WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gray Television Group, Inc. v. Bladimir Boyiko
Case No. D2008-0303
1. The Parties
The Complainant is Gray Television Group, Inc., Atlanta, Georgia, United States of America, represented by Leventhal, Senter and Lerman, PLLC, United States of America.
The Respondent is Bladimir Boyiko, Moscow, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <witn.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2008. On March 3, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On March 4, 2008, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 March 13, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 2, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2008.
The Center appointed Adam Taylor as the sole panelist in this matter on April 14, 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 Complainant is a communications group that owns and operates thirty-six television stations in thirty markets across the United States of America. One of those stations is WITN, an NBC affiliate in North Carolina, which has been broadcasting since at least 1955 and which in 2006 ranked first in its market in news and second in overall views according to AC Nielson statistics.
Since at least 1993, WITN has won numerous broadcasting awards including Emmy Awards for “outstanding editorial or commentary” and awards from the Associated Press for news coverage. The station has also won many public service and other awards dating back to the 1970s.
In 2007, WITN spent approximately two million dollars in advertising.
The Complainant has been assigned the exclusive right to use the call sign “WITN” in connection with television broadcasting services by the U.S. Federal Communications Commission.
The Complainant operates is main website at “www.witntv.com”.
The Complainant owns a trademark number 3223090 for “WITN” registered with the USPTO on March 27, 2007, in international class 41.
The disputed domain name was registered on March 4, 2000.
As of March 1, 2008, an Internet user entering the disputed domain name into a web browser was redirected to a web page located at “www.gotoo.com/treasure/news.htm”, featuring a pop-up window congratulating the user for winning a “virtual reality casino”. Users clicking “OK”, were taken to a website featuring a list of gambling links. Users clicking “Cancel” on the pop-up window or attempting to close the window were taken to a list of links to commercial news websites such as U.S. News & World Report, ABC News, and CNN.
On August 27, 2007, the Complainant sent a cease and desist letter to the Respondent via e-mail and Federal Express. A follow-up e-mail was sent to the Respondent on September 27, 2007. A copy of the letter was resent via Federal Express to the Respondent on January 4, 2008. The Respondent did not respond to any of these communications.
The Respondent owns at least 465 domain names, many of which comprise or are misspellings of third party trademarks e.g. <newyortimes.com>, <nickelodoen.com> and <northamericanairlines.com>.
5. Parties’ Contentions
Identical or Confusingly Similar
Through continuous and exclusive use over three decades, the Complainant has developed extensive trademark rights in the WITN mark in connection with its television and entertainment services and on the Internet. The trademark has become well-known and exclusively associated with the Complainant as a designation of the source of its services.
While the Respondent registered the disputed domain name prior to the Complainant’s US registration, common law rights are plainly evident here. The Complainant established these common law rights long before the Respondent registered the disputed domain name.
The disputed domain name is virtually identical and/or confusingly similar to the Complainant’s trademark.
The disputed domain name fully incorporates the Complainant’s trademark WITN, making it confusingly similar. Indeed, the Respondent’s domain name is entirely derived from the Complainant’s trademark. The domain name has no independent meaning, and is therefore indistinguishable from the trademark.
The trademark is not a commonly used term or a term used outside of the context of the Complainant’s WITN television station, which also supports a finding of confusingly similarity.
The Complainant’s trademark and the Respondent’s domain name is not a dictionary word or common phrase, and UDRP panels have held that the likelihood of infringing the rights of a third party or creating a likelihood of confusion as to source is clearly greater where the domain name is not a common word or phrase. UDRP panels have stated that this is particularly true of three- or four-letter strings beginning with ‘W’, since these are used as distinctive call signs for hundreds of licensed broadcast television and radio stations in the United States.
In addition to leading users to gambling websites, the disputed domain name also links to websites offering competing news content. This further supports a conclusion that the Respondent’s domain name is confusingly similar to the Complainant’s mark.
Rights or Legitimate Interests
The Respondent is not a licensee of the Complainant. Nor is the Respondent authorized to use the Complainant’s marks, or any variation thereof.
The Respondent is not, and has never been, commonly known by the disputed domain name or mark WITN. Previous panels have ruled that the Respondent did not have legitimate interest in other domain names he has previously registered.
No element on the Respondent’s website or affiliated links in any way justifies the use of the Complainant’s trademark within the domain name.
The Respondent is not using the domain name or mark WITN in connection with a bona fide offering of goods or services. The Respondent is using the domain name only to divert Internet traffic to various gambling and other commercial websites. This use of a confusingly similar domain name to attract customers to the Respondent’s affiliated gambling and other commercial websites is not a bona fide offering of goods or services. Therefore, the Respondent’s use of the domain names does not give rise to any rights or legitimate interests in the domain name.
Given that the Complainant’s trademark is well-known and is exclusively licensed by the Federal Communications Commission to the Complainant, it is difficult if not impossible to conceive of any plausible, actual or contemplated, active use of the domain names by the Respondent that would be legitimate.
