WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NBC Universal, Inc. v. MM, M Morgan
Case No. D2007-1744
1. The Parties
The Complainant is NBC Universal, Inc. of New York, New York, United States of America, represented by Kilpatrick Stockton, LLP, United States of America.
The Respondent is MM, M Morgan of Newfoundland, Canada.
2. The disputed domain name and Registrar
The disputed domain name <nbcnightly.com> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2007. On November 28, 2007, the Center transmitted by email to eNom, Inc. a request for registrar verification in respect of the disputed domain name. On the same day eNom, Inc. 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”), 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 December 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 27, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2007.
The Center appointed Philip N. Argy as the sole panelist in this matter on January 21, 2008. 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, taken from the Complaint, are uncontested.
“MM, M Morgan” is a shorthand identifier for a known cybersquatter by the name of Mike Morgan. A comparison of the WhoIs records of domain names that Mike Morgan has previously registered shows the identical contact addresses and server information as used by MM, M Morgan.
The Complainant is one of the world’s leading media and entertainment companies 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, world-renowned theme parks and websites, including “www.nbc.com” and “www.msnbc.com” (which is co-owned by NBC Universal and Microsoft Corporation).
The Complainant owns and operates the well-known NBC television network in the United States of America. NBC was initially formed as a national radio network in 1926 and was for many years the leading radio network in the United States of America. Beginning in the 1940s, NBC emerged as a leading television network and today is one of the top four television networks in the United States of America. NBC is viewable by over 97 million households in the United States of America and consists of over 200 VHF and UHF affiliated stations in the United States and its possessions. NBC is also seen throughout Latin America and the Caribbean via cable, and is available worldwide via satellite.
Over the past sixty years, NBC has produced and broadcasted some of the most popular and well known television series in the United States of America, including, among others, such hit television series as Bonanza, Rowan and Martin’s Laugh In, Cheers, The Cosby Show, The Tonight Show, Seinfeld, ER and Friends. Since 1950, NBC programs have often been rated as the top television show of the year, and four NBC programs have been rated by Nielsen Media Research, Inc. (“Nielsen”), a leading media rating company, as being amongst the top ten network telecasts of all time. In particular, NBC is consistently regarded as one of the leading broadcast news provider in the United States of America, with a number of its news programs having obtained top rankings in the Nielsen ratings. As a result of such continued successes over many years, the NBC television network has become well known and is commonly referred to by consumers and the trade as simply NBC.
The Complainant has also used the name and mark NBC NIGHTLY NEWS for its flagship evening news program. NBC Nightly News inaugurated its current format and has used the name and mark NBC NIGHTLY NEWS since August 1, 1970, and has been aired on NBC’s broadcast network continuously since that time. In addition to the weekday edition of NBC Nightly News, the weekend edition of NBC Nightly News has been on the air since January 4, 1969. Since the current format began in 1970, NBC Nightly News has been nominated for and won numerous awards for excellence in journalism. NBC Nightly News is shown throughout the world.
In the United States of America alone, NBC Nightly News averages in excess of eight million viewers per episode and has consistently been ranked by Nielsen as one of the most watched network evening newscasts. In fact, since 2000 NBC Nightly News has at different times been ranked by Nielsen as the number one rated evening newscast for 52 consecutive weeks.
The Complainant owns numerous incontestable trademark registrations in the United States of America for the NBC mark dating back to as early as 1956, including, for example, Registration No. 619,641 in Class 38, filed on November 24, 1947 and registered on January 17, 1956, Registration No. 1,057,966 in Class 41 and Registration No.1,523,273 in Classes 9 and 41, among many others in Classes 6, 9, 14, 16, 20, 21, 25, 28, 35, 36, 38, 41 and 42. Worldwide, the Complainant’s NBC trademark is registered in more than sixty-five countries. The Complainant also uses the name and mark NBC as part of its well-known corporate name and mark NBC UNIVERSAL. The Complainant also owns a number of trademark registrations and applications for the NBC UNIVERSAL mark worldwide.
The Complainant owns (through its parent, General Electric Company) and/or uses the domain names <nbc.com>, <nbcnews.com>, <nbcuniversal.com> <nbcuni.com>, <nbc4.com>, <msnbc.com>, and other domain names based on the NBC mark to deliver information concerning its networks, services and the programs featured on its networks. Currently, “www.nbc.com” is amongst the top 1000 visited websites on the Internet. Information concerning the NBC Nightly News program is available to consumers through the “www.msnbc.com” and “www.nbc.com” websites.
