WIPO Arbitration and Mediation Center
NBC Universal Inc. v. Szk.com / Michele Dinoia
Case No. D2007-0077
1. The Parties
The Complainant is NBC Universal Inc., New York, of United States of America, represented by Kilpatrick Stockton, LLP, of United States of America.
The Respondent is Szk.com / Michele Dinoia, Pineto, of Italy.
2. The domain name and Registrar
The disputed domain name <datelinenbc.com> is registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2007. On January 23, 2007, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On January 23, 2007, Dotster, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint the formal requirements of the Uniform domain name Dispute Resolution Policy (the “Policy”), 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 January 30, 2007.
On February 6, 2007, the Registrar sent an email to the Center, stating that it had been instructed by the Respondent to advise that the Registrant had not submitted to the jurisdiction of the courts of the Registrar’s domicile. In further communications between the Center and the Registrar on February 8, 2007, however, the Registrar confirmed that its registration agreement (to which the Respondent is a party) provides that the Respondent has in fact submitted to that jurisdiction.
In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2007.
The Center appointed James A. Barker as the sole panelist in this matter on March 1, 2007. 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 following facts, set out in the Complaint, are uncontested.
The Complainant is a media and entertainment company, involved in the development, production, and marketing of entertainment, news, and information to a global audience. The Complainant owns and operates a valuable portfolio of news and entertainment networks, a premier motion picture company, significant television production operations, a leading television stations group, theme parks and websites, including “www.msnbc.com”, a joint venture with Microsoft Corporation.
The Complainant owns and operates the well-known NBC television network. NBC is also seen throughout Latin America and the Caribbean via cable, and is available worldwide via satellite.
The Complainant has also used the name and mark DATELINE NBC, and its short form DATELINE, for a well known weekly primetime news magazine. DATELINE NBC premiered in 1992 and has been aired on NBC’s broadcast network continuously since that time. The program is a mix of investigative reporting, entertainment and political interviews, human interest stories and criminal stories.
The disputed domain name reverts to a ‘portal’ website, which includes “popup” and “popunder” advertising. The site displays a number of links, such as “consumer information” and “unclaimed funds”. There are also a number of links and references featuring Complainant’s marks, such as NBC and DATELINE NBC. However, rather than linking to legitimate web sites of the Complainant, the web pages accessed from the links offer and/or advertise goods and services unrelated to the Complainant or its products or services.
5. Parties’ Contentions
Complainant owns numerous trademark registrations including the letters “NBC”, on the principal register of the United States Patent & Trademark Office (USPTO), for the NBC mark. Those marks date back to as early as 1956. The Complainant also owns a trademark registration, also on the principal registrar of the USPTO, for the word mark DATELINE.
The Complainant submits that the disputed domain name is identical to and confusingly similar to the Complainant’s famous NBC, DATELINE and DATELINE NBC names and marks, as it fully incorporates the NBC, DATELINE and DATELINE NBC names and marks. The disputed domain name differs only in the addition of the generic top-level domain “.com”.
The Complainant also contends that the Respondent cannot demonstrate or establish any legitimate interest in the disputed domain name. The Respondent registered its domain name long after Complainant had established rights in both its NBC, DATELINE and DATELINE NBC marks and names through extensive use. Where, as here, the Complainant’s marks are so well known and recognized, there can be no legitimate use by the Respondent.
The Complainant further alleges that the Respondent’s bad faith is established by Respondent’s well established pattern of registering and using domain names incorporating the names and/or marks, or variations thereof, of third parties to redirect internet users to linking portals for profit. Many decisions under the Policy involving the Respondent have specifically discussed the Respondent’s pattern of bad faith registration of domain names containing trademarks and names of third parties.
The Respondent’s bad faith registration and use is also established by the fact that Respondent is using the disputed domain name to divert web traffic to a linking portal for profit.
The Complainant contends that the Respondent’s bad faith registration and use is further evidenced by Respondent’s apparent attempt to conceal its identity by using an alias (Szk.com).
The Respondent did not reply to the Complainant’s contentions.
The Respondent’s communication with the Center (directed through the Registrar on February 6, 2006, after the formal notification of the proceedings against it) suggests that the Respondent had actual notice of these proceedings. Having actual notice, the Respondent has clearly made a deliberate decision not to respond to the Complaint.
6. Discussion and Findings
For the Complainant to succeed, under paragraph 4(a) of the Policy the Complainant must prove that:
(i) the disputed domain name 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 in respect of the disputed domain name; and
(iii) the disputed domain name was registered in bad faith and is being used in bad faith.
