WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NVT Birmingham, LLC d/b/a CBS 42 WIAT-TV v. ZJ
Case No. D2007-1079
1. The Parties
The Complainant is NVT Birmingham, LLC d/b/a CBS 42 WIAT-TV of Birmingham, Alabama, United States of America, represented by Lord, Bissell & Brook of Atlanta, United States of America.
The Respondent is ZJ of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name cbs42.com (“the Domain Name”) is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2007. On July 25, 2007, the Center transmitted by email to Intercosmos Media Group (d/b/a directNIC.com) a request for registrar verification in connection with the Domain Name. On July 25, 2007, Intercosmos Media Group (d/b/a directNIC.com) transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing contact details for the administrative and technical contacts for the Domain Name (both named as “Zhang Yi email@example.com”). When the Center subsequently conducted its own Whois search, it appeared that the Domain Name had been assigned to Sam Chang and Tim Ng, with an address in Beijing, China. The Center raised this apparent anomaly with the Registrar by email dated August 22, 2007. The response from the Registrar (received later the same day) read:
“The contact information has been reversed back to the way it was on July 25, 2007. Sorry about that.”
The Registrar’s email went on to confirm that the registrant was still “ZJ”, of the same Shanghai address the Registrar had confirmed on July 25.
The Center verified that the Complaint satisfied 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 proceeding commenced on July 31, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2007.
A Response was filed with the Center on August 17, 2007. The Response was submitted on behalf of the Respondent by Mr. Sam Chang, who noted: “… my contact details are the same as in the Whois for this domain.”
On August 27, 2007 the Complainant’s representative emailed the Center, enquiring if the Complainant would have a chance to respond to several of the points raised in the Response. The Center replied on that same day, advising that the Rules do not provide for supplemental filings as of right, and that it would be a matter for the Panel (when appointed) to determine in its discretion whether any further filings would be permitted.
The Center appointed Warwick Smith as the sole panelist in this matter on August 28, 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.
By Procedural Order No. 1 dated September 7, 2007 the Panel requested from the Complainant a further statement relating to its authority or entitlement to use the expression “CBS” in the course of its business. The Respondent was given an opportunity to file a Reply by Procedural Order No. 2 dated September 12, 2007. The Complainant filed a further statement as requested on September 11, 2007, but the Respondent did not file any Reply.
4. Factual Background
The Complainant provides television broadcasting and radio services to the immediate territory surrounding Birmingham, Alabama, United States of America. It provides its television broadcasting services through the television station CBS 42 WIAT-TV, which is an affiliate of the well-known American broadcasting network, CBS Broadcasting Inc. (“CBS”).
The origins of the television station are said to go back to 1965, when an independent television station known as Channel 42 began broadcasting both CBS and NBC programming in the Birmingham area. On May 31, 1970, Channel 42 became the exclusive CBS affiliate in Birmingham, and, according to the Complaint, then began using the trademark CBS 42. Since 1998 the Channel’s call letters have been WIAT-TV. The Complainant says that the CBS affiliation and the use of the expression “CBS 42” have continued since that date.
The Complainant says that it purchased the station (with all assets and intellectual property rights) from the former owners, in October 2006.
The Complainant’s service mark claims
The Complainant does not rely on any registered trademark. It says in the Complaint that it is “in the process of registering the mark CBS 42 with the United States Patent and Trademark Office”, but it did not provide copies of any documents to support that statement. The Complainant claims to have common law rights in a CBS 42 mark.
The Complainant says that it has used the expression “CBS 42” continuously since 1970, and that it has promoted and advertised the CBS 42 mark over the years since then. It says that, since the year 2000, approximately $957,000 has been spent on advertising and marketing efforts designed to promote the CBS 42 mark.
The Complainant has produced some examples of advertising material, including one document headed:
This piece of promotional material prominently displays, in large lettering and in two separate places, the number “42”, and notes in smaller print that WBMG (then the station’s call letters) “now carries a full schedule of CBS programming in addition to top flight local shows …”.
A further promotional document, apparently from 1971, shows the expression “Channel 42” used in close proximity with what appears to be a CBS logo trademark, which prominently features the letters “CBS”.
A further document produced by the Complainant, apparently published in “NSI” in November 2005, appears to show that the television channel had by then become known as “CBS 42”. This document contains a congratulatory message from the Regional Director – South-East, for CBS Affiliate Relations, and notes that “CBS 42 achieved some of the highest November ratings in the station’s history and, according to the just completed rating period, is now the #1 most watched television station in Alabama.” Beneath that, appears the prominent statement:
“Thank you Birmingham
station in the State”
The Complainant maintains a website at “www.wiat.com” (“the Complainant’s website”). It also owns the domain name <cbs42.net>. The Complainant’s website provides the internet community with news, weather, sports, entertainment, advertising, and other community information. The Complainant says that in the calendar year 2005, it logged 712,824 page views at the Complainant’s website. The corresponding figure for the calendar year 2006 is said to have been 845,000.
The Complainant has produced some extracts from the Complainant’s website. These appear to have been printed on July 20, 2007. They feature the expression “CBS 42” in a number of places – e.g. “CBS 42 Top Stories of the Day”, “CBS 42 Web Poll”, and “CBS 42 Features”. There are also click-on links “What’s on CBS 42”, and “Contact CBS 42”.
In response to the Panel’s request for a further statement, the Complainant provided copies of a number of further documents. Among them, were extracts from the United States Patent and Trademark Office database, showing that CBS is the registered proprietor of the word mark CBS in international classes 38 and 41. The class 38 registration has had effect since July 1967, and covers radio and television broadcasting services.
