The Complainant is Television Food Network G.P., United States of America (“United States”), represented by Ashurst Australia, Australia.
The Respondent is Lane Trewin-Hallett, Australia. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with D Pty Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2019. On July 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 23, 2019, 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. On July 31, 2019 the Center transmitted by email to the Registrar a request to confirm the expiry date of the Disputed Domain Name. On August 1, 2019 the Registrar transmitted by email to the Center its verification response confirming the expiry date of the Disputed Domain Name.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 31, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2019. A late-filed informal Response was received by the Center on August 22, 2019.
The Center appointed John Swinson as the sole panelist in this matter on August 29, 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 Television Food Network G.P, a company incorporated in the United States. The Complainant is a lifestyle and media company and has been operating under the FOOD NETWORK brand since 1996.
The Complainant is the owner of a number of registered trade marks incorporating the words “Food Network” or “Television Food Network”, including Australian registered trade mark number 881667 for filed on April 9, 1999, and registered on November 26, 2007 (the “Trade Mark”).
The Complainant is also the owner of:
- Australian registered trade mark number 881666 for TELEVISION FOOD NETWORK filed on April 9, 1999, and registered on November 26, 2007;
- Australian registered trade mark numbers 938228 and 1129625 for filed on December 18, 2002 / August 14, 2006, and registered on November 26, 2007 / October 19, 2011, respectively;
- Australian registered trade mark number 1041852 for filed on February 14, 2005, and registered on February 24, 2012.
The Complainant is also the owner of a registered domain name incorporating the Trade Mark, being .
The Respondent is Lane Trewin-Hallett, an individual of Australia. The Disputed Domain Name was registered on November 10, 2018. The Disputed Domain Name currently resolves to a website with an image of a burger. The Respondent states that the Respondent intends to use the Disputed Domain Name for a social media/network website based around food and recipes. Before notice of the dispute, the Disputed Domain Name resolved to a website that offered the Disputed Domain Name for sale and featured a video clip titled “bitch lasagna”. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions.
Identical or Confusingly Similar
The Complainant is a leading lifestyle media company and has been using the name FOOD NETWORK since 1996.
The Complainant has engaged in extensive marketing and advertising of its FOOD NETWORK brand since 1996.
The Complainant has been the owner of the Trade Mark since 1999. The Complainant is also the owner in Australia of a registered trade mark for TELEVISION FOOD NETWORK which incorporates the Trade Mark. The Complainant has numerous marks incorporating the Trade Mark in other countries around the world. The Disputed Domain Name is identical to the Trade Mark, as it incorporates the Trade Mark in its entirety.
Rights or Legitimate Interests
The Respondent cannot demonstrate that the Disputed Domain Name is or will be used in connection with a bona fide offering of services. On or around December 3, 2018, the Disputed Domain Name resolved to a website offered for sale containing a video clip titled “bitch lasagna”.
On February 12, 2019, the Complainant’s lawyers wrote to the Respondent informing them that the registration of the Disputed Domain Name was not authorised by the Complainant and was misleading and deceptive and likely to cause confusion. The Respondent then removed the video clip from the website at the Disputed Domain Name. The Respondent claimed that the Disputed Domain Name was being used for a project under development, but offered to sell the Disputed Domain Name for a fee.
As at July 3, 2019, the Disputed Domain Name resolved to a website containing a graphic of a burger. The Disputed Domain Name has never been used for any legitimate purpose since its registration.
The Respondent is not a licensee of the Trade Mark.
It is inconceivable that the Respondent was not aware of the Complainant’s rights and reputation in the FOOD NETWORK name and brand, the Trade Mark and the Food Network Website. Even if the Respondent was not so aware, searches of the Australian Trade Marks Register or an Internet search would have revealed the Complainant’s rights.
There is no evidence that the Respondent is commonly known by the Disputed Domain Name, and even if there was it would only be the result of infringement. As far as the Complainant is aware, the Respondent does not have any registered trade marks or applications or company or business names corresponding to the Disputed Domain Name.
The Respondent is making illegitimate use of the Disputed Domain Name for the purpose of commercial gain by creating a likelihood of confusion with or to otherwise target the FOOD NETWORK name and brand, the Trade Mark and the Food Network Website and/or for the purpose of disrupting the Complainant’s business.
A consumer looking for information on the Complainant’s services would be drawn to a website using the Disputed Domain Name on the assumption it is affiliated with or endorsed by the Complainant. The Respondent’s primary motivation was to monetise the registration by selling it to the Complainant. In an email dated June 2, 2019, the Respondent offered to sell the Disputed Domain Name to the Complainant for 1,000,000 USD.