Because of the long and extensive use, promotion, advertising and unsolicited publicity relating to the NBC television network and the NBC Nightly News program, the NBC, NBC NIGHTLY NEWS and NBC NEWS trademarks have established an invaluable reputation and have achieved enormous goodwill and secondary meaning in the United States of America and throughout the world. Indeed, in a recent report on the top 2,000 U.S. brands, Brandweek magazine identified the NBC mark in the top 500 brands overall, across all industries.
The Complainant alleges that the Respondent is a known cybersquatter with a pattern of registering domain names based on the names and marks, or variations thereof, of third parties. The Complaint cites marks and names owned by such well-known commercial entities as Anheuser Busch, Citigroup, Diners Club International, Reed Elsevier, The Cartoon Network, The Ritz Hotel, Lloyd Banks, and Opera Software, to name but a few. According to the Complaint, the Respondent has been found to have registered and used domain names in bad faith by numerous panels, just a sampling of which it cites: Christopher Lloyd p/k/a Lloyd Banks v. Mike Morgan, WIPO Case No. D2004-0339; Citigroup Inc. and Diners Club International Ltd. v. M Morgan a/k/a Mike Morgan, NAF Case No. FA797565; Anheuser-Busch, Incorporated v. Mike Morgan, NAF Case No. FA 785495; WNYC Radio v. Mike Morgan, WIPO Case No. D2006-1285; Vanessa Minnillo v. Mike Morgan, WIPO Case No. D2005-0813; Ellerman Investments Limited, The Ritz Hotel Casino Limited, The Ritz Hotel (London) Limited v. Mike Morgan, WIPO Case No. D2005-1321; Reed Elsevier Inc. & Reed Elsevier Properties Inc. v. Mike Morgan, NAF Case No. FA709198; SAFE Credit Union v. Mike Morgan, WIPO Case No. D2006-0588; Stanworth Development Limited v. Mike Morgan, WIPO Case No. D2006-0230; and Opera Software ASA v. Mike Morgan, WIPO Case No. D2006-0752.
5. Parties’ Contentions
The Complainant’s submissions and contentions are as follows:
(i) The disputed domain name is confusingly similar to trademarks in which the Complainant has rights:
The Respondent’s disputed domain name is identical to and confusingly similar to the Complainant’s famous NBC, NBC NIGHTLY NEWS and NBC NEWS names and marks because it fully incorporates the NBC mark and is a mere short form variation of the name and mark NBC NIGHTLY NEWS.
Given the unique character of the NBC, NBC NIGHTLY NEWS and NBC NEWS marks, there can be no doubt that consumers seeing the disputed domain name – which includes in full the Complainant’s NBC mark – will reasonably believe that it is related to the Complainant. Moreover, consumers who search the Internet for the Complainant by using the Complainant’s name and/or marks or search the Internet for the Complainant’s NBC Nightly News television program, will likely be directed to the disputed domain name, thus creating a likelihood of confusion.
(ii) The Respondent has no right or legitimate interest in respect of the disputed domain name
The Respondent cannot demonstrate or establish any legitimate interest in the disputed domain name. He registered the disputed domain name long after the Complainant had established rights in its NBC, NBC NIGHTLY NEWS and NBC NEWS 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. Where a domain name is so obviously connected with such a well-known product, its very use by someone with no connection with the product suggests opportunistic bad faith.
Because the Complainant’s adoption and extensive use of the NBC, NBC NIGHTLY NEWS and NBC NEWS marks far predates the first use of the disputed domain name (NBC having first been the subject of a USA trademark application on November 24, 1947, with use dating back to 1926) the burden is said by the Complainant to be on the Respondent to establish its rights or legitimate interests in the disputed domain name and it cites in support PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174. Here, the Complainant says that the Respondent cannot demonstrate or establish any such rights or legitimate interests.
There is said to be no relationship between the Complainant and the Respondent giving rise to any license, permission, or other right by which the Respondent could own or use any domain name incorporating the Complainant’s NBC, NBC NIGHTLY NEWS and NBC NEWS marks. Certainly, according to the Complainant, the disputed domain name is not, nor could it be contended to be, a name or nickname of the Respondent, nor is it in any other way identified with or related to any rights or legitimate interests of the Respondent. Rather, the Respondent has registered and is using the disputed domain name solely for commercial gain. When an Internet user types into a browser the address of the disputed domain name, the user is connected to a search engine and linking portal, and receives a variety of “popup” and “popunder” advertising.