Registered and Used in Bad Faith
The Respondent has previously been the subject of two adverse claims under the UDRP, and has a pattern of bad faith activity. American Automobile Association, Inc., v. Bladimir Boyiko and Andrew Michailov, WIPO Case No. D2006-0252 and Smith and Hawken, Ltd. v. Bladimir Boyiko, NAF Case No. 755733.
The Respondent has registered numerous domain names comprising third party marks.
The Respondent also intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark.
The Respondent has a clear intent to profit because of the revenue gained from clicking through advertisements and links on its website.
The links to gambling websites also support the conclusion that the disputed domain name was registered in bad faith.
Even if the Respondent does not receive compensation for diverting website visitors to other sites, particularly gambling sites, the Respondent’s opportunistic practices tarnish the goodwill and reputation of the Complainant’s legally protected trademark by attempting to create a perceived connection between the Complainant’s services and the Respondent’s commercial website and links and then attempting to profit from this illegitimate relationship.
Bad faith may also be found when a respondent knew or should have known of a complainant’s registration and/or use of the trademark prior to registering the domain name. Given the Complainant’s long use of its mark, the fact that that the Complainant’s mark WITN is not naturally-occurring in the English language, the Respondent’s clear pattern of registering domain names comprised of third-party marks and current use of the disputed domain name, it is logical to conclude that the Respondent had or should have had actual knowledge of Complaint’s rights to the WITN mark.
The Respondent’s bad faith is also confirmed by its clear intent, evidenced by his pattern of behaviour, to block the Complainant’s ability to use its mark in a corresponding domain name.
The Respondent did not respond to the Complainant’s multiple attempts to contact him or otherwise stop using the disputed domain name after receiving the Respondent’s complaint, choosing instead to continue making money from its diversion of consumers, further confirming his bad faith.
The Respondent has violated its Registration Agreement in which it agreed that (1) the use and registration of the domain name would not interfere with or infringe a third party’s rights, and (2) it would not use the domain name in connection with unlawful purpose.
For all of the above reasons, there can be no conclusion other than that the Respondent has registered the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant owns a US registered trademark for WITN and also has common law rights in that term deriving from its extensive use as the name of a TV station since 1955.
Disregarding the domain suffix, the disputed domain name is identical to the Complainant’s trade mark.
The Panel concludes that the disputed domain name is identical to a trademark in which the Complainant has rights. The Panel therefore finds that the Complainant has established the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests thereby created. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070.
The Complainant has not licensed or otherwise authorized the Respondent to use its trademark.
As to paragraph 4(c)(i) of the Policy, the use of the disputed domain name for gambling links with no obvious connection with the disputed domain name cannot in the circumstances of this case generate rights or legitimate interests. Furthermore, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from internet users seeking the Complainant. Such use of the disputed domain name could not be said to be bona fide.
There is no evidence before the Panel that paragraphs 4(c)(ii) or (iii) of the Policy apply.
The Panel finds that the Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of the Policy.
C. Registered and Used in Bad Faith
Given that the Respondent is based on in the Russian Federation and that the Complainant’s trade mark relates to a television station in North Carolina in the US, the Complainant might have had difficulty establishing registration and use in bad faith if there had been no evidence that the Respondent was aware of, and set out to take advantage of, the fame of the Complainant’s trade mark. There is, however, ample evidence to that effect.
First, while the website at the disputed domain name initially invited users to a list of a gambling links by means of a pop-up window, those who selected the “Cancel” option or attempted to close the pop-up were taken instead to a directory of commercial links to news-related sites competing with the Complainant.
Second, the evidence shows that the Respondent has engaged in a pattern of targeting the trademarks of US entities. For example, in American Automobile Association, Inc., v. Bladimir Boyiko and Andrew Michailov, WIPO Case No. D2006-0252 the panel concluded that the Respondent had registered the domain name <wwwaaa.com> and used it for links to motoring websites in order to target the American Automobile Association. In Smith and Hawken, Ltd. v. Bladimir Boyiko, NAF Case No. 755733, there was a bad faith finding against the Respondent in respect of <smithandhawkin.com>, comprising the trademark SMITH & HAWKEN - a well-known US home and garden retail business.
The Respondent also owns hundreds of domain names, many of which reflect or are misspellings of the trademarks of well-known US businesses e.g. <newyortimes.com>, <nickelodoen.com> and <northamericanairlines.com>.
The Respondent has not come forward to deny any of the above let alone offer any explanation for its registration and use of the disputed domain name.
In the Panel’s view, therefore, it is highly likely that the Respondent registered and used the disputed domain name in full knowledge that WITN was a US television station and in order to capitalise on the fame of the Complainant’s trademark.
The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Panel is satisfied that the Respondent has in all likelihood intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark.
The Panel finds that the Complainant has established the 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, <witn.com> be transferred to the Complainant.
Dated: April 28, 2008