The Complainant is Cable News Network, Inc. of Atlanta, Georgia, United States of America (“United States”), represented by Winterfeldt IP Group PLLC, United States.
The Respondent is Chowdhury Lokman, Chittagong news network, of Chittagong, Bangladesh. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2018. On November 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 30, 2018, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 24, 2018.
The Center appointed John Swinson as the sole panelist in this matter on January 3, 2019. 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 is Cable News Network, Inc. (commonly known as “CNN”), a 24-hour news and information cable television provider based in the United States. According to the Complaint, the Complainant’s television network launched on June 1, 1980, and currently reaches more than 96.3 million pay-television households and more than 890,000 hotel rooms in the United States. The Complainant has regional headquarters in various countries around the world, and its spin-off networks are broadcast globally.
The Complainant owns a number of registered trade marks for CNN (both word and stylized), including:
- United States registered trade mark number 1597839 for CNN (stylized), filed on October 6, 1989 and registered on May 22, 1990; and
- Bangladesh registered trade mark number 35889 for CNN (stylized), published on September 15, 1999, (the “Trade Mark”).
The Complainant also owns a number of domain names which incorporate the Trade Mark, including , registered on September 22, 1993.
The Respondent did not file a response, and consequently little information is known about the Respondent.
The Disputed Domain Name was registered on August 5, 2013. The website at the Disputed Domain Name appears to be an online news website featuring a logo for “CNN BANGLADESH”, and purporting to be operated by “City News Network BD”. This is inconsistent with the organization listed in the WhoIs details for the Disputed Domain Name, being “Chittagong News Network”. 5. Parties’ Contentions
The Complainant makes the following submissions. A. Complainant
Identical or Confusingly Similar
The Disputed Domain Name fully incorporates and is confusingly similar to the Trade Mark. The only difference between the Disputed Domain Name and the Trade Mark is the addition of the geographical term “Bangladesh”. This addition enhances confusing similarity, as it implies an authorized online source for the Complainant’s services in Bangladesh.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent is not authorized by the Complainant to use the Trade Mark in any way.
The Disputed Domain Name does not reflect the Complainant’s name, Chowdhury Lokman. In response to a cease and desist letter sent by the Complainant, the Respondent claimed that its use of the term “CNN” refers to “Chittagong News Network”, which is the organization listed in the registration details associated with the Disputed Domain Name. However, this claim is intended to hide the Respondent’s efforts to infringe the Complainant’s rights.
The Disputed Domain Name resolves to a website providing content which attempts to compete directly with the news content provided by the Complainant under the Trade Mark. The website contains pay-per-click (“PPC”) advertisements which generate fees for the Respondent. The Respondent is monetizing the Disputed Domain Name by trading on the goodwill and reputation of the Complainant.
The Complainant submits that the website at the Disputed Domain Name is illegitimate for the following reasons:
- The website republishes and rebrands news content that originates elsewhere (such as YouTube).
- The Respondent’s contact and address information is incomplete or false.
- The Respondent changed the name of its organization on the website at the Disputed Domain Name following receipt of a cease and desist letter from the Complainant. In his response to that letter, the Respondent advised the Complainant that “CNN” refers to “Chittagong News Network”. However, at present, the website at the Disputed Domain Name identifies the name of the website operator as being “City News Network BD”.
Registered and Used in Bad Faith
The Respondent’s registration of the Disputed Domain Name has prevented the Complainant from reflecting the Trade Mark along with the geographical term “Bangladesh”, where the Complainant provides services, in a corresponding domain name, which is evidence of bad faith registration and use under paragraph 4(b)(ii) of the Policy. The Respondent’s registration and use of the Disputed Domain Name is part of a pattern of conduct engaged in by the Respondent and his associates, who have registered domain names incorporating trade marks owned by other media organizations (being and ).
The Respondent’s provision of news and information content at the website at the Disputed Domain Name competes with that provided by the Complainant. This activity is disruptive to the Complainant’s business as it diverts Internet users seeking legitimate content provided by the Complainant to the Respondent’s illegitimate business (see paragraph 4(b)(iii) of the Policy). The Respondent is intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion as to the source of the website at the Disputed Domain Name (see paragraph 4(b)(iv) of the Policy). The Respondent’s use of email addresses which incorporate the Trade Mark create further confusion. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.
