Complainant is Weigel Broadcasting Co. of Chicago, Illinois, United States of America ("United States" or "U.S."), represented by Neal, Gerber & Eisenberg, United States.
Respondent is Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States / Hot Media, Inc. of Kirkland, Washington, United States, internally represented. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with eNom (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 13, 2015. On May 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 15, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 18, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 22, 2015.
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 Respondent of the Complaint, and the proceedings commenced June 1, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response June 21, 2015. The Response was filed with the Center June 19, 2015.
The dispute was suspended on June 25, 2015 and reinstituted July 8, 2015. Complainant and Respondent submitted Supplemental Filings on July 9, 2015 and July 14, 2015, respectively.
The Center appointed Michael A. Albert, Michelle Brownlee and William R. Towns as panelists in this matter on July 27, 2015. The Panel finds that it was properly constituted. Each member of 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
Complainant owns the federally-registered trademark METV in the United States, which it uses in connection with the distribution of audio and video content through television broadcasting both over-the-air and over cable and satellite networks. The Domain Name was registered on March 5, 2005. Respondent
acquired the Domain Name on December 14, 2006, allegedly with the intent to use it for a website offering proprietary social media tools by which individuals could own, program, and share a personal video-centric website (the "ME.TV Network"). Thereafter, however, the Domain Name fell into disuse. 5. Parties' Contentions A. Complainant
Complainant alleges that:
- it engages in the television broadcasting industry, and owns and operates broadcast television stations in Chicago, Illinois and Milwaukee, Wisconsin;
- it delivers television programming using the METV trademark to independent television broadcasting companies for broadcast in most U.S. television markets, reaching 92% of United States households;
- it owns two United States trademark registrations for the METV mark, as well as the "" web site;
- only weeks after Complainant's adoption of its mark, Respondent (or its predecessor) registered the Domain Name;
- in 2015, Respondent offered to sell Complainant the Domain Name for USD 50,000;
- the Domain Name is identical to Complainant's mark; and in particular, the ".tv" country code Top-Level Domain (ccTLD) forms a significant portion of the Domain Name as it is generally associated with "television";
- Respondent cannot have any rights or legitimate interests in the Domain Name because it is not generally known by the "" name, has not obtained any rights or license from Complainant, is not actively using the Domain Name currently, and has not previously used it in connection with a bona fide offering of goods or services;
- given Complainant's renown, it is implausible that Respondent registered the Domain Name without knowledge of Complainant and its mark;
- Respondent's request for USD 50,000 for the Domain Name reflects bad faith; and
- Respondent's use of a proxy service to conceal its identity further reflects bad faith. B. Respondent
Respondent alleges that:
- The Domain Name is not identical or confusingly similar to Complainant's METV mark because the ccTLD should be ignored, and the word "me" is not identical or confusingly similar to Complainant's mark taken as a whole;
- Respondent, formerly a subsidiary of Demand Media, Inc., acquired the Domain Name on December 14, 2006 to be used as the primary domain name for its website that offered the first integrated suite of proprietary social media tools that allowed anyone to own, program, and share his or her own personal video-centric website with social networking features completely controlled by them (the "ME.TV Network");
- A contemporaneous press release relating to the launch of the ME.TV Network was attached to the Response, along with a screenshot of the product in use as of 2007;
- Respondent made the above-described use of the Domain Name for several years, and although it is no longer currently doing so, it has thereby established rights and legitimate interests;
- Complainant has failed to show any bad faith registration or use, relying merely on speculation that Respondent had knowledge of, and intended to trade on the goodwill associated with, Complainant's mark, where in fact Respondent chose the Domain Name for the legitimate reason that it constitutes a generic term closely associated with Respondent's intended commercial use of a personalized network of broadcast content for individuals;
- Offering to sell a domain name is not, per se, evidence of bad faith; and
- Use of a proxy is not, per se, evidence of bad faith.