The search engine and linking portal to which the disputed domain name resolves displays a number of links, some of which are clearly commercial in nature, such as “airline tickets”, “houses for sale”, “US Citizenship test”, “dating”, “games”, and “computer recycling”. There are also links and references featuring the Complainant’s NBC NIGHTLY NEWS mark. However, rather than linking to legitimate websites of the Complainant, the overwhelming majority of web pages accessed from the links offer and/or advertise goods and services unrelated to the Complainant or the Complainant’s products or services.
The Complainant therefore contends that the Respondent derives a financial benefit from the web traffic that is diverted via the disputed domain name to this search engine and linking portal. The source code of the “www.nbcnightly.com” webpage reveals that the search engine and web portal data displayed on the website is generated through Information.com. Information.com, a domain traffic monetization service owned by Oversee.net, offers a revenue program that pays domain name owners for the traffic they direct to landing pages generated and operated by Information.com.
Since the NBC, NBC NIGHTLY NEWS and NBC NEWS marks are famous and the Respondent has no rights in them, the Complainant submits that the only reason the Respondent could have wanted to register and use the disputed domain name was that he wanted to use the Complainant’s famous marks in order to profit from the web traffic they would generate from the association and goodwill between the disputed domain name and the Complainant’s well-known marks.
(iii) The disputed domain name was registered and is being used in bad faith
The Respondent registered the disputed domain name on October 21, 2005. The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith for commercial gain and to profit from the resulting consumer confusion that the disputed domain name is connected with the Complainant. Here, the Respondent’s bad faith registration and use of the disputed domain name is said to be established by the fact that the disputed domain name fully incorporates the Complainant’s famous NBC mark, and was acquired long after that mark attained its fame. See, e.g., PepsiCo, Inc. v. Zhavoronkov, WIPO Case No. D2002-0562, ¶ 6.12 (“blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith”). The Complainant submits that the Respondent’s bad faith registration and use is further established by the fact that the Respondent has sought to profit in bad faith from the disputed domain name. The Respondent’s use of the disputed domain name to divert web traffic to a linking portal for profit is said to be evidence of bad faith based on Hilton Group plc v. Forum LLC, WIPO Case No. D2005-0244 which involved the use of a domain name to attract users for commercial gain) and Volvo Trademark Holding AB v. Dinoia, WIPO Case No. D2004-0911 which involved the use of a domain name to provide sponsored results. Both examples are said to fall squarely within the terms of paragraph 4(b)(iv) of the Policy.
The Respondent’s use of the Complainant’s marks to advertise commercial websites and deliver advertisements that are completely unrelated to the Complainant is said not to be a use in connection with bona fide offering of goods or services or a legitimate non-commercial or fair use of the disputed domain name. See Société des Hôtels Méridien v. LaPorte Holdings, Inc., WIPO Case No. D2004-0849; General Electric Company v. LaPorte Holdings, Inc., WIPO Case No. D2005-0076.
The Complainant in addition to the foregoing conventional bases for its allegations also alleges that the Respondent has engaged in a pattern of registering domain names containing the trademarks and names of third parties and then using those domain names to direct web traffic to websites from which he derives a financial benefit. Such pattern is said to be evident in the numerous administrative decisions finding that the Respondent registered and used domain names in bad faith to generate click through revenue. See, e.g., SAFE Credit Union v. Mike Morgan, WIPO Case No. D2006-0588 (transferring <safecreditunion.com>); Reed Elsevier Inc. & Reed Elsevier Properties Inc. v. Mike Morgan, NAF Case No. FA709198 (transferring <lexsinexis.com>); Ellerman Investments Limited, The Ritz Hotel Casino Limited, The Ritz Hotel (London) Limited v. Mike Morgan, WIPO Case No. D2005-1321 (transferring eight domain names based on the RITZ mark); Citigroup Inc. and Diners Club International Ltd. v. M Morgan a/k/a Mike Morgan, NAF Case No. FA797565 (transferring <citipremierpass.com>); and WNYC Radio v. Mike Morgan, WIPO Case No. D2006-1285 (transferring <wync.org>). Such pattern of cybersquatting is strong evidence supporting a finding of bad faith: Société BIC v. LaPorte Holdings, LLC, WIPO Case No. D2005-0342.
