The Complainant is SiTV, Inc. d/b/a NUVO TV of Glendale, California, United States of America ("United States"), represented by Don Thornburgh Law Corporation, United States.
The Respondent is Javier F. Rodriguez of Miami, Florida, United States. 2. The Domain Names and Registrar
The disputed domain names and are registered with 1&1 Internet AG (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 1, 2014. On July 2, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 4, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name(s) which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 7, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 7, 2014.
The Center verified that the Complaint together with the amended 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 July 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2014. The Response was filed with the Center on July 30, 2014.1
The Center appointed William R. Towns as the sole panelist in this matter on August 5, 2014. 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 operates a cable network ("nuvo TV") providing English-language programming catering to the Hispanic community. The Complainant's network, initially launched as "Sí TV", was rebranded as "nuvo TV" on July 4, 2011. The Complainant owns two United States trademark registrations for the mark NUVO TV for cable television broadcasting and related services. The registrations were issued by the United States Patent and Trademark Office ("USTPO") on November 26, 2013 (word + design mark) and June 10, 2014 (word mark), respectively. The registrations reflect the Complainant's first use of both marks on July 4, 2011. The Complainant's trademark applications were filed with the USPTO on November 2, 2010 (word mark) and September 9, 2011(word + design mark).
The disputed domain names were registered on July 8, 2008. The relevant WhoIs records maintained by the Registrar when the Complaint was filed listed as the registrant Oneandone Private Registration, a privacy service affiliated with the Registrar. Following the filing of the Complaint, the Registrar disclosed Javier F. Rodriguez as the underlying registrant of the disputed domain names, and upon the Center's invitation the Complaint was amended accordingly by the Complainant.
The disputed domain names resolve to placeholder pages apparently provided by the Registrar. There is no indication in the record that the disputed domain names have ever been used by the Respondent with active websites. 5. Parties' Contentions A. Complainant
The Complainant asserts that the disputed domain names are identical and confusingly similar to its registered NUVO TV marks. According to the Complainant, the Respondent lacks rights or legitimate interests in the disputed domain names for the following reasons: (1) the Respondent is not commonly known by the disputed domain names, and (2) the Respondent has not used or made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. The Complainant submits that the Respondent's registration and use of the disputed domain names is in bad faith. The Complainant observes that it conducts business under the name "nuvo TV" and that the Respondent has made no active use of the disputed domain names. The Complainant concludes from the foregoing that the Respondent registered the disputed domain names primarily for the purpose of selling them to the Complainant or a third-party for an amount in excess of the Respondent's out-of-pocket expenses directly related to the domain names, and that the Respondent is passively holding the disputed domain names for that purpose. B. Respondent
The Respondent asserts that he has used "Nuvo" and "Nuvo TV" as far back as 2005, and claims common law trademark rights in these designations. The Respondent submits that he has made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services, and denies any bad faith. According to the Respondent, he approached the Complainant in late fall 2008 regarding sharing of content involving Nuvo and Nuvo TV. The Respondent alleges that the Complainant since 2008 has had complete contact information for the Respondent, and began to "harass and bully" him in the fall of 2010 to sell his domain names. The Respondent submits that the Complainant had many choices for a name and demonstrated bad faith in trying to take the Respondent's domain names, and alleges bad faith reverse domain name hijacking. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". See Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain names are identical and confusingly similar to the Complainant's NUVO TV marks, in which the Complainant has demonstrated rights. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.
Applying this standard, the disputed domain names are identical and confusingly similar to the Complainant's NUVO TV marks for purposes of paragraph 4(a)(i) of the Policy. It is well settled that the generic Top-Level-Domain element ".com" generally is not taken into consideration when evaluating the identity or confusing similarity between the complainant's mark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel finds that the Complainant has made a prima facie showing. The disputed domain names are identical or confusingly similar to the Complainant's marks, and by all indications the disputed domain names have been passively held by the Respondent since their registration.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent submits that he has established rights or legitimate interests in the disputed domain names based on an assertion of prior common law trademark rights in "Nuvo TV". The Respondent also claims rights or legitimate interests arising from use or demonstrable preparations to use the disputed domain names with a bona fide offering of goods or services.
