The Complainant is NBC Universal Media, LLC of New York, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
The Respondent is Flying Stingrays Ltd, Jim Macallum of Schaffenhausen, Switzerland. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with DNC Holdings, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2012. On August 3, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 6, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 29, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2012.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on September 25, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant's company is a media and entertainment company engaged in the development, production, and marketing of entertainment, news, and information to a global audience.
The Complainant is inter alia the proprietor of a US wordmark NBC registered under number 619,641 on January 17, 1956 for, inter alia, radio and television broadcasting and under number 1,523,273 on February 7, 1989 for inter alia motion picture films. Furthermore, the Complainant holds a Swiss wordmark NBC registered under number 3980/1980 on November 10, 1982 for inter alia video tapes, these marks are hereafter referred to as the “Trademarks”.
The Complainant has submitted the results of a global brand research which concluded that the Trademarks are well-known worldwide as a top global brand and that the Trademarks and variations thereof are registered in more than 65 countries.
The Domain Name has been first registered by a third party on May 30, 2004. At least as early as February 25, 2011, the Domain Name has been registered by Direct Privacy Ltd. The Domain Name has been registered in the name of the Respondent on or before July 23, 2012. The Domain Name directs to a website which features links to websites of competitors of the Complainant and other third parties. Several of these links contain the name "NBC". 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to the Trademarks.
The Complainant also claims that the Respondent has no rights or legitimate interests in the Domain Name. According to the Complainant, the Respondent has no relationship with the Complainant and the Complainant has not authorized the Respondent to use the Trademarks. Furthermore, according to the Complainant, the use of the Domain Name for a parking page which features links to inter alia websites which refer to competitors of the Complainant does not constitute a bona fide offering of goods or services nor is it a legitimate noncommercial or fair use.
Finally, the Complainant asserts that the Domain Name has been registered and is being used in bad faith, because the Respondent intentionally attempts to attract for commercial gain Internet users to its website or other online location, by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and/or online location. According to the Complainant, the Respondent was aware of the Trademarks and by its registration and use of the Domain Name, the Respondent misappropriates the Complainant's goodwill. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has shown that it has rights in the Trademarks.
The element “NBC”, which is identical to the Trademarks, is to be considered the dominant part of the Domain Name, while the word “news” is generic. In the Panel's view, the use of this descriptive word cannot prevent the Domain Name from creating a likehood of confusion with the Domain Name (see Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409, F. Hoffman-La Roche AG v. Rudiger Meissner,WIPO Case No. D2009-1127 and Dr. Ing. h.c. F. Porsche v. Bv berry smits trading co,WIPO Case No. DNL2009-0049).
Therefore, the Panel concludes that the Domain Name is confusingly similar to the Complainant's Trademarks. B. Rights or Legitimate Interests
Once a complainant establishes a prima facie case against a respondent in relation to this element, the burden is on the respondent to provide concrete evidence of its rights or legitimate interests based on paragraph 4(c) of the Policy or other circumstances (Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited,WIPO Case No. D2004-0753).
The Complainant has claimed that the Respondent has no rights or legitimate interests in the Domain Name, because:
(i) there is no relationship between the Complainant and the Respondent,
(ii) the Respondent has not been authorized to use the Trademarks (as a domain name or otherwise),
(iii) the Respondent does not have any noncommercial or fair use reason for the Domain Name, and
(iv) the use of the Domain Name for a website which generates revenue resulting from the web traffic that is diverted to the Domain Name, does not constitute a bona fide offering of goods or services.
Based on the evidence submitted, the Panel accepts the statements under (i) and (ii) to be correct.
The Domain Name resolves to a pay-per-click (PPC) parking page which offers inter alia links containing the name “NBC” which leads to third-party websites, including websites of the Complainant's competitors. It is well established that pages with PPC links trading on the goodwill of a trademark (as may be evidenced by direct or indirect links to competitors, websites or goods) do not constitute a bona fide offering of goods or services, nor do they constitute a legitimate noncommercial or fair use (see mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141; Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304; Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; Champagne Lanson v. Development Services/MailP, Inc.,WIPO Case No. D2006-0006; The Knot, Inc. v. In Knot we Trust LTD,WIPO Case No. D2006-0340; Ustream.TV, Inc. v. Vertical Axis, Inc,WIPO Case No. D2008-0598).
In view of the above, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
Based on the information available, the Panel concludes that between February 25, 2011 and July 23, 2012, the Domain Name has been transferred to the Respondent. As a transfer of a domain name is regarded as a registration of that domain name, the first question to be answered under this heading is whether this registration of the Domain Name was done in bad faith.
The Panel assumes on the basis of the facts that at the time of registration the Respondent was or should have been aware of the Trademarks.
First, the registrations of the Trademarks on which the Complainant relies predate the Domain Name registration by many years. The Trademarks are also registered in Switzerland, the residency of the Respondent.
Secondly, on the basis of the evidence provided, the Panel is satisfied that the Trademarks have a strong reputation and are well-known also in Europe, so that it is very likely that the Respondent has seen or was aware of the Trademarks.
Finally, a simple trademark register search would have informed the Respondent of the existence of the Trademarks, while a Google search on “NBC”, as carried out by the Panel, refers on the first page of the search results to the domain names and , which direct to websites of the Complainant. Therefore, even if the Respondent had not actually been aware of the Complainant’s rights, a small effort on its part would have revealed those rights. If the Respondent has not made that effort, this comes for its account, since that would imply that the Respondent has been willfully blind to the Complainant's rights (see paragraph 3.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
By using the Domain Name for a website displaying commercial links using the Trademarks and leading to the Complainant's competitors' websites, it is likely that the Respondent is attempting to attract Internet users to its website, by creating a likelihood of confusion with the Trademarks as to the source, affiliation, or endorsement of the Respondent’s website, according to paragraph 4(b)(iv) of the Policy.
Therefore, the Panel concludes that the Domain Name has been registered and is being used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Wolter Wefers Bettink
Sole Panelist
Dated: October 4, 2012
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