The Complainant is Scripps Networks, LLC of Knoxville, Tennessee, United States of America, represented by Frost Brown Todd LLC, United States of America.
The Respondent is Isaac Goldstein of Hong Kong, SAR of the People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2010. On October 6, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On October 6, 2010, eNom 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 October 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2010.
The Center appointed James Bridgeman as the sole panelist in this matter on November 3, 2010. 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 based in the United States of America and is engaged in the business of providing television and other entertainment services via other media such as the Internet and related products.
The Complainant is the registered owner of the following United States trademark registrations:
- HGTV & Design, registration number 2205702, registered on November 24, 1998 for “cable television broadcasting services”;
- HGTV, registration number 3158828, registered on October 17, 2006 for “cable television broadcasting services”;
- HGTV, registration number 2405267 registered on November 21, 2000 for “printed materials and publications, namely, magazines and books on the subjects of television programs and videos; gardening and landscaping; cooking and entertaining; crafts and hobbies; sewing and quilting; furniture and antiques; interior design and decorating; home building, improvement, repair and renovation; and similar topics”;
- HGTV, registration number 2378758 registered on August 22, 2000 for “pre-recorded videocassettes, pre-recorded video disks, CD-ROMs, and pre-recorded audio cassettes featuring information about gardening and landscaping; crafts and hobbies; sewing and quilting; culinary arts, cooking and entertaining; auctions, furniture, antiques and collectibles; interior design and decorating; architecture and home design, building, improvement, repair and renovation; and similar subjects”;
- HGTV & Design, registration number 2410013 registered on December 5, 2000 for “clothing, namely, shirts, sweatshirts, t-shirts, sweaters, jackets, coats, hats, caps, scarves, gloves, bathrobes, and cloth baby bibs”;
- HGTV HOME & GARDEN TELEVISION & Design, registration number 1954686, registered on February 6, 1996 for “ cable television broadcasting services”;
- HGTV HOME & GARDEN TELEVISION & Design, registration number 2484138, registered on September 4, 2001 for “television programming services”;
- HGTV PRO, registration number 3336010 registered on November 13, 2007 for “providing information via a global computer information network in the fields of home building, improvement, repair and renovation; providing information via a global computer information network in the field of furniture and antique restoration”;
- HGTV VILLAGE, registration number 2508554, registered on November 20, 2001 for “providing information via a global computer information network in the fields of news and weather, gardening and landscaping; crafts and hobbies; sewing and quilting; furniture and antiques; interior design and decoration”;
- HGTV DESIGN STAR, registration number 3435671, registered on May 27 2008 for “entertainment services, namely, an on-going audio and visual program distributed over television, satellite, wireless, audio and video media, fiber optics, cable and a global computer network in the fields of interior design and decorating, architecture and home design”;
- HGTV DREAM HOME GIVEAWAY, registration number 2777072, registered on October 28, 2003, for “promoting cable television broadcasting through sweepstakes and contests”;
- HGTV GREEN HOME GIVEAWAY, registration number 3561797, registered on January 13, 2009 for “entertainment services in the nature of conducting a sweepstakes”;
- HGTV ON DEMAND, registration number 2854958, registered on June 15, 2004, for “entertainment services, namely, the production of live and on-demand television programs, distributed over television, satellite, wireless, audio and video media, fiber optics, cable and a global computer network”;
- HGTV-HD, registration number 3319952, registered on October 23, 2007 for “cable television broadcasting services”; and
- HGTV-HD, registration number 3319954, registered on October 17, 2006 for “distribution of television programs for others; entertainment services, namely, providing television programs in the fields of gardening and landscaping, crafts and hobbies, sewing and quilting, entertaining auctions, furniture, antiques and collectibles, interior design and decorating, architecture and home design, building, improvement, repair and improvement, repair and renovation, and similar subjects in the fields of homes and gardens via television, global computer networks, wireless global computer networks, cable, satellite, and fiber optics; audio-visual programming services, namely, television programming”.
There is no information available about the Respondent other than that provided in the Complaint and the registration details on the WhoIs. The disputed domain name is registered in the name of the Respondent. The disputed domain name was registered on July 20, 2010. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is identical to the HGTV trademark and service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interest in the disputed domain name and that the disputed domain name was registered and is being used in bad faith. The Complainant submits that it has rights in the HGTV trademark through its above-listed USPTO trademark registrations and at common law. The Complainant has provided copies of printouts from the USPTO’s Trademark Electronic Search System as evidence of its ownership of the trademark registrations.