In addition, the US PTO database extracts show that CBS is the registered proprietor of two “Eye” device marks registered in International Class 38. One such “Eye” device mark consists of an “Eye” device above the words, “A CBS AFFILIATE”, and the other consists of an “Eye” device with the letters “CBS” inside the “pupil” of the “Eye” device. Both marks have been registered since the 1960s.
The Complainant has also produced a copy of a 1995 “Affiliation Agreement” between CBS and Birmingham Television Corporation. A later document makes it clear that “Birmingham Television Corporation” was a predecessor in title of the Complainant as the operator of the Birmingham-area radio and television station which now operates under the call letters “WIAT-TV”.
As one would expect, the Affiliation Agreement provided for the local broadcaster to broadcast, in addition to its own local programming, CBS network programming on terms and conditions set out in the Affiliation Agreement. With respect to each such network program broadcast by the local broadcaster, the local broadcaster was obliged to broadcast the program in its entirety, including “promotional announcements and network identification”. The Complainant says that both employ the “CBS” service mark.
Various amendments have been made to the Affiliation Agreement since 1995. One such amendment, dated in January 2005, obliged the Complainant’s predecessor to “participate in CBS’ Co-op and Promo Swap Programs as requested by CBS”. For its part, CBS agreed in the January 2005 amendment to make available to the local broadcaster “co-op advertising funds”.
The last document which the Complainant produced with its further statement, was an extract from an online Manual produced by CBS (or by a related company), for use by CBS Affiliate stations. This extract, printed on September 11, 2007, was described in the Complainant’s further statement as “Excerpt from CBS Service Mark Manual regarding Affiliate’s Use”.
In general terms, the CBS Service Mark Manual provided for local CBS affiliate stations to use the CBS “Eye” device mark alongside their own individual station identification logos, in a form of “co-branding”. The general idea is apparently to establish a “shared brand identity”, permitting local affiliate stations to take advantage of CBS’ high profile “Eye” symbol. The Manual emphasizes that any such co-branding designs must have the prior approval of “CBS Advertising and Promotion”.
The Manual imposes various requirements on local CBS Affiliate Stations who participate in the co-branding program, including an obligation to publish (on air and in any local print material) a statement identifying the local station as “a CBS Affiliate”.
A web page entitled “The Eye: General Guidelines for Affiliate Use”, provides that the “CBS Eye” may only be used by a local Affiliate to identify two things:
“(a) CBS Television Network programming, and
(b) the station’s identity as a CBS affiliate.”
As to (a) above, the web page states:
“CBS must be identified clearly as the source of the programming, either visually or audibly. The identification must include the letters CBS.”
The various examples of advertising undertaken by the Complainant or its predecessors, the extracts from the Complainant’s website, and the letterhead of a letter written to the Respondent in October 2006, all appear to show that the Complainant and its predecessors have been using the CBS mark and the CBS “Eye” device.
The Respondent and the Domain Name
The Domain Name was registered on December 19, 2004.
The Complainant has produced a screen shot from the website to which the Domain Name resolves (“the Respondent’s website), taken on July 17, 2007.
The screenshot shows that the Respondent’s website is an English language website. Essentially, it is a portal site, with numerous click-on links grouped under category headings. There are the usual headings which one expects to see at sites such as this (e.g. “Travel”, “Finance”, “Entertainment”, and “Lifestyle”), but the primary links appear to be to sites having a news or entertainment theme – e.g. “Local News”, “Local Weather”, “TV shows”, “Business News”, “Cbs 42 Sports Department”.
According to the Response, the Domain Name was given to Mr. Sam Chang (who appears to be the registrant, “ZJ”) as a gift, “along with several other domains”. Mr. Chang says he is not doing anything with the Domain Name – he says that it is parked, and “Google is auto generating ads on the domain.”
In accordance with normal practice, the Panel has visited the Respondent’s website. Clicking on the various links takes the site visitor to a subpage containing further links, many of them to websites dealing with the subject-matter of the click-on link in the site visitor’s own country. For example, clicking on “Local Weather” took the Panel to a subpage containing links to a number of websites providing information on the weather in the Panel’s home country, New Zealand. However, the Panel also noted links to websites concerned with matters relevant to other countries, including one site providing weather links for 1,500 United States cities, and a “Real Estate” page containing sponsored links to sites dealing with real estate in a number of different United States locations.
On October 16, 2006, a representative of the Complainant (or its immediate predecessor) wrote to the Respondent at the Shanghai address shown in the WHOIS report, enquiring about purchasing the rights to the Domain Name. In his Response, the Respondent acknowledges receiving an email from the Complainant; indeed he says that the Complainant offered to buy the Domain Name several times. He says in his Response that he “didn’t even answer their email”.
5. Parties’ Contentions
The Complainant contends:
1. It has rights in the common law trademark CBS 42, and the Domain Name is identical or confusingly similar to that mark.
2. CBS is the registered proprietor of the service mark CBS, and “CBS knowingly and willingly licensed the right to use the mark in the broadcasting of the furtherance of the CBS programming and Channel 42.”
3. It has not authorized the Respondent to use that mark in a domain name or otherwise, and the Respondent has no rights or legitimate interest in the Domain Name.
4. The Respondent is not known by the name “CBS 42”. The Respondent is a Chinese citizen or entity, and has no intention to operate a United States-based television station affiliated with the CBS network. The Respondent therefore has no rights or legitimate interests in respect of the Domain Name.