In addition, the Respondent is said to manifest a pattern of registering domain names based on third party marks or names shortly after a mark owner has made a public announcement concerning upcoming marketing campaigns or product launches. For example, the Respondent is alleged to have registered the domain name <budweisertv.com> shortly after Annheuser-Busch, Inc. widely announced its upcoming BUDTV marketing campaign. See Anheuser-Busch, Incorporated v. Mike Morgan, NAF Case No. FA785495. Similarly, the Respondent registered the domain name <operamini.com> shortly after Opera Software ASA publicly launched its new OPERAMINI product (see Opera Software ASA v. Mike Morgan, WIPO Case No. D2006-0752). In both cases, the Respondent was found to have acted in bad faith.
In summary, the Complainant alleges that the Respondent has targeted the Complainant and that this is obvious from the notoriety of the Complainant’s NBC, NBC NIGHTLY NEWS and NBC NEWS names and marks. The Complainant submits that the Respondent could only have registered a domain name so confusingly similar to the Complainant’s NBC, NBC NIGHTLY NEWS and NBC NEWS names and marks to capitalize on the hard-earned and valuable goodwill associated with these names and marks. See, e.g., Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 at ¶6 (bad faith found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).
There has been no response to the allegations made in the Complaint.
6. Discussion and Findings
Although the Complainant’s submissions are uncontested, and notwithstanding the large number of earlier UDRP decisions determined adversely to the Respondent, the Complainant has the burden of demonstrating that the requirements of paragraph 4(a) of the Policy are made out, and the Panel believes it proper to consider the submissions, and the evidence, and to make formal findings. Also, under paragraphs 10 and 15(a) of the Rules, the Panel regards this as a desirable course to take in any event.
A. Identical or Confusingly Similar
The Complainant has extensively demonstrated its rights in the trademark NBC, and has also made good its assertion that its use of ‘NBC NIGHTLY NEWS’ has been very extensive over nearly four decades. There is no trademark registration anywhere in the world for ‘NBC NIGHTLY NEWS’ or ‘NBC NIGHTLY’. The need for the Complainant to demonstrate trademark rights in NBC NIGHTLY NEWS is because the Policy does not recognize mere names as a basis for relief1.
Given the period of time during which NBC NIGHTLY NEWS has been used by the Complainant and its predecessors in business, the Panel has no doubt that NBC NIGHTLY NEWS is distinctive of the Complainant’s television news program of that name, and that the Complainant has substantial goodwill, and therefore common law trademark rights, in that brand. The Panel is in no doubt that <nbcnightly.com> is confusingly similar to NBC NIGHTLY NEWS.
The Panel has considered whether the disputed domain name is confusingly similar to the Complainant’s principal NBC mark. The absence from the disputed domain name of the “news” component of the Complainant’s NBC NIGHTLY NEWS common law mark leaves <nbcnightly.com> with nothing to dispel the obvious allusion to the prime time segment of the Complainant’s televised program products and services. Accordingly, the Panel also finds the disputed domain name to be confusingly similar to the Complainant’s principal NBC trademark.
For similar reasons the Panel is inclined to the view that the disputed domain name is also confusingly similar to the Complainant’s NBC NEWS mark.
B. Rights or Legitimate Interests
This Panel finds it impossible to conceive of any basis on which the Respondent might legitimately use such an evidently well-known mark as NBC NIGHTLY NEWS, even if in the abstract some plausible basis for the use of the three initials “NBC” could be envisaged. The omission of “news” from the disputed domain name does not assist the Respondent in the face of clear evidence in support of the Complainant’s contentions regarding both the reputation of the marks at issue, and the apparent use of the disputed domain name as a fairly typical linking portal page.
The Panel finds that that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel also finds that the disputed domain name was registered and is being used in bad faith. This finding is based both on the primary evidence and the inferences available to the Panel, as well as on the deeming provisions of paragraph 4(b) of the Policy taken together with the numerous cases cited in which the Respondent has plainly been found to have engaged in cybersquatting of the very kind that the Policy was intended to prevent.
For all of the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <nbcnightly.com> be transferred to the Complainant.
In the Panel’s view there is scope for ICANN to consider enabling (if not requiring) registrars to refuse to register a domain name to any applicant against whom, as a Respondent, more than, say, five adverse UDRP decisions have been issued.
Philip N. Argy
Dated: February 1, 2008
1 This can be contrasted, for example, with the auDRP in which the corresponding paragraph of that policy to paragraph 4(a)(i) of the Policy gives relief for domain names that are identical or confusingly similar to a “name or mark” in which a complainant has rights. Thus, in Australia, mere proof of the name of a product, service, person or organization is sufficient whether or not that name has achieved common law trademark goodwill and distinctiveness. (See “http://www.auda.org.au/policies/auda-2002-22/”)