The Respondent’s failure to file a formal Response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyP,WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s lack of a formal Response. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
Generally, the test for identity or confusing similarity involves a side-by-side comparison of the domain name and the trade mark to assess whether the trade mark is recognizable within the domain name (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In this case, the Respondent has combined the Trade Mark with the geographical term “Bangladesh”. The Panel notes that the Complainant offers its services in this location and that it is possible that an Internet user would believe that the website at the Disputed Domain Name is the Complainant’s official website for Bangladesh (see in this regard the analysis under paragraph C. Registration and Use in Bad Faith). The addition of this geographical term does not prevent a finding of confusing similarity (see WIPO Overview 3.0, section 1.8).
The Panel considers that the Disputed Domain Name is confusingly similar to the Trade Mark. The Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel considers that the Complainant has made out a prima facie case.
The organization associated with the Respondent as listed in the WhoIs details for the Disputed Domain Name is “Chittagong News Network”, which can be abbreviated to “CNN”. At present, the contact details on the website at the Disputed Domain Name refer to an organization named “City News Network BD”, which can also be abbreviated to “CNN”. Further, a “CNN Bangladesh” logo appears on the website at the Disputed Domain Name.
In these circumstances, none of these factors is sufficient to establish that the Respondent is commonly known by “CNN” or “CNN Bangladesh” for the purpose of establishing rights or legitimate interests in the Disputed Domain Name under paragraph 4(c)(ii) of the Policy.
Previous panels have found that a respondent must provide evidence to show that they have been commonly known by a domain name in order to establish a legitimate interest for the purpose of the Policy; a mere assertion is not sufficient (see, e.g., Banco Espírito Santo S.A. v. Bancovic,WIPO Case No. D2004-0890; Compagnie Gervais Danone v. Duxpoint and Alejandro Gomez,WIPO Case No. D2008-1799). The Respondent has not filed a Response and so has provided no such evidence. The details appearing in the WhoIs search and on the website at the Disputed Domain Name are an insufficient basis on which to establish rights or legitimate interests.
Further, the Panel finds that the Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. As submitted by the Complainant, the Respondent is using the Trade Mark in the Disputed Domain Name to offer services which compete with those offered by the Complainant, and using a logo which is very similar to the Complainant’s stylized Trade Mark. This use is not bona fide.
The Respondent had the opportunity to provide evidence of its rights or legitimate interests in the Disputed Domain Name, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Complainant has had registered rights in the Trade Mark since 1990 (and in Bangladesh, where the Respondent is located, since 1999). The Panel accepts that the Complainant has a significant reputation worldwide.
The Respondent registered the Disputed Domain Name in 2013. Given the fame of the Trade Mark, the nature of the Disputed Domain Name, and the content of the website at the Disputed Domain Name (including a “CNN Bangladesh” logo which is similar to the Complainant’s stylized “CNN” Trade Mark, and the use of Gmail email addresses which incorporate the Trade Mark), the Panel considers it highly likely that the Respondent had knowledge of the Complainant and the Trade Mark at the time he registered the Disputed Domain Name. The Respondent likely registered the Disputed Domain Name for the sole purpose of trading off the Complainant’s goodwill and reputation in the Trade Mark. The Respondent is intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion as to the source of the website at the Disputed Domain Name. This is evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
Further, as submitted by the Complainant, the Panel considers it likely that the Respondent is not operating a legitimate news network, but is using the Trade Mark to divert traffic to the website at the Disputed Domain Name and generate advertising revenue. This is further evidence of the Respondent’s bad faith.
In light of the above, and in the absence of a response and any evidence rebutting bad faith registration and use, the Complainant succeeds on the third element of the Policy. 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 Disputed Domain Name be transferred to the Complainant.
John Swinson
Sole Panelist
Date: January 10, 2019
Full & Egal Universal Law Academy