5. The Domain Name is confusingly similar to the Complainant’s CBS 42 mark, and the Respondent offers services which are similar to those offered by the Complainant under its CBS 42 mark. Internet users are likely to believe that the Respondent’s website, and the services offered through it, are somehow sponsored by, or otherwise associated with the Complainant. The Respondent’s use of the Domain Name has been calculated to lead to consumer confusion, and the Respondent has been misappropriating the Complainant’s goodwill in its CBS 42 mark.
6. The Respondent has registered the Domain Name for the improper purpose of selling it to the Complainant for a consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Name.
7. The Respondent had actual knowledge of the Complainant’s prior rights when the Respondent registered the Domain Name.
8. The Complainant will be unable to use its mark to designate and identify a website by the name most likely to be associated with the Complainant’s current services on the Internet.
9. The Respondent’s failure to respond to the Complainant’s October 2006 letter of enquiry, further evidences the Respondent’s bad faith.
The Respondent contends:
1. He acknowledges that CBS is a trademark, but says that if CBS did not own the domain name cbs.com, they would not be able to win it in a proceeding under the Policy because it is a 3-letter domain and is generic. The Domain Name is a combination of two “super generics”, being a 3-letter combination of letters and a 2-character number. Two super generics make another generic. Anyone can own a generic domain and by so doing establishes rights to it.
2. The Complainant has no registration for any CBS 42 mark, nor any trademark for CBS. There are other stations called CBS 42, so the Complainant’s claim to common law rights in such a mark is absurd.
3. The trademark CBS is owned by CBS Corporation, not the Complainant. The Complainant is merely an affiliate, and has no standing to make claims on domains containing the CBS mark (see Louis Vuitton Malletier SA v Manifest Information Services C/- Manifest Host Master; NAF Case No. FA 0609000796276). If anything CBS Corporation should file a complaint under the Policy, and if it wins, it can lend the Domain Name to this affiliate.
4. The Respondent did not register the Domain Name in bad faith, and has not been using the Domain Name in bad faith. He has not been doing anything with the Domain Name, as the advertisements and links have been generated automatically by Google. Domain name registrants cannot be held responsible for Google ads on their sites, as individuals have no control over what advertisements Google uploads (citing Admiral Insurance Services Ltd v Mr. Adam Dicker; WIPO Case No. D2005-0241).
5. No-one will be confused into thinking that the Respondent’s website is the Complainant’s website.
6. The Complainant is commonly known as WIAT, and the Complainant’s website is at “www.wiat.com”. The Complainant is therefore not being prevented from using its trademark in a domain name.
7. A problem for the Complainant is that there is another “CBS 42” station in Austin, Texas. Unlike the Complainant’s station, the station CBS 42 in Austin is owned by CBS Corporation (referring to the websites at “www.en.wikipedia.org/wiki/KEYE-TV” and “www.keyetv.com”).
8. The Respondent’s failure to reply to the Complainant’s various offers to purchase the Domain Name, is further evidence of his good faith.
9. The Complainant has failed to discharge its onus of proving the three elements set out in paragraph 4(a) of the Policy.
6. Discussion and Findings
Under Paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) That the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondents have no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the Panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
A. Identical or Confusingly Similar
The Complainant must first prove that it has “rights” in some trademark or service mark to which the Domain Name is identical or confusingly similar.
In this case, the Complainant has produced uncontested evidence that it and its predecessors have been using the expression “CBS 42” in the operation of the Birmingham-based television channel, for over 30 years. The Complainant says that, since 2000, it and its predecessors have spent almost $1 million in advertising and promoting its “CBS 42” brand. It seems highly likely that a significant number of television viewers, in the State of Alabama at least, would identify the expression “CBS 42” with the Complainant’s television channel. It is therefore possible that “CBS 42” may have achieved sufficient “secondary meaning” to qualify as an unregistered, or common law, service mark, within the meaning discussed in cases such as Universal City Studios, Inc. v David Burns and Adam-12 Dot Com; WIPO Case No. D2001-0784. (In that case, the three-member Panel held that, to establish common law trademark rights, a complainant must show that the claimed mark has achieved sufficient secondary meaning, or association with the complainant, such that the name and the business have become synonymous in the mind of the public, submerging the primary meaning of the name in favour of its meaning as a word identifying that business.”)
However the Panel does have some concerns over the adequacy of the proof of that claim. Those concerns include the fact that the Complainant has failed to produce any documents or detail relating to the application it says it has made to register CBS 42 as a service mark, the failure to explain the role (if any) of CBS in that application (or to say whether CBS supports the Complainant in this proceeding), and the apparent existence of another television station (referred to by the Respondent) operating under a “CBS 42” brand in Austin, Texas.
The existence of the Austin television station serves to highlight the fact that the Complainant and its predecessors appear to have been involved in a co-branding exercise with CBS, under which two separate brands or marks (“CBS”, and the local station identifier – in this case “42”) are displayed together to indicate the respective origins of the network programs on the one brand, and the local programming on the other. The Complainant has been licensed to use the service mark CBS, and the “Eye” device mark owned by CBS, as part of that co-branding program, and it seems likely that very similar “co-branding” arrangements are in place between CBS and its various other affiliate stations.
The Panel is satisfied on the evidence produced by the Complainant with its further statement, that the Complainant enjoys rights as licensee in the “CBS” service mark owned by CBS. The CBS Service Mark Manual produced by the Complainant includes a clear obligation on affiliate stations (such as the Complainant) to identify CBS, whether visually or audibly, as the source of network programming supplied by CBS. The identification is specifically required to include the expression “CBS”. The various website extracts and advertising materials produced by the Complainant make it clear that the Complainant has been exercising that right to use the CBS mark in the course of its broadcasting and other activities.