In the United States, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). That is to say, the mark must be used such that a relevant segment of the public comes to recognize it as a symbol that distinguishes the owner's goods and services from those of others. The Respondent has presented no evidence of such use. The Respondent has proffered email communications circa 2010 with third parties discussing the proposed use of "Nuvo TV" with digital out of home (DOOH) media advertising, but there is no indication of actual use. Similarly, the Respondent has provided email communications circa 2008 regarding possible commercial applications of the "Nuvo TV logo", but there is no evidence of use. Accordingly, the Panel finds that the Respondent has failed to demonstrate common law trademark rights in "Nuvo TV".
Whether these email communications evince demonstrable preparations by the Respondent to use the disputed domain names or a corresponding name in connection with an offering of goods or services, as the Respondent claims, is debatable. The Panel is disinclined to find this an adequate showing, but in any event, in view of the Panel's findings under the following heading, it is unnecessary for the Panel to decide the issue regarding the Respondent's rights or legitimate interests under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is "to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another". M, LP v. Bill Zag and NWLAWS.ORG, supra. However, it is paramount that panels decide cases based on the very limited scope of the Policy. The Policy provides a remedy only in cases where a complainant proves that the disputed domain name has been registered and is being used in bad faith.
After careful consideration of the totality of facts and circumstances in the record, the Panel concludes that the Complainant has not satisfied its burden of demonstrating that the Respondent registered the disputed domain names in bad faith. As a general rule, when a domain name is registered before any trademark rights are established, the registration of the domain name is not in bad faith since the registrant could not have contemplated the complainant's non-existent rights. See, e.g., General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online,WIPO Case No. D2003-0845. In certain situations, bad faith registration can be found, for example, when at the time of the domain name registration the respondent's demonstrable aim was to take advantage of the confusion between the domain name and any potential complainant rights. See ExecuJet Holdings Ltd. v. Air Alpha America, Inc.,WIPO Case No. D2002-0669 and Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc),WIPO Case No. D2003-0320 .
That does not appear to be the case here, given the limited record available to the Panel. As discussed earlier, the disputed domain names were registered by the Respondent in July 2008. The Complainant rebranded under the NUVO TV mark in July 2011. There is no evidence in the record suggesting that the Complainant's intentions were publicly known until the latter half of 2010, and no plausible explanation has been offered as to how the Respondent when registering the disputed domain names in July 2008 could have foreseen this development.
In short, the Complainant has failed to demonstrate that the Respondent more likely than not registered the disputed domain names in July 2008 in order to take advantage of the Complainant's prospective trademark rights in NUVO TV. Nothing in the record reliably suggests that the Respondent could have contemplated the Complainant's non-existent rights when registering the disputed domain names. Consequently, the Respondent's passive holding of the disputed domain names, without more, does not in the Panel's view support a finding of bad faith registration.
Accordingly, for the reasons summarized above, the Panel finds that the Complainant has failed to satisfy the requirements of paragraph 4(a)(iii) of the Policy. 7. Reverse Domain Name Hijacking
Paragraph 1 of the Rules defines reverse domain name hijacking as "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name". To prevail on such a claim, a respondent must show that the complainant knew of the respondent's unassailable rights or legitimate interests in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the complaint in bad faith. Sydney Opera House Trust v. Trilynx Pty. Ltd.,WIPO Case No. D2000-1224 and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151. While the Panel has determined based on the facts and circumstances before it that the Complainant has failed to meet its burden of proof with respect to the third element of the Policy, the Panel is not persuaded from the totality of the record that the Complainant acted in bad faith in invoking the Policy in this case. 8. Decision
For the foregoing reasons, the Complaint is denied.
William R. Towns
Sole Panelist
Date: August 14, 2014
1 The Panel notes parenthetically that the Respondent appears to have forwarded the Annexes to the Response to the Center on July 29, 2014, although the Response itself was not submitted until the following day.
2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter "WIPO Overview 2.0"), paragraph 1.2.
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