The Complainant further submits that the abovementioned registered trademarks numbered 1954686, 2205702, 237858, 2405267, 2410013, 2484138 and 2777072 are incontestable, which, the Complainant submits is conclusive evidence of its validity under 15 U.S.C. § 1115(b). The Complainant submits that the above-listed trademark registrations are prima facie evidence of the Complainant’s exclusive right to use the registered trademarks in connection with the goods and services for which they are registered.
The Complainant also relies on its common law rights in the HGTV trademark established through its extensive use, advertisement and promotion of the HGTV mark in the United States primarily in connection with television services, print media and over the Internet for more than ten years.
The Complainant submits that in 2009 alone the Complainant expended more than fifteen million dollars on the advertisement, marketing, promotion of the Complainant’s products and services that are supplied under the HGTV mark.
The Complainant submits that it has an established reputation and goodwill in the use of the HGTV mark though it’s well known television programs such as House Hunters, Designed to Sell and Colour Splash.
Since 1996, the Complainant has owned and used the gTLD domain name as the address for its website and customers can watch video clips, order software products, read articles, contribute to discussions about home and garden via message boards, access newsletter subscription services and perform numerous other activities through the Complainant’s website.
The Complainant submits that the disputed domain name was registered on July 20, 2010 which was the first date on which the “.co” ccTLD domain names became available to the general public. The Complainant submits that because of the similarity between the “.co“ ccTLD extension and the “.com“ domain name extension, the general public are likely to associate a “.co“ domain name with a gTLD “.com“ extension rather than as the ccTLD domain for Colombia. In this regard the Complainant refers to the fact that certain registrars were marketing the “.co“ domain name on the basis of its similarity with the more established “.com“ gTLD domain.
The Complainant submits that the Respondent registered the disputed domain name in an effort to capitalise on the recognition of the HGTV mark by those seeking information on the Complainant’s products. The Complainant has furnished printouts of the website to which the disputed domain name resolves which demonstrates that visitors to the Respondent’s website are offered links to third party websites.
The Complainant submits that the Respondent is using the disputed domain name and therefore the Complainant’s identical HGTV trademark to generate “pay per click” revenue and submits that such use amounts to a bad faith use of the domain name by the Respondent. Citing the decision of the panel in McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353, the Complainant submits that such use amounts to a “classic illustration of the conduct condemned by paragraph 4(b)(iv) of the Policy”.
The Complainant submits that the disputed domain name incorporates the Complainant’s HGTV mark in its entirety and citing the decision of the panel in Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512 and Wal-Mart Stores, Inc. v. Richard McLeod d.b/a For Sale,WIPO Case No. D2000-0662 submits that therefore “it is confusingly similar to that mark despite the addition of other words”.
The Complainant submits that the use of the ”.co“ ccTLD extension increases the ability of the Respondent to profit from the resulting confused and misdirected traffic because of the similarity between the disputed domain name and the Complainant’s own domain name. The Complainant submits that it is not uncommon for consumers to type quickly and hit the return key before finishing the spelling of a domain name. Given the Complainant’s prominence in the field of home and garden products and services, the choice of this domain name was clearly done with the intention to trade off and infringe the Complainant’s HGTV marks.
The Complainant submits that the Respondent is using the domain name to intentionally attract, for commercial gain, users to a website by creating confusion with the Complainant’s HGTV mark and such use is evidence of bad faith on the part of the Respondent.
The Complainant submits that the Respondent has no legitimate interest in the disputed domain name. The Complainant submits that the Respondent is neither the licensee of, nor otherwise currently affiliated with the Complainant. The Respondent’s name does not include the term “hgtv”. The Respondent has no contractual relationship with the Complainant. It can be seen from WhoIs search results submitted in an annex to the Complaint that the Respondent appears to be in the business of registering domain names in bulk. The Complainant has furnished evidence that the Respondent owns about 4,642 other domain names and the Respondent’s email address is associated with 2,298 other domain names.
Citing the decision of the panel in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492 the Complainant submits that when a domain name is obviously connected with a complainant and its products, as in the present case, its very use by a registrant with no connection with the complainant suggests “opportunistic bad faith”.