Respondent also requests that the Panel find that Complainant engaged in reverse domain-name hijacking ("RDNH"). 6. Discussion and Findings
The Panel finds that the Domain Name is identical to Complainant's registered trademark, but that Complainant has failed to establish either Respondent's lack of rights or legitimate interests in the Domain Name or bad faith. The Panel further finds that Respondent has failed to establish RDNH. Preliminary issue #1: Filing of supplemental submissions:
Ordinarily, supplemental submissions are not accepted absent a request by the Panel or special circumstances warranting such submissions. Here, however, the Panel finds that the supplemental submissions, which primarily addressed the RDNH issue, were permissible, inasmuch as Complainant could not have known that Respondent would claim RDNH, and accordingly Complainant was justified in seeking to respond to that argument, while Respondent was justified in replying to Complainant. Accordingly, the supplemental submissions from each side have been considered by the Panel. Preliminary issue #2: Laches:
Respondent argues that Complainant is barred by the doctrine of laches from seeking relief at this late date, approximately a decade after the registration. Other panels have addressed the question of whether the doctrine of laches is applicable to disputes under the Policy; but that is a question the Panel need not reach or resolve, as it is moot in light of the resolution on the merits set forth hereinafter. A. Identical or Confusingly Similar
While Respondent correctly notes that numerous panels have held that the Top-Level Domain is often deemed inconsequential or irrelevant when comparing a complainant's mark with a respondent's second-level domain, such is not always or necessarily the case. This proceeding provides an example of a (perhaps rare) exception to that general principle. Here, the ccTLD ".tv" is closely associated in the minds of English speakers with the word "television," and accordingly is part of what renders the domain name "" identical or at least confusingly similar to the METV mark owned by Complainant. Accordingly, the Panel finds that Complainant has established the first element required under the Policy. B. Rights or Legitimate Interests
For its Domain Name, Respondent selected the term "me" – a generic English word having an ordinary meaning well-known to English speakers (and indeed, as Respondent establishes, one of the fifty most common words in the English language). Respondent appended to that word the ccTLD ".tv" which, as noted above, is closely associated with "television." Not surprisingly, the associated purpose or content of Respondent's corresponding Domain Name was, as the evidence of record shows, a personalized television (or video) service to be accessed over the Internet.
It is true that Respondent's initial plan for the Domain Name does not appear to have been particularly successful, and the Domain Name is no longer in active use. Nevertheless, it has established rights and legitimate interests. Respondent's suggestion that it had no knowledge of, let alone intent to trade on the goodwill associated with, Complainant's mark is plausible, particularly considering that Complainant's considerable commercial success appears to have occurred long after the Domain Name was initially registered in 2005, and indeed after Respondent acquired it in 2006. Complainant did not even obtain United States registrations for the mark until January 2011, some five years after the Domain Name was registered. Moreover, the registration itself indicates a first use only a couple of months prior to the Domain Name registration (January 2005), and limited to the Chicago area, which is remote from where Respondent is located. These facts lend further credence to Respondent's observation that the record lacks any evidence that Respondent was aware of Complainant or its mark at the time Respondent acquired the Domain Name.
Accordingly, Complainant has failed to establish the second required element under the Policy. C. Registered and Used in Bad Faith
While the Panel need not reach the bad faith issue, it notes that, for the reasons discussed in Part B above, Complainant has likewise failed to show that the Domain Name was registered or used in bad faith. Its suggestion that the initial 2005 registration, shortly after Complainant's own trademark usage began, evidences bad faith is purely speculative. Considering the desirability of domain names employing common English terms, as well as domain names that are short (and ones associated with television), there is little reason to doubt Respondent's suggestion that its selection of had nothing to do with Complainant.
Nor does Complainant prevail on the bad faith element merely by showing that Respondent offered to sell the Domain Name for USD 50,000. Domain Name sales are neither illegal nor are offers to do so, ipso facto, evidence of bad faith, at least in the absence of other indicia suggesting that the registration was made with the intent to sell it at a marked-up price to a trademark owner. Given that the offer in question did not occur until 2015, some ten years after the initial registration, and well after the initial commercial usage of the Domain Name, there is insufficient evidence from which to speculate that commercial gain from a trademark owner motivated the decade-old registration. Additionally, it appears that the offer was not even made until after Complainant first contacted Respondent.
Lastly, Respondent is also correct in noting that use of a proxy does not, ipso facto, establish bad faith either. See paragraph 3.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") (noting that "use of a privacy or proxy registration service is not in and of itself an indication of bad faith"). 7. Decision
For the foregoing reasons, the Complaint is denied. 8. Reverse Domain-Name Hijacking
While Complainant has failed to establish two of the three elements to prove its case under the Policy, that alone does not establish RDNH. In support of its RDHN contention, Respondent offers little more than the suggestion that Complainant's allegations are "demonstrably false." But Complainant undisputedly owns a mark which has achieved considerable commercial success, and the Domain Name is identical or at least confusingly similar to it. The evidence of Respondent's legitimate use of the Domain Name was not self-evident as of the time of the Complaint. Moreover, Respondent certainly did not facilitate the discovery of such evidence when it chose to shield its identity behind a proxy registration service. For all these reasons, the Panel finds that Respondent has failed to establish that Complainant committed RDNH.
Michael A. Albert
Presiding Panelist
Michelle Brownlee
Panelist
William R. Towns
Panelist
Date: August 10, 2015
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