The question, then, is whether a license to use the CBS mark constitutes a right in that mark for the purposes of paragraph 4(a)(i) of the Policy. The Respondent submits that it does not. The Respondent says: “Furthermore, CBS Corporation owns the mark for CBS not the Complainant. The Complainant is merely an affiliate and has no standing to make claims on domains containing the CBS mark. This has been established in many other UDRP cases. See Louis Vuitton Malletier S.A. v Manifest Information Services C/o Manifest Hostmaster [NAF Case No. FA0609000796276]. This case involved a distributor of Louis Vuitton who was trying to reverse domain hijack LV.com. It was found that the distributor had no standing to bring the UDRP.”
The Panel has considered the decision in the Louis Vuitton case referred to by the Respondent. The case does not provide the slightest support for the Respondent’s argument. The Complainant in the case was Louis Vuitton Malletier S.A., but the evidence showed that the relevant trademark registrations were held by another corporation, Louis Vuitton Malletier Corporation France. The three-member NAF Panel dealt with the issue in the following terms:
“Complainant has failed to state how if at all Complainant has rights in the LV trademark. The Panel finds that there must be some legal connection between Complainant and Louis Vuitton Malletier Corporation France which lawfully entitles Complainant to have enforceable rights in the trademark; However, since this legal relationship appears to have been accepted by Respondent, the Panel will assume for purposes of this Decision that Complainant has such rights in the trademarks.”
In the event, the Panel in the Louis Vuitton case held that the Complainant had succeeded in establishing the relevant rights, and confusing similarity, under paragraph 4(a)(i) of the Policy.
Numerous WIPO Panels have held that rights as a (non-exclusive) licensee are sufficient to constitute rights in a trademark or service mark for the purposes of paragraph 4(a)(i) of the Policy. See for example Toyota Motor Sales USA Inc. v J. Alexis Productions; WIPO Case No. D2003-0624, where the Panel said:
“As a matter of US law, which governs these proceedings, even a non-exclusive licensee has the right to assert trademark rights in a licensed mark and to take action to protection the licensed mark. Accordingly, Complainant has satisfied the first element of the Policy.”
See also Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Limited v Party Night Inc., aka Peter Carrington; WIPO Case No. D2003-0796 (“These words do not require that Complainant be the owner of the mark and would include, for example, a licensee of the mark”), and American Civil Liberties Union of New Mexico v Vilma Morales/e BruceOOm, S.A.; WIPO Case D2004-0473 (“These rights need not be rights of ownership and need not be exclusive. A licensee having the right to use a mark under its license is clearly a party having a right in the service or trademark”).
For a more recent detailed discussion on the point, see DigiPoll Limited v Raj Kumar; WIPO Case No. D2004-0939, where the Panel referred to the American Civil Liberties Union of New Mexico decision and said:
“That decision reiterates the twin notions that a license to use a trademark is a ‘right’ for the purposes of the Policy and that such a right is effective for that purpose even when another entity also has rights in the trademark.”
The last point is important, because obviously the Complainant would not be the only party with rights in a CBS service mark – CBS itself clearly enjoys those rights, and it appears that there will be numerous CBS affiliate television channels in the United States, and possibly elsewhere, who also enjoy non-exclusive rights as licensee in the mark CBS. That does not matter for the purposes of paragraph 4(a)(i) of the Policy. The preponderance of the relevant Panel decisions show that non-exclusive rights as licensee are enough.
Given that the evidence shows that the Complainant has “rights” (as licensee) in the service mark CBS, the remaining question under this part of the Policy is whether the Domain Name is confusingly similar to that service mark. In the Panel’s view, it is.
First, the Domain Name incorporates in full the CBS service mark. Numerous WIPO Panels have found that a domain name that wholly incorporates the complainant’s registered mark may be sufficient to establish confusing similarity for the purposes of the Policy – see, for example, Nokia Group v Mr. Giannattasio Mario; WIPO Case No. D2002-0782, and the decisions referred at pages 4-5 of the decision in that case.
The “CBS” part of the Domain Name is clearly the distinctive part of the Domain Name. It is the part of the Domain Name to which Internet users would likely attach meaning, particularly as CBS is a very well known network broadcaster. The digits “42” would not be anywhere near as distinctive. They might have meaning for those internet users who were already aware of the Complainant’s television channel, but to most they would just be numbers which conveyed no particular meaning.
The look and sound of the Domain Name is clearly very similar to the CBS service mark, and to a large number of Internet viewers the Domain Name would convey the impression that the Domain Name is somehow associated with CBS. Those factors are sufficient for the Panel to conclude that the Domain Name is confusingly similar to the CBS service mark in which the Complainant has rights.
Before leaving this part of the decision, the Panel refers to certain submissions made by the Respondent.
First, the Respondent submitted that the Domain Name consists of a generic combination of letters (“cbs”), with a two-character number. As the Respondent put it, the Domain Name in question is a combination of “2 super generics”, and “2 super generics makes another generic”. The Respondent submitted that it is well established under the Policy that anyone can own a generic domain and by so doing establishes rights to it.
The short answer to this submission is that “CBS” is not just any combination of three letters of the alphabet. It is a registered service mark which is well known around the world in the field of television broadcasting. Nor is there any evidence supporting the contention that the expression “CBS” is “generic”, in the sense of denoting or describing some category, or “genus”, of goods or services. As far as the evidence shows, the only meaning the Panel can ascribe to the letters “CBS”, is that they refer to the famous American television broadcasting company and/or its goods or services.