Registered or Used in Bad Faith
The Disputed Domain Name was registered and used in bad faith in order to extract financial payment from the Complainant. The Respondent’s offer to sell the Disputed Domain Name to the Respondent for 1,000,000 USD is evidence of registration and use in bad faith in accordance with paragraph 4(b)(i) of the Policy.
The Complainant does not have documented evidence of the Respondent’s out-of-pocket costs directly related to the purchase of the Disputed Domain Name. However, the cost to register a “.” domain as at July 4, 2019 is around AUD 11.95 per year.
Other factors supporting the Respondent’s bad faith registration are:
- the Respondent does not conduct any legitimate commercial or noncommercial business activity in Australia that relates to the name “Food Network” and it is highly implausible the Respondent had any reason to legitimately register the Disputed Domain Name;
- the Respondent has no rights or interests in the Disputed Domain Name;
when applying to register the Disputed Domain Name, the Respondent was or should have been aware that it would be violating the Complainant’s rights and would be likely to mislead or confuse consumers. Even if the Respondent was not aware, the Respondent should have taken reasonable steps to ensure it was not registering a domain name which would violate the rights of another party. A simple search of the Internet or the Australian Trade Marks Register would have revealed the Complainant’s rights;
- the words “Food Network” are identical to the Trade Mark and brand used to identify the Complainant’s services and designed to attract consumers by creating a likelihood of confusion; and
- the Respondent is passively holding the Disputed Domain Name and it has never been used for any legitimate purpose. The lack of legitimate good faith use demonstrates bad faith. B. Respondent
The Respondent makes the following submissions.
The Respondent was not aware of the Complainant’s brand at the time of purchasing the Disputed Domain Name.
The Respondent’s primary motivation for purchasing the Disputed Domain Name was not to use the Complainant’s brand. The Complainant has not provided evidence that this was the Respondent’s motivation. The website at the Disputed Domain Name never showed any copyrighted material related to the Complainant and there was never any advertising or content on the website that would indicate the Respondent was trying to imitate, target or was otherwise affiliated with the Complainant. The video clip “bitch lasagna” that was on the website at the Disputed Domain Name was removed.
The Respondent registered the Disputed Domain Name to use it in a social media/network website based around food and recipes. The project is in its infancy, but the site would allow users to share recipes and collaborate with other users. The name “Food Network” is a generic term.
None of the Complainant’s trade mark registrations relate to social networks/social media.
Selling the Disputed Domain Name was never the Respondent’s primary intention. The Complainant asked for further information on the site or a dollar amount. The Respondent replied with a price, which the Respondent was willing to negotiate on. 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 name, 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 or has subsequently been used in bad faith.
The onus of proving these elements is on the Complainant. A. Procedural Issues – Informal Response
On August 22, 2019, the Respondent sent an informal email communication to the Center which contained a document that appears to have been prepared by the Respondent. This document does not constitute a formal Response. The document does not fully address the elements of the Policy or contain the required certification (see paragraph 5(viii) of the Policy). Also, the document was submitted after the due date to file a Response. Despite this, the Panel has taken this document into account in making its decision.
The Respondent’s failure to file a formal Response does not automatically result in a decision in favor of the Complainant (see Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyP,WIPO Case No. D2013-2059). B. 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 name, trade mark or service mark in which the Complainant has rights.
The Disputed Domain Name incorporates the entirety of the word elements of the Trade Mark, with no additional elements. The generic Top-Level Domain “.com” and the country code Top-Level Domain “.au” are disregarded under the first element of the Policy (see section 1.2 of the auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”)).
The Trade Mark is a figurative mark. The question of confusing similarity or identity is therefore to be judged objectively against the dominant textual elements of the Trade Mark, rather than the stylised or design elements (see section 1.11 of auDA auDRP Overview 1.0). Some Panels have found that “this is so only where the dominant textual elements are sufficiently distinctive” (Cambridge Nutritional Foods Limited and Cambridge Manufacturing Company Limited v. Cambridge Diet Pty Ltd, WIPO Case No. DAU2010-0021, citing International Driver Training, Inc. v. Web Integrations, LLC And Comedy Driving Inc.,WIPO Case No. D2009-0129, and Brisbane City Council v. Warren Bolton Consulting Pty Ltd, WIPO Case No. D2001-0047). By contrast, other panels have found that the (potentially) descriptive nature of a trade mark is not relevant to the first element of the Policy (see Lance John Picton v. KK Factory Seconds Online / Dean James Mackin,WIPO Case No. DAU2007-0005).