The Complainant submits that so far this year, three panel decisions have ordered domain names registered to the Respondent to be transferred to the respective complainants viz. ChemRite CoPac, Inc. v. Isaac Goldstein, WIPO Case No. D2010-0279; General Motors LLC v. Isaac Goldstein, unlisted media, WIPO Case No. D2010-0450; and L.A. Fitness Internationa,l LLC v. Isaac Goldstein, WIPO Case No. DCO2010-0007. The Complainant submits that in each of these cases the Respondent engaged in similar activities to the present case i.e. registering domain names incorporating the complainant’s exact mark and using the contested domain name to either generate “pay per click” income in bad faith or passively holding the contested domain names in bad faith. Citing the decision of the panel in L’Oreal v. Rampe Purda/Privacy--P, WIPO Case No. D2010-0870 the Complainant submits that such conduct amounts to abusive behaviour and the pattern of such abusive behaviour demonstrated by the Complainant clearly amounts to bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in respect of the disputed domain name to obtain an order that a domain name should be cancelled or transferred:
(1) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has satisfied this Panel that it has rights in the HGTV trademark through its above-listed portfolio of United States trademark registrations and the reputation and goodwill that it has established by using the mark in connection with the provision products and entertainment services in various media particularly on television and over the Internet for more than 10 years.
This Panel finds that the disputed domain name is identical to the Complainant’s HGTV trademark. It is well established under the Policy that the domain extension, in this case the ccTLD ”.co”, may be ignored when making the comparison between the disputed domain name and the mark in which the Complainant claims rights.
The Complainant has therefore satisfied the first element of the test in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name. The Respondent’s name does not include the term “hgtv”. The information about the Respondent’s use of the disputed domain name i.e. the printouts of the Respondent’s website to which the disputed domain name resolves shows that the disputed domain name resolves to a page providing links to third party websites. It appears that the Respondent is engaged in the business of earning “pay per click” revenue from the website. There is no indication that the Respondent is engaged in any other business. This Panel finds that such use does not of itself give the Respondent any rights or legitimate interest in the disputed domain name.
The Complainant has made out a prima facie case that it has exclusive rights, certainly in the United States to use the HGTV trademark in connection with entertainment services. Conscious that according to the WhoIs information the Respondent is based in Hong Kong, SAR of China and not in the United States, this Panel nonetheless notes that the Respondent has no contractual relationship with the Complainant and is neither the licensee of, nor otherwise currently affiliated with the Complainant.
It is well established under the Policy that when a complainant makes out a prima facie case that the respondent has no rights or legitimate interest in the disputed domain name, the burden of rebuttal falls to the respondent.
In the present case and in the absence of any Response or other communication from the Respondent, this Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent has failed to discharge the burden of rebuttal. In the circumstances this Panel finds on the balance of probabilities that the Respondent has no rights or legitimate interests in the disputed domain name and the Complainant has therefore succeeded in satisfying the second element of the test in paragraph 4(a) of the Policy also. C. Registered and Used in Bad Faith
On the evidence this Panel finds on the balance of probabilities that the Respondent intentionally chose and registered the disputed domain name because it is identical to the Complainant’s HGTV trademark. The Complainant’s trademark is a distinctive combination of four letters. The combination of letters has no meaning as such but the final two letters may be taken to refer to television which is an important part of the Complainant’s business. It is most improbable that the Respondent made a random choice the letters HGTV. The evidence submitted by the Complainant indicates otherwise. In the year 2010 three panels established under the Policy have found that the Respondent has registered and used domain names in bad faith. This Panel therefore takes the inference that the disputed domain name was consciously chosen by the registrant and registered because it is identical with the Complainant’s trademark and because its registration and use presents an opportunity to take predatory advantage of the Complainant’s reputation and goodwill in the HGTV trademark.
This Panel therefore accepts the Complainant’s submissions and finds on the balance of probabilities that the disputed domain name was registered and is being used by the Respondent to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating confusion with the Complainant’s HGTV mark and this Panel finds that on the balance of probabilities the disputed domain name was registered and is being used by the Respondent in bad faith.
This Panel finds that the Complainant has therefore satisfied the third and final element of the test in paragraph 4(a) of the Policy and entitled to succeed in its application and be granted the reliefs sought. 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.
James Bridgeman
Sole Panelist
Dated: November 18, 2010
Full & Egal Universal Law Academy