Secondly, the Respondent asks (rhetorically) in the Response:
“Does ABC have a right to ABC99.com, ABC98.com, etc etc … maybe if someone is pretending to be in the TV business but that is not the case here. Obviously ABC does not have the right to every domain with ABC in it. The same is true of CBS. …”
The Respondent puts this submission simplistically. Whether the owner of the television broadcasting network ABC would have a right to own numerous domain names consisting of the letters ABC followed by two digits, would depend on all of the factors set out in paragraph 4(a) of the Policy. Rights in an “ABC” trademark would be only one of those factors, and the result in a particular case would obviously depend upon such matters as whether or not the respondent had rights or a legitimate interest in the at-issue domain name, and whether the respondent had registered, and was using, the at-issue domain name in bad faith.
The Respondent’s submissions on this part of the case are rejected.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
If the circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests in the Domain Names on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that he does have a right or a legitimate interest in the Domain Names (there are numerous WIPO decisions where that approach has been adopted, see, for example, the decision of the three-member panel in Phillip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946, citing Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624).
That approach is summarized at paragraph 2.1 of the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“[…] a Complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP”.
In this case, the Complainant has not authorized the Respondent to use any CBS or CBS42 mark, whether in the Domain Name or otherwise, and the Panel has found that the Domain Name is confusingly similar to the CBS mark in which the Complainant has rights. In those circumstances, it is for the Respondent to prove that he has some right or legitimate interest in the Domain Name, either under one of the subparagraphs of Paragraph 4(c) of the Policy or on some other ground.
In the Panel’s view, the Respondent has failed to provide such proof.
First, there is no evidence that the Respondent has been commonly known by the Domain Name, and therefore no possible basis for a claim to a right or legitimate interest under paragraph 4(c)(ii) of the Policy.
Secondly, the Respondent does not offer any reason for the choice of the Domain Name. It appears that he acquired the Domain Name from some earlier registrant – he says that the Domain Name was given to him “as a gift along with several other domains”. He does not say when the Domain Name was given to him, nor explain why anyone would want to give him several domain names. If the domains were in fact gifted to the Respondent, it is reasonable to infer that the Respondent would have some knowledge of the earlier registrant or registrants, and be able to offer some explanation for the original choice of the Domain Name. The Respondent has not provided any such explanation.
Thirdly, the Respondent says that he is not doing anything with the Domain Name. He says that it is parked, and Google is auto generating ads on the Domain Name.
Fourthly, the Respondent is presumably deriving revenue from the advertisements on the Respondent’s website, and to that extent is operating the Respondent’s website for commercial purposes. If that is correct, there is no basis for finding any right or legitimate interest under paragraph 4(c)(iii) of the Policy, which is generally concerned with fair non-commercial use.
Turning to paragraph 4(c)(i) of the Policy, it appears to the Panel that the Respondent had notice of the Complainant’s predecessor operating under a “CBS 42” brand, from at least as early as October 16, 2006. A letter, prominently marked with the logo “CBS 42”, and incorporating the CBS Eye device, was sent to the Respondent on that date, over the signature of a Mr. Morrow, who introduced himself as the marketing director for “CBS 42, the local CBS affiliate television station in the Birmingham area”. In the Panel’s view, this letter was certainly sufficient to put the Respondent on notice of the Complainant and its use of a “CBS 42” brand.
There is no evidence of the Respondent having made any preparations to use the Domain Name for any purpose, nor of him having made any offering of goods or services through the Respondent’s website (apart from the advertisements, which the Respondent says were auto-generated by Google). As for those advertisements, there is no evidence of when they first appeared on the Respondent’s website, and specifically no evidence that they were there before the Respondent received the letter dated October 16, 2006.
In the circumstances described above (and to the extent that the advertisements / sponsored links on the Respondent’s website constitute offerings of goods or services), the Respondent has failed to satisfy the Panel that the offerings should be regarded as having been made bona fide. The Respondent, although apparently resident in China, is obviously competent in the English language, and appears to be well versed in matters concerning domain names and the Internet. It is clear from his Response that he is familiar with the American broadcasting network ABC, and the Response contains no denial of knowledge of CBS and its operations. It seems improbable that he would have been aware of one network but not the other, and even less likely that he would not have said so if he had been unaware of CBS and its operations when he acquired the Domain Name. He also referred in the Response to his having conducted a search for a CBS 42 trademark at the USPTO website, and to his having been given “several other domains”. Overall, the impression the Panel has from the Response is that the Respondent is a sophisticated Internet user, who would have been well familiar with the American broadcasting network CBS when he acquired the Domain Name, and who would undoubtedly have expected that a domain name consisting of the letters “CBS” plus two digits would attract a significant number of Internet browsers looking for websites associated with CBS or one of its affiliate stations. That must have been obvious to the Respondent when he entered into the arrangements he apparently has with Google, and it is precisely the kind of bad faith use which is covered by paragraph 4(b)(iv) of the Policy (intentionally attempting to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with a Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s website or a product or service offered on that website).
In the Panel’s view, the Respondent has not provided sufficient evidence to bring himself within paragraph 4(c)(i) of the Policy.
The Respondent has not advanced any other basis for a finding that he has a right or legitimate interest in the Domain Name, and the Panel accordingly finds that he has no such rights or legitimate interests.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [the respondent has] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [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 [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
The Panel also finds this part of the Complaint proved. Specifically, the Panel finds that the Respondent’s registration and use of the Domain Name falls within paragraph 4(b)(iv) of the Policy – by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the CBS mark, as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The reasons for that finding are as follows:
1. The Domain Name is confusingly similar to the CBS mark in which the Complainant has rights, and the Respondent has not established that he has any right or legitimate interest in the Domain Name.