Section 1.11 of the auDA auDRP Overview 1.0 states that a panel may find that a complainant has no trade mark rights by virtue of its registration where the entire textual element of a figurative trade mark is disclaimed. This is what occurred in Cambridge Nutritional Foods Limited and Cambridge Manufacturing Company Limited v. Cambridge Diet Pty Ltd, WIPO Case No. DAU2010-0021.
In this case, the words “Food Network” have not been disclaimed in the Trade Mark. Despite this, the nature of the Trade Mark may still be relevant to determining whether the textual elements are sufficiently dominant - “the more distinctive or particular the textual elements of the trade mark, the greater the likelihood of it being identical or confusingly similar” (see Borges, S.A., Tanio, S.A.U. v. James English,WIPO Case No. D2007-0477). The words “Food Network” are prominently displayed over a plain circle device in the Trade Mark. In many of the Complainant’s trade marks, no other text appears together with that device. The Panel considers that the words “Food Network” are the dominant element of the Trade Mark.
The Complainant has provided evidence of use of the Trade Mark in Australia and elsewhere. The Panel considers that the Complainant has established that the words “Food Network” have, through use, become distinctive of its services. In this respect, the Panel considers that this case can be distinguished from, for example, Meat and Livestock Commission v. David Pearce aka OTC / The Recipe for BSE,WIPO Case No. D2003-0645. In that case, the Panel found that the logo trade mark BRITISH MEAT had not become distinctive of the complainant.
The Disputed Domain Name is identical to the Trade Mark. The Complainant is successful on the first element of the Policy.
The Panel notes that the Complainant’s trade marks have been the subject of numerous trade mark proceedings and disputes with a third party in Australia, including one case in the Full Federal Court of Australia (Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58). The Complainant did not bring these to the attention of the Panel. The Panel has not considered these decisions in detail but on a brief review these do not affect the issues discussed above. C. 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 the Complainant has made out a prima facie case. This finding is based on the following:
- the Respondent is not using (and as discussed below, there is insufficient evidence that the Respondent has demonstrable preparations to use) the Disputed Domain Name in connection with a bona fide offering of goods or services. The Complainant’s lawyers first wrote to the Respondent informing them that the registration of the Disputed Domain Name was not authorised by the Complainant on February 12, 2019. This is notice of the subject matter of the dispute (TrueLocal Inc., Geosign Technologies Inc. and True Local Limited v. News Interactive Pty Limited, WIPO Case No. DAU2006-0003). Accordingly, the Respondent is required to demonstrate a bona fide use of, or demonstrable preparations to relevantly use, the Disputed Domain Name before February 12, 2019. The Complainant has provided evidence (which the Respondent acknowledges) that, prior to receiving the relevant notice, the Disputed Domain Name resolved to a website offered for sale and featuring a video clip. Paragraph 4(c)(i) of the Policy states that under certain circumstances “an offering of domain names that it has acquired for the purposes of selling, renting or otherwise transferring” is not a bona fide offering by a respondent for this purpose (see section 2.1A of auDA auDRP Overview 1.0);
- the Panel accepts the Complainant’s submissions that it has not authorised, licensed or otherwise given the Respondent permission to use the Trade Mark in the Disputed Domain Name;
- there is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or has registered or common law trade mark rights in relation to this name;
- the Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the name or Trade Mark. The Disputed Domain Name is identical to the Trade Mark. Domain names that are identical to a complainant’s trade mark carry a high risk of implied affiliation (see section 2.5.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), which the Panel notes can inform cases under the Policy). The Panel accepts the Complainant’s submission that the use of the Disputed Domain Name would create an impression of an association or affiliation with the Complainant. As noted above, the Complainant has also provided evidence that the Disputed Domain Name resolved to a website offered for sale and more recently to a website containing a graphic of a burger. This is not noncommercial or fair use of the Disputed Domain Name.
The Respondent submits that the Respondent registered the Disputed Domain Name to use it in a social media/network website based around food and recipes and because the name “Food Network” is a generic term. The Panel acknowledges that holding domain names consisting of dictionary words or common phrases can be bona fide under the Policy. The Panel is mindful that “Food Network” is descriptive and comprises common dictionary words. This provides a potentially stronger basis for a finding in favour of the Respondent (see Lance John Picton v. KK Factory Seconds Online / Dean James Mackin,WIPO Case No. DAU2007-0005). However, the Respondent cannot rely solely on the fact the Disputed Domain Name is composed of dictionary words to ground the Respondent’s claim to rights or legitimate interests in it (see section 2.2 of auDA auDRP Overview 1.0).
