputed domain name.  Complainant can meet its burden by demonstrating that Respondent’s behavior does not equate to any of the three examples demonstrating rights or legitimate interests in Policy ¶¶ 4(c)(i)-(iii).  In this proceeding, Respondent has failed to submit a response.  In the absence of a response, the Panel accepts all reasonable allegations contained in the Complaint as true.  Further, since Respondent has failed to submit a response, Respondent has failed to show any circumstances that could substantiate its rights or legitimate interests in the <cnetnews.com> domain name.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent is diverting potential consumers looking for CNET news to the <Top10Sites.com> domain name web page, which permits Internet users to perform web searches and purports to offer the disputed domain name for sale.  Respondent’s use of the <cnetnews.com> domain name, purporting to offer the disputed domain name’s registration for sale, does not evidence a legitimate noncommercial or fair use of the domain name.  Thus, Respondent is not using the <cnetnews.com> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is Respondent making a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).  

Respondent is not commonly known by the domain name.  Respondent’s WHOIS information indicates the registrant of the <cnetnews.com> domain name is (This Domain is For Sale) Joshuathan Investments, Inc.  Respondent is not licensed or authorized to use the <cnetnews.com> domain name.  Furthermore, there is no evidence before the Panel to the contrary.  Thus, it is reasonable for the Panel to infer that Policy    ¶ 4(c)(ii) does not apply to Respondent.  See Tercent Inc. v. Lee 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); see also 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).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied. 

Registration and Use in Bad Faith

Respondent is using the <cnetnews.com> domain name to redirect Internet users to a website that purports to offer the disputed domain name for sale.  Respondent has been known in the past to register domain names infringing on well-known trademarks.  Thus, the Panel makes the reasonable inference that Respondent registered the disputed domain name with full knowledge of Complainant’s rights in the CNET mark and it has the intent to sell its registration to Complainant.  Therefore, the uncontested evidence supports the Panel’s finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(i).  See Parfums Christain Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding bad faith where the Respondent’s WHOIS registration information contained the words, “This domain name is for sale”); see also General Elec. Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that the Respondent registered and used the domain name in bad faith by using the domain name to direct users to a general site offering the domain name for sale).

Futhermore, Respondent has registered and uses the <cnetnews.com> domain name in bad faith pursuant to Policy ¶ 4(b)(ii).  Respondent is purporting to offer the disputed domain name for sale, however, it has not responded to Complainant’s inquiries about purchasing the domain name.  Furthermore, Respondent has exhibited a pattern of registering domain names with the intent to prevent other trademark holders from reflecting their marks in domain names.  Thus, the Panel finds that such use constitutes bad faith pursuant to Policy ¶ 4(b)(ii).  See Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where the Respondent engaged in the practice of registering domain names containing the trademarks of others); see also Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ registered trademarks).

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <cnetnews.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  July 14, 2003

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