The Complainant must prove each of these three elements, which are discussed in turn as follows.
A. Identical or Confusingly Similar
Substantial evidence of the Complainant’s rights in its marks were attached to the Complaint. It is clear that the Complainant “has rights” in a mark, for the purpose of the Policy.
The disputed domain name wholly incorporates two marks in which the Complainant has rights (DATELINE and NBC). The combined association of those two marks, makes it clear that the disputed domain name is at least confusingly similar to either or both of those marks. Because those two marks would naturally be associated with each other, the use of both in the disputed domain name only increases the risk of confusion.
For these reasons, the Panel finds that the Complainant has established this first element of the Policy.
B. Rights or Legitimate Interests
It would be difficult to conceive of any right or legitimate interest that the Respondent might have in the disputed domain name. The Respondent, by its default, has not demonstrated any such rights or legitimate interests.
Rather, the only evidence of the Respondent’s use of the disputed domain name (which reverts to a portal website) suggests a lack of rights or legitimate interests. The Respondent’s use of the domain name appears to be only as a device to divert Internet users to a portal website. Such a use, in these circumstances, is not sufficient to establish a right or legitimate interest.
In addition, the Complainant has clearly established a prima facie case against the Respondent. Having established that case, the burden then shifts to the Respondent to demonstrate its rights or legitimate interests. The Respondent’s default means that it has not met this burden.
For these reasons, the Panel finds that the Complainant has established this second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b)(ii) of the Policy provides that there is evidence of bad faith where the Respondent has:
“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 you [the Respondent] have engaged in a pattern of such conduct”.
It is clear from previous cases under the Policy, that such a pattern of conduct has been routinely demonstrated where a Respondent has been repeatedly involved in the bad faith registration of domain names, against multiple complainants. “A pattern of conduct can involve multiple UDRP cases with similar fact situations or a single case where the respondent has registered multiple domain names which are similar to known trademarks”. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, item 3.3.).
The Complainant argues that the conduct of the Respondent falls squarely within the circumstances set out in paragraph 4(b)(ii) of the Policy. The Complainant points to the substantial involvement of the Respondent in previous cases under the Policy to establish a “pattern of conduct” for the purpose of paragraph 4(b)(ii). In particular, the Complainant refers to some of the following cases as a sample of cases previously involving this Respondent: Encyclopedia Britannica v. Michele Dinoia/SZK.com, WIPO Case No. D2005-0865; FNAC v. SZK.com, WIPO Case No. D2004-0413; Volvo Trademark Holding AB v. Michele Dinoia, WIPO Case No. D2004-0911; Phillip Morris USA, Inc. v. Michele Dinoia, SZK.com, WIPO Case No. D2005-0171; Venator Group Retail Inc. v. Michele Dinoia d/b/a SZK.com, Claim No. FA 0110000101506; Hillary Rodham Clinton v. Michele Dinoia a/k/a SZK.com, Claim No. FA 05020004314641; Twentieth Century Fox Film Corp. v. Michele Dinoia, Claim No. FA 0212000135643; Gap (Apparel), LLC v. Michele Dinoia a/k/a SZK.com, WIPO Case No. D2006-0545.
The Complainant also quotes from BellSouth Intellectual Property Corp.v. Michele Dinoia, WIPO Case No. D2004-0486, where the Panel stated that “The situation in the present matter does not seem to be different from the one relating to the numerous proceedings to which the Respondent [Dinoia/SZK.com] has participated in where his domain names were cancelled or transferred to complainants”. In that case, similarly to this one, the Respondent used a disputed domain name to divert Internet traffic to its web portal directory.
The words “in order to prevent” in paragraph 4(b)(ii) of the Policy also suggest that the Respondent must have known of the Complainant when it registered the disputed domain name. The fame of the Complainant in this case is strongly suggestive of the Respondent having such actual knowledge. Further, the Respondent’s actual knowledge of the Complainant is indicated by the entire incorporation of two of the Complainant’s trademarks in the disputed domain name. That combination also suggests that the Respondent had actual knowledge of the Complainant’s marks, and combined them to increase the risk of confusion.
This evidence is more than sufficient for the Complainant to establish its case under paragraph 4(b)(ii) of the Policy.
There is further evidence of bad faith in this case, including evidence that would be likely to establish the grounds under paragraph 4(b)(iv) of the Policy, and evidence provided by the Complainant of other aspects of bad faith. But, for the reasons set out above, it is not necessary for the Panel to further consider that evidence.
The Complainant has established this third element of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <datelinenbc.com> be transferred to the Complainant.
James A. Barker
Dated: March 15, 2007