2. As noted above under the “Rights or Legitimate Interests” heading, the Respondent is clearly a sophisticated, English language-speaking user of the Internet, who owns or has owned at least several Domain Names. The Response reveals that the Respondent knows of the American broadcasting network ABC, and refers to the Respondent having conducted a trademark search of the USPTO trademarks database. The Respondent has not denied that he was aware of CBS when he acquired the Domain Name. (Indeed, the Respondent has not denied the allegation in the Complaint that he had “actual knowledge of Complainant’s prior rights in the CBS 42 mark through Complainant’s common law trademark rights […]”. The only response to the allegation of prior knowledge of the Complainant appears to be the argument that “CBS 42” consists of a combination of two generic expressions, which together form a “super generic” in which no-one can claim trademark or service mark rights.) The high probability is that the Respondent was aware of CBS and its television broadcasting services conducted under a CBS mark, when he acquired the Domain Name.
3. The Respondent’s submission that he did not himself register the Domain Name, does not provide an answer to the claim. (The Respondent says that the Domain Name (along with several other domains) was gifted to him). Whether the Respondent acquired the Domain Name by original registration, by purchase, or by receiving it as a gift from an earlier registrant, makes no difference. The Policy treats the acquisition of a Domain Name as equivalent to the registration of that domain name for the purposes of paragraph 4(a)(iii) of the Policy (see, for example, MC Enterprises v Mark Segal; WIPO Case No. D2005-1270, Ideenhaus Kommunicationsagentfur GmbH v Ideenhaus GmbH; WIPO Case No. D2004-0016, and the cases referred to by the Panel at page 4 of the decision in the Ideenhaus case. See also the more recent decision of this Panel in Société des Participations Du Commissariat à L’Energie Atomique v David Morton; WIPO Case No. D2007-0679.
4. The Respondent, who the Panel has found was well aware of CBS and its television broadcasting operations when he acquired the Domain Name, must have expected that any website to which the Domain Name might resolve would attract a significant number of Internet visitors looking for websites associated with CBS or its affiliates. The letters “CBS” are not just a meaningless combination of letters of the alphabet, any more than the letters “IBM” would be. As far as the Panel is aware the letters “cbs” are not generic or descriptive of anything, and the only meaning the letters “CBS” could have on the evidence, is as a reference to CBS and its television broadcasting operations conducted under the CBS mark. In the Panel’s view, when the Respondent acquired the Domain Name he must have acquired it with the intention that what was very likely to happen, would happen – the Respondent’s website would attract Internet traffic searching for a website associated with CBS and/or CBS’ television broadcasting operations, and the Respondent would derive “click-through” revenue from any such site visitors who accessed the various third party sites linked to the Respondent’s website. Subject only to consideration of the Respondent’s argument that he has not personally been responsible for the Google advertisements on the Respondent’s website, which have been “auto-generated” by Google, and to a possible question as to whether a bad faith finding would require that the Respondent have prior knowledge not just of the trademark owner (CBS) but also the Complainant itself, the circumstances fall squarely within paragraph 4(b)(iv) of the Policy.
5. The Google advertisement issue
The Respondent says in his Response:
“I am not using the domain in bad faith. I am not doing anything with the domain. The domain is parked and Google is auto generating ads on the domain …. It has already been established under the UDRP (Case No. D2005-0241) that people can’t be held responsible for google ads served on their sites as individuals have no control over what ads Google serves.”
The case referred to by the Respondent is Admiral Insurance Services Limited v Mr Adam Dicker; WIPO Case No. D2005-0241. That case was concerned with the domain name <elephant.com>, and the evidence showed that, before the respondent became aware of the complainant’s mark ELEPHANT (registered for motor and non-marine general insurance services), the respondent had used the domain name in relation to the provision of information about elephants, coupled with advertising unrelated to the Complainant’s business, designed to generate revenue. Subsequently, but still prior to the Respondent becoming aware of the complainant’s mark, some of the advertisements displayed on the respondent’s website were for insurance products offered by companies who were competitors of the Complainant.
The case was effectively decided by the Panel finding that the respondent had established a right or legitimate interest in the at-issue domain name, under paragraph 4(c)(i) of the Policy – he had used the (generic) Domain Name to provide information about the particular genus (elephants) before he had knowledge of the complainant’s rights. In the event, the case was not decided on the basis of the proposition for which the respondent now contends.
In the view of this Panel, the Respondent cannot escape responsibility for the advertising on the Respondent’s website, on the basis that it was generated by Google without any involvement on the Respondent’s part. In this case, the Respondent has chosen to acquire a Domain Name which incorporates in full the service mark of an internationally famous television network. Not surprisingly in those circumstances, many of the sponsored links on the Respondent’s website are to sites concerned with television or television programs – e.g. “TV shows”, “Televisions”, “CBS 42 Sports”, “TV Job”. In the Panel’s view the following statement of the majority in the three-member Panel in Grisoft, s.r.o. v Original Web Ventures Inc.; WIPO Case No. D2006-1381, is apposite:
“Although the web pages were automatically generated by DomainSponsor’s software on the basis of searches made by visitors, this system is inherently likely to result in the display of sponsored links in the field in which a company whose mark corresponds to the domain name is active, including that company’s competitors. It is thus a system which is likely to enable the registrant to obtain click-through commissions from the diversion of Internet users who are confused where (as here) the second level domain (“SLD”) is identical to the mark of a company which has been used on a substantial scale for a number of years.