In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trade mark rights. The Respondent had the opportunity to provide such evidence of preparations to use the Disputed Domain Name in connection with a social media/network based website for food and recipes, but did not do so beyond the self-serving and conclusory statements in the Response. The Respondent has not provided any evidence of business plans or documents that reference a “Food Network”.
The Panel acknowledges that just under a year has elapsed from when the Disputed Domain Name was registered and that business plans and operations can take time to develop. However, if not independently verifiable by the Panel, preparations to use a domain name in connection with a bona fide offering of goods or services cannot be merely self-serving statements but should be inherently credible and supported by relevant pre-complaint evidence (see section 2.2 of WIPO Overview 3.0). The Respondent has not provided any documentary evidence to substantiate these assertions.
Furthermore, the Complainant has proved that despite its descriptiveness, the Trade Mark has a strong reputation and there is a strong likelihood of confusion between it and the Disputed Domain Name. As discussed in respect of the third element below, the Panel finds that it is more likely than not that the Respondent was aware of the Complainant’s rights when registering the Disputed Domain Name.
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. D. Registered or Subsequently Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered or used the Disputed Domain Name in bad faith.
Paragraph 4(b)(i) of the Policy states that evidence of the registration and use of a domain name in bad faith includes 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 another person for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name.
Panels have drawn a distinction between unsolicited offers to transfer and offers that are solicited by the complainant. In the latter case, a consequential offer by the respondent to transfer the domain name is generally considered insufficient, of itself, to demonstrate bad faith on the part of the respondent (see section 3.1A of auDA auDRP Overview 1.0). The Panel notes that the Respondent’s offer to sell the Disputed Domain Name for 1,000,000 USD was in response to the Complainant’s enquiry requesting further information about the Respondent’s project or a dollar amount. However, the Complainant first wrote to the Respondent informing the Respondent that the registration of the Disputed Domain Name was not authorised by the Complainant on February 12, 2019 (the “First Notice”). The First Notice did not solicit an offer from the Respondent and requested that the Respondent transfer the Disputed Domain Name to the Complainant. The Respondent replied to the First Notice asking “What is the highest amount your client is willing to accept”.
The Panel considers that these circumstances and the following additional facts support a finding that the Respondent registered the Disputed Domain Name with the intention of selling it to the Complainant:
- the Disputed Domain Name wholly incorporates and is identical to the Trade Mark;
- the Respondent has not used the Disputed Domain Name for any purpose (other than to offer it for sale and show a video clip titled “bitch lasagna” and subsequently, only after receiving the First Notice, to show a graphic of a burger) and has not provided credible evidence for registering the Disputed Domain Name;
- the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name (see AW Faber-Castell (Aust) Pty Ltd. v. Pen City Pty Ltd. / Atf Diblasi Jones Unit Trust,WIPO Case No. DAU2013-0018);
- the nature of the Respondent’s correspondence (see section 3.1A of auDA auDRP Overview 1.0), such as the request for the “highest amount” the Complainant was willing to pay;
- the Panel accepts the Complainant’s submission that it may be readily inferred that 1,000,000 USD is well in excess of the Respondent’s out-of-pocket costs directly related to the Disputed Domain Name.
The Respondent states that the Respondent registered the Disputed Domain Name to use it in a social media/network website based around food and recipes. The Respondent submits that “Food Network” is a generic term and that the Respondent was not aware of the Complainant or the Trade Mark at the time of registration.
The Trade Mark and the Complainant are well-known internationally, having been in operation under the FOOD NETWORK brand since 1996. The Complainant’s registration of the Trade Mark also predates the registration of the Disputed Domain Name by more than 10 years and the Complainant has used a registered domain name incorporating the Trade Mark since 2002, being . Although the Panel has considered the Respondent’s contentions, the Panel considers that it is more likely than not that the Respondent was aware of the Trade Mark or the Complainant at the time of registration.
The Panel finds that the Complainant has satisfied the requirements specified in paragraph 4(b)(i) of the Policy.
Accordingly, the Panel finds that the Complainant has established the third requirement under the Policy. 7. Decision
For all 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: September 12, 2019
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