The Respondent is ultimately responsible for the content of the website generated by DomainSponsor’s technology.”
Another relevant case is the recent three-member Panel decision in Express Scripts, Inc. v Windgather Investments Limited/Mr Cartwright; WIPO Case No. D2007-0268, where the Panel said:
“6.28 The Respondent contends that the advertisements in this case were “generated by the parking company”. The implication is that the Respondent was not responsible for the content of these advertisements. This may well be correct but in the Panel’s view this makes no difference. The Respondent placed the Domain Name with a parking company in circumstances where it would have been aware that those using the Domain Name were likely to have mistyped the Complainant’s name. It would have been aware that the “parking company” website would generate advertisements of some sort and given the similarity of the Domain Name to the Complainant’s name, it should have been of no surprise to the Respondent that links to prescription and pharmaceutical website would be generated.”
The recent three-member Panel decision in Masai S.A. v Peter Coleman; WIPO Case No. D2007-0509 is to similar effect. There, the Panel was dealing with the disputed Domain Name henriot.com, and the respondent was using the Sedo parking system. The Panel said:
“The Sedo system automatically uses words contained in the second level Domain Name as the first keyword. As a result, if the domain name infringes, Sedo parking can never constitute a legitimate use (and, vice versa, use by Sedo parking cannot confer legitimate rights on the user of an infringing domain name). The Respondent either knew the system or was under an obligation to familiarize himself with it. Therefore, he cannot claim to have no responsibility for the assignment of the keyword “henriot”. He selected and signed up to the Sedo system and he must be presumed to have familiarized himself with how the system worked. It is irrelevant that the Respondent had no knowledge of the exact content of the sponsored links that appeared on the website.”
(The Panel in Masai S.A. v Peter Coleman, WIPO Case No. D2007-0509, also distinguished the Admiral Insurance Services Limited, to which the respondent has referred in this case. The Panel in Masai S.A. v. Peter Coleman; WIPO Case No. D2007-0509,distinguished Admiral Insurance Services Limited, on the basis that, in the Admiral Insurance Services Limited v. Mr Adam Dicker; WIPO Case No. D2005-0241, the Panel had been concerned with a generic domain name (<elephant.com>), and the use of that domain name had been in good faith, and mainly for advertising unrelated to the complainant’s business.)
The Panel is aware that other WIPO panels have occasionally expressed different views on the question of a respondent’s responsibility for the content of third party advertisements on the respondent’s website which have been generated by Google, or by others operating “parking” services (see for example Mariah Media Inc. v First Place® Internet Inc.; WIPO Case No. D2006-1275, where the three-member panel said:
“… the advertising links are served automatically by a third party advertising feed provider using keyword search techniques rather than human selection. The automated advertising feed arrangements are such that it cannot be assumed that the Respondent requested such links or was even aware of them before receiving notice of this dispute.”)
However the at-issue domain name in the Mariah Media Inc. v. First Place® Internet Inc.; WIPO Case No. D2006-1275, case was “outside.com”, and the Panel specifically noted both the respondent’s denial of any prior knowledge of the complainant’s mark, and the fact that the “keyword” in question (“outside”) was a simple dictionary word. In the latter regard, the Panel said that it “does not feel warranted in presuming bad faith on the part of a company using such software when the “keywords” it provides are merely dictionary words”.
In this case, “CBS” is not a mere dictionary word, and the Respondent has not claimed any lack of prior knowledge of the CBS mark.
In the end, the Panel finds persuasive the views expressed by the Panels in the Grisoft, s.r.o. v. Original Web Ventures Inc.; WIPO Case No. D2006-1381, Express Scripts, Inc. v. Windgather Investments Limited/Mr Cartwright; WIPO Case No. D2007-0268, and Masai S.A. v. Peter Coleman; WIPO Case No. D2007-0509, cases. In the circumstances of this case, the Respondent must be taken to have intended the likely consequences of his pointing the Domain Name to a website on which third party advertising was generated through the Google program. Sponsored links would likely be generated to websites concerned with the field of television broadcasting, because the first and most distinctive part of the Domain Name consists of the internationally well-known service mark of a leading player in that field. .
6. A number of Panel decisions under the Policy have concluded that the relevant bad faith must be specific to the complainant, or at very least that the respondent must have “had the complainant in mind” when the at-issue domain name was registered. (See, for example, Emilio Pucci SRL v mailbank.com; WIPO Case No. D2000-1786, Builder’s Best Inc. v Yoshiki Okada; WIPO Case No. D2004-0748, and Think Service, Inc. v Juan Carlos aka Juan Carlos Linardi; WIPO Case No. D2005-1033.) In this case there is a possible question as to whether the Respondent had the Complainant in mind when he acquired (registered) the Domain Name.
The Panel notes first that the Respondent has not denied the allegation in the Complaint that he had prior knowledge of the Complainant’s claimed common law mark “CBS 42”. The Respondent is obviously experienced in matters relating to the Policy, and a denial of any prior knowledge of the Complainant’s claimed mark would have been a very obvious thing for him to have included in the Response. He did not include any such denial. The same apparent level of sophistication and experience relating to Internet matters persuades the Panel that it is more likely than not that the Respondent would have carried out some research on the expression “CBS 42” before he acquired the Domain Name (even if the Domain Name was gifted to him). The Complainant and its predecessors have been operating for over 30 years under a “CBS 42” brand, and it seems more probable than not that the Respondent would have become aware of the Complainant’s use of that brand.
But even if the Respondent was only aware of CBS as the trademark owner, and was not specifically aware of the Complainant, it seems to the Panel that that should not preclude a finding of bad faith registration and use. The starting point is that the Policy is concerned with protecting rights in trademarks and service marks, from the adverse consequences of abusive domain name registrations. The wording of Paragraph 4(a)(i) of the Policy, and the various Panel decisions to which the Panel has referred in Section 6A of this decision, make it clear that the relevant “rights” include not merely rights enjoyed by the owners of marks, but also rights enjoyed by licensees.
Any damage to a trademark or service mark (e.g. by tarnishing, dilution, or diverting trade) caused by an abusive domain name registration, is just as likely to impact adversely on a licensee as on the trademark owner itself. In those circumstances, this Panel tends to the view that the principle referred to in the Emilio Pucci SRL v. mailbank.com; WIPO Case No. D2000-1786, and Builder’s Best Inc. v. Yoshiki Okada; WIPO Case No. D2004-0748,cases (Respondent should at least have had Complainant in mind when registering the at-issue domain name), would be better expressed by saying that the Respondent should (at least) have had the complainant, or the specific trademark or service mark on which the complaint is based, in mind at the time of the registration of the domain name. Such a test would be satisfied in this case, where the Panel has found that the Respondent had CBS and its well-known CBS mark in mind when he registered the Domain Name.
It is true that paragraph 4(b)(iv) of the Policy does refer to a “likelihood of confusion with the complainant’s mark ….” In this Panel’s view that use of the expression “the complainant’s mark” was not intended to limit the application of paragraph 4(b)(iv) of the Policy to cases where the complainant is the owner of the mark on which the Complaint is based. In this Panel’s view, the expression “the complainant’s mark” as used in paragraph 4(b)(iv) of the Policy, was simply intended to be a shorthand reference to the mark on which the Complaint is based, being the “trademark or service mark in which the complainant has rights” referred to in paragraph 4(a)(i) of the Policy. The Panel cannot see any sense in an interpretation which would prevent a licensee complainant from invoking paragraph 4(b)(iv) of the Policy. But even if that interpretation is wrong, and a complainant must actually be the owner of the mark referred to in subparagraph 4(b)(iv) of the Policy to bring itself within that subparagraph, the Panel would in any event be prepared to treat the present circumstances as a separate example of bad faith registration and use, standing outside the four examples provided in paragraph 4(b) of the Policy, but nevertheless sufficient to qualify as bad faith registration and use under paragraph 4(a)(iii) of the Policy.
7. The overall tone and content of the Response adds to the impression that the Domain Name has been registered and used in bad faith. The factors the Panel has considered under this heading, include the following:
(i) The absence of any stated intention to use the Domain Name for any legitimate purpose.
(ii) The Respondent’s apparently ambivalent attitude to the possibility of the Domain Name being taken away from him – e.g. the statement in the response: “It goes without saying that if this domain is going to be taken away from me it should be given to CBS corp and not the Complainant”.
(iii) The Respondent’s failure to provide any information concerning the alleged “gift” to him of the Domain Name, along with several other Domain Names. Why was the Respondent given the Domain Name, and why was he interested in acquiring it? (It appears that the Respondent has held the Domain Name from at least October 2006, and since then it has only been “parked”.)
(iv) The Rules specifically require the Respondent to certify in the Response that, to the best of the Respondent’s knowledge, the information contained in the Response is complete and accurate, and that the assertions in the Response are warranted under the Rules and under applicable law, as it now exists or as it may be extended by good-faith and reasonable argument. (Rules, paragraph 5(b)(viii)). Although the Response suggests that the Respondent has a fairly good understanding of the Policy and the Rules, no such certificate was included in the Response.
For the foregoing reasons, the Panel finds that the Domain Name was registered and is being used in bad faith.
The Complainant has requested that the Domain Name be transferred to it. However, CBS is not a party to the Complaint, and the Complainant has succeeded primarily on account of the Complainant’s interest as licensee in the service mark CBS, owned by CBS. Nor has the Complainant submitted any supporting authorization of the Complaint from CBS, such as would alleviate any concern that a transfer of the Domain Name to the Complainant might violate rights of CBS.
In those circumstances, the Panel initially considered that it would be appropriate to cancel the Domain Name, that being the remedy which has been considered appropriate by some Panels in situations where the at-issue domain name included the trademark of a third party which had not provided its written support for the complaint (see for example the decisions in Lilly ICOS LLC v Tudor Burden, Burden Marketing, WIPO Case No. D2004-0794; and Dr. Ing. h.c. F.Porsche AG v Automotive Parts Solutions, WIPO Case No. D2003-0725). However more recent panel decisions dealing with third party rights appear to have favored the remedy of transfer, without prejudice to any rights which might in future be asserted by the third party trademark owner – see in that regard Parrot S.A. v Whois Service, Belize Domain Whois Service, WIPO Case No. D2007-0779, and Société Air France v Domain Park Limited, WIPO Case No. D2007-0818 .
The latter approach seems to the Panel to be more satisfactory – the rights of the third party trademark owner are clearly preserved, and the superior rights of the complainant vis a vis a registrant who has acted in bad faith, are more appropriately vindicated by an order for transfer than by an order for cancellation (which would simply have the effect of putting the Domain Name back on the open market, available to be registered on a “first come first served” basis by anyone, including potentially the Respondent).
In all the circumstances, the Panel concludes that the appropriate course is to direct that the Domain Name be transferred to the Complainant, without prejudice to any rights which may be asserted by CBS.
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 <cbs42.com> be transferred to the Complainant, without prejudice to any rights which may be asserted by CBS Broadcasting Inc.
Date